The Complainant is Telstra Corporation Limited, Australia, internally represented.
The Respondent is Catherine Schimanski, We Love WA Media, Australia. 2. The Disputed Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2020. On January 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 21, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 January 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2020. The Center appointed Philip N. Argy as the sole panelist in this matter on February 27, 2020. The Panel finds that it was properly constituted. The Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. All other administrative requirements appear to have been met. 4. Factual Background The following key facts, taken from the Complaint, remain uncontested: The Complainant is Australia’s leading telecommunications and technology company, offering a full range of communications services and competing in all telecommunications markets. In Australia, as of December 2019, the Complainant provides 18.3 million retail mobile services, 3.7 million fixed bundles and standalone data services and 1.4 million retail fixed standalone voice services. In June 1992 the Complainant filed an Australian trademark consisting of the word “TELSTRA”, and registered in June 1993 (the “Telstra Mark”) and since 1995 the Complainant has at all times traded under the Telstra Mark. The Complainant provides a wide variety of telecommunications goods and services, all of which are carried out under or by reference to its Telstra Mark. Its total sales revenue for the financial year ending 2019 totalled approximately AUD 25.3 billion and it employs over 26,000 staff in over 20 countries. The Complainant’s promotional and advertising expenditure for the financial year ending June 30, 2019 was approximately AUD 310 million and in addition it is involved in sporting, cultural and other sponsorships and activities which serve to further increase its brand awareness. In numerous previous proceedings under the Policy panels have found the Telstra Mark to be “well known”. In short, “Telstra” is one of the most recognised brands in Australia. The Disputed Domain Name was registered by the Respondent on November 25, 2019. The Respondent is not affiliated with the Complainant or any related party in any way. The Respondent has not been authorized by the Complainant to register or use the Disputed Domain Name nor to seek the registration of any domain name incorporating the Telstra Mark. In emails sent from the Disputed Domain Name, customers of the Complainant are directed to provide their credit card details including the credit/debit card number, type of card (Visa/Master/Amex), expiration on the card, CVC number, bank of card, and name on card to the Respondent. A sample of an email sent from the email address […]@telstrateam.com is in evidence with the relevant customer’s details redacted for privacy reasons. It purports to come from the Complainant’s support team and asks the Complainant’s customer to pay AUD 339 for a fictitious service. 5. Parties’ Contentions A. Complainant Given the absence of a Response the Panel sees no need to set out at greater length the detailed factual and legal material provided in the Complaint, but it was substantial. The Complainant’s submissions can be summarized as follows. The Disputed Domain Name consists of the Telstra Mark and the generic word “team”. The use of a registered trademark along with a dictionary word does not avoid the likelihood of confusion. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), in response to the question “Is a domain name consisting of a trademark and a descriptive or geographical term confusingly similar to a complainant’s trademark?”, states: Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements. See section 1.8 of the WIPO Overview 3.0. The Telstra Mark consists of the word “TELSTRA” which is a coined term with no inherent meaning – the strongest kind of trademark, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant. The Complainant believes that the Respondent registered the Disputed Domain Name in order to trade upon the significant goodwill and extensive promotional efforts associated with the Telstra Mark and to profit from any confusion that arises. In fact the Complainant considers that the Respondent’s Website [sic] is being used to facilitate illegal activity via phishing emails sent from the Disputed Domain Name, to perpetrate a fraudulent payment scam on the Complainant’s customers. Section 2.13.1 of the WIPO Overview 3.0 records that “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” As the Respondent is using the Disputed Domain Name for illicit purposes, the Respondent lacks any rights or legitimate interests under the Policy. The Complainant submits that it has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. The registration of the Disputed Domain Name in awareness of the Telstra Mark and in the absence of rights or legitimate interests amounts to registration in bad faith. The fraudulent correspondence sent by the Respondent’s Website (see Factual Background above) makes it clear that the Respondent was aware of the Complainant and its mark and is using the Disputed Domain Name to mislead the recipients of its phishing emails to believe that the correspondence was sent by the Complainant. The Complainant submits that the evidence shows that the only reason the Respondent has chosen the Disputed Domain Name is to exploit the confusion between it and the Complainant’s Telstra Mark and, more importantly, is doing so for illicit commercial gain. The Complainant accordingly submits that it has proved that the Respondent registered and used [sic] the Disputed Domain Name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy. The Complainant seeks an order that the Disputed Domain Name be transferred to it. B. Respondent The Respondent did not reply to the Complainant’s contentions so the Complainant’s submissions remain uncontested. 6. Discussion and Findings Despite the absence of a Response the Complainant must discharge its burden of proof on the balance of probabilities. That is to say, the Complainant must make good each of the grounds of the Policy on which it bases its Complaint. A. Identical or Confusingly Similar The Panel is satisfied that the Complainant, as registered proprietor of numerous TELSTRA trademarks throughout the world, has rights in that trademark. Furthermore, it is self-evident that merely adding “team” does nothing to alleviate, and everything to corroborate, a consumer’s perception that the Disputed Domain Name is confusingly similar to the Complainant’s TELSTRA trademark. The Panel has knowledge that emails from the Complainant’s support team come from the subdomain In any event the Panel is more than comfortably satisfied that the Disputed Domain Name is confusingly similar to the Telstra Mark and that the Respondent intended that to be the case. The Complainant has thus made out the first limb of the Policy. B. Rights or Legitimate Interests In the absence of a response to what is clearly a prima facie case that the Respondent does not have the slightest right or legitimate interest in respect of the Disputed Domain Name, the Panel also finds in favour of the Complainant on that ground. The fraudulent email summarized in the Factual Background above demonstrates that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. None is claimed, none is apparent from the evidence, and the Complainant denies having provided any authorization for the Respondent to use its mark or anything confusingly similar to its mark. Since the Respondent is impersonating the Complainant, that is self-evidently the case. The Panel finds the second limb of the Policy clearly made out. C. Registered and Used in Bad Faith The Respondent has used the Disputed Domain Name in the manner described in paragraph 4(b)(iv) of the Policy: to intentionally mislead, for illicit commercial gain, customers of the Complainant who received an email from the Respondent, masquerading as the Complainant, to create a likelihood of confusion with the Complainant’s Telstra Mark as to the source, sponsorship, affiliation, or endorsement of the request for payment. The Respondent is using the Disputed Domain Name to which it lacks rights to create confusion with the Complainant’s Telstra Mark and to pass itself off as the Complainant, in order to perpetrate a fraud. One cannot have a stronger case of bad faith registration and use than where a respondent flagrantly and fraudulently uses a complainant’s trademark to commit a criminal offense including fraud. The Panel has no hesitation in finding both the registration and subsequent use of the Disputed Domain Name by the Respondent to have been in bad faith. 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 Philip N Argy
Sole Panelist
Date: March 4, 2020
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