The Complainant is TELUS Corporation of Scarborough, Ontario, Canada, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America (“United States”).
The Respondent is Domain Administrator, See PrivacyG of Phoenix, Arizona, United States / Brandon Tursi of Surrey, British Columbia, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2018. On December 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 12, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 13, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 14, 2018.
The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2019. The Center received an email communication from the Respondent on December 19, 2018. The Center notified the Parties of the commencement of the Panel appointment process on January 7, 2019.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on January 15, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant, TELUS Corporation, is Canada’s fastest-growing national telecommunications company and a public company that is traded on the Toronto Stock Exchange and the New York Stock Exchange.
The Complainant provides a wide range of communications products and services.
The Complainant is the owner of numerous trademarks registrations around the world for the trademark TELUS (thereafter the “TELUS trademarks”), including:
- The Canada trademark TELUS, no. TMA484042 registered on October 15, 1997;
- The Canada trademark TELUS, no. TMA421361 registered on December 24, 1993;
- The United States trademark TELUS, no. 2396640 registered on October 24, 2000;
- The United States trademark TELUS, no. 3613014 registered on April 28, 2009;
- The United States trademark TELUS, no. 3543607 registered on December 9, 2008.
The Complainant also registered the domain name on December 13, 1994.
The disputed domain name was registered by the Respondent on November 15, 2018 and resolved at the time of the Complaint to a website that appeared to be associated with the Complainant, referring to “your Mobility & Home Service needs”.
Now the disputed domain name resolves to a parked page. 5. Parties’ Contentions A. Complainant
In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.
First of all, the Complainant argues that the disputed domain name is identical or confusingly similar to the TELUS trademarks, since it strictly contains the TELUS trademarks in their entirety and the addition of the term “promos” is not sufficient to alleviate any confusing similarity.
Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the TELUS trademarks in any manner.
The Complainant also contends that the Respondent is not making a bona fide offering of goods or services that would give rise to rights or legitimate interests in the disputed domain name since the disputed domain name was used in connection with a website that appeared to be associated with the Complainant, referring to “your Mobility & Home Service needs”, while collecting personally identifiable information from Internet users by offering “the best promotions possible”.
The Complainant considers that the website associated with the disputed domain name appeared to be part of a misleading scheme by conveying the false impression that Internet users are accessing a website associated with the Complainant, in order to collect personally identifiable information from these Internet users.
Also, according to the Complainant, the Respondent has never been commonly known by the disputed domain name nor ever acquired any trademark rights in the disputed domain name.
Thirdly, the Complainant contends that the disputed domain name was registered and is being used in bad faith, since the TELUS trademark is widely known, is protected by numerous registrations in multiple countries, was first used 28 years ago, and was found having “clearly (…) a substantial reputation in Canada” by a previous panel under the Policy.
To the Complainant, it is not possible that the Respondent was unaware of the Complainant when he registered the disputed domain name, given the fame of the TELUS trademarks.
Furthermore, the Complainant considers that by using the disputed domain name to convey the false impression that Internet users are accessing a website for, or associated with, the Complainant, the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with TELUS trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, creating bad faith.
Finally, it is reminded that the Complainant contacted the Respondent about the disputed domain name via emails sent on November 21 and 30, 2018, to which the Respondent never responded.
On the basis of the above, the Complainant requests the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent only sent an email to the Center on December 19, 2018, in order to inform that he had shutdown the website, re-directed the disputed domain name to a parked page, set auto-renew to off, and requested that its registrar remove the disputed domain name from its account. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
First of all, the Panel finds that the Complainant has provided evidence that it has rights on the TELUS trademarks.
Then, the Panel notices that the disputed domain name is composed of (i) the distinctive element “telus”, which is the exact reproduction of the TELUS trademarks, (ii) the term “promos”, and (iii) the generic Top-Level Domain (“gTLD”) “.com”.
As pointed out by the Complainant, the applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.
The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).
Furthermore, the Panel concurs with the opinion of several prior UDRP panels which have held that the fact that a domain name wholly incorporates a complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the Policy (see, e.g., BNP Paribas v. Ronan Laster.,WIPO Case No. D2017-2167; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615; RapidShare AG, Christian Schmid v. InvisibleR, Domain Admin,WIPO Case No. D2010-1059; Hoffmann-La Roche Inc., Roche Products Limited v. Vladimir Ulyanov,WIPO Case No. D2011-1474; Swarovski Aktiengesellschaft v. mei xudong,WIPO Case No. D2013-0150).
Regarding the disputed domain name , the Panel finds that the addition of the term “promos” to the TELUS trademark does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview 3.0).
Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademarks. B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.
These circumstances are:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
According to prior UDRP panel decisions, it is sufficient that the Complainant shows prima facie that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).
According to the Panel, the Complainant has shown prima facie that the Respondent is not affiliated with the Complainant and has not been assigned, granted, licensed, sold, transferred or in any manner authorized by the Complainant to use its TELUS trademarks, and that the Respondent is not currently and has never been known under the name “telus”.
Moreover, the disputed domain name used to resolve to a website that falsely appeared to be associated with the Complainant, which cannot be considered as a bona fide offering of goods or services.
For all these reasons, the Complainant has established prima facie that the Respondent lacks rights or legitimate interests in the disputed domain name, therefore the burden of production has been shifted to the Respondent. However, the Respondent has not provided any response to the Complainant’s contentions relating to this point, and arguably recognized in its email to the Center that he was doing wrong by using the disputed domain name.
Therefore, the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and are being used in bad faith.
Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
First of all, the Panel finds that the Complainant’s trademarks were registered long before the Respondent registered the disputed domain name.
Then, according to the Panel, the Complainant has shown that the Respondent knew, or should have known, that its registration would be identical or confusingly similar to the Complainant’s mark, given the reputation of the Complainant, which is a publicly traded company.
Furthermore, the Panel considers it obvious that the Respondent registered the disputed domain name in bad faith, since it used to resolve to a website that appeared to be associated with the Complainant and in such way collect personal information relating to them by promising them “the best promotions possible”.
Finally, the Panel notice that the Respondent did not answer to the Complainant’s attempts to resolve the dispute outside of the Complaint, and that the name of the disputed domain name’s registrant changed only after the Complaint was filed, which constitutes “cyberflight” and, as such, is further evidence of bad faith, according to prior UDRP panel decisions (see LPG Systems v. Jerry / Mr. Jeff Yan,WIPO Case No. D2010-0387).
The fact that the Respondent finally sent an email to the Center, after he was advised of the filing of the Complaint is insufficient to avoid a finding of the Respondent’s bad faith.
Therefore, in view of all the circumstances of this case, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b). 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Christiane Féral-Schuhl
Sole Panelist
Date: January 30, 2019
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