The Complainant is Telus Corporation, Canada, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America (“United States”).
The Respondent is Fortefusion Fortefusion, Wordcounts, Pakistan. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2021. On March 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 2021, 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 information for the disputed domain name. 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 March 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2021. The Center appointed Tobias Malte Müller as the sole panelist in this matter on April 16, 2021. 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 is a Canadian telecommunications company operating in more than 25 countries around the world with 16 million customer connections spanning wireless, data, IP, voice, television, entertainment, video, and security. The Complaint is based, amongst others, on the following word trademarks for the term TELUS, applied for before the date of registration of the disputed domain name: - Canadian trademark registration No. TMA484042 (registered on October 15, 1997 for services in classes 38, 42) The disputed domain name was registered on May 3, 2012. It results from the undisputed evidence provided by the Complainant that the disputed domain name currently resolves to a website that appears to be a website for, or associated with, the Complainant by describing itself as “Telus Network”, using a logo that is similar to the Complainant’s TELUS Logo and purporting to offer a “call center operation”, which directly competes with services offered by the Complainant’s “TELUS International” business. 5. Parties’ Contentions A. Complainant Firstly, the Complainant points out that the disputed domain name is identical or confusingly similar to the Complainant’s registered TELUS trademarks. In fact, the disputed domain name incorporates the TELUS trademark in its entirety. The addition of the word “group” in the disputed domain name does nothing to alleviate any confusing similarity. Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the TELUS trademark in any manner. Furthermore, by using the disputed domain name in connection with a website that purports to offer services in competition with the Complainant, the Respondent has failed to create a bona fide offering of goods or services. The Respondent’s actions are rather misleading and therefore not legitimate. To the Complainant’s knowledge, the Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name. Thirdly, the Respondent’s registration and use of the disputed domain name constitutes – in the Complainant’s view – bad faith in particular, because by using the disputed domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Since the disputed domain name is used for a website that falsely appears to be a website for or associated with the Complainant by describing itself as “Telus Network”, using a logo that is similar to the Complainant’s TELUS Logo and purporting to offer a “call center operation”, which directly competes with services offered by the Complainant, the Respondent must have been aware of the Complainant and its trademark. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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. The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant is the owner of several trademark registrations consisting of the term TELUS, e.g. Canadian trademark registration No. TMA484042 and No. TMA421361, and United States trademark registration No. 2,396,640, No. 3,613,014, and No. 3,543,607. Many previous UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, Inc.,WIPO Case No. D2006-0968; and SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant’s registered trademark TELUS is fully included in the disputed domain name. In addition, the disputed domain name combines the Complainant’s registered trademark TELUS as its distinctive element with the term “group”. The addition of this descriptive term to the distinctive trademark is insufficient in itself to prevent a finding of confusing similarity and does not serve to distinguish the disputed domain name from the trademark (see e.g. Virgin Enterprises Limited v. Registration Private, Domains by Proxy, LLC / Name Redacted,WIPO Case No. D2018-0645; Kaufland Dienstleistung GmbH & Co. KG v. Identity Protection Shield, Kaufland-group.com / Kaufland,WIPO Case No. D2018-0902; Confédération Nationale du Crédit Mutuel contre Paul Raphael, creditmutuelgroupe,WIPO Case No. D2017-0933;and KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910). Furthermore, and according to UDRP panel consensus, the applicable generic Top-Level Domain (“gTLD”) “.com” in the disputed domain name is to be disregarded under the confusing similarity test. In the light of the above, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to a disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name. According to the Complainant’s uncontested evidence, the disputed domain name resolves to a website that falsely appears to be a website for or associated with the Complainant by describing itself as “Telus Network”, using a logo that is similar to the Complainant’s TELUS logo and purporting to offer a “call center operation”, which directly competes with services offered by the Complainant. It is further uncontested that the Complainant has not given any authorisation for such use and is not linked to the Respondent or this website. In this Panel’s view, such use cannot be qualified as a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy, since such impersonating use rather capitalizes on the reputation and goodwill of the Complainant’s trademarks and is therefore likely to mislead Internet users (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third edition (“WIPO Overview 3.0”) at section 2.13). In addition, the Respondent did not submit any evidence of bona fide pre-Complaint preparations to use the disputed domain name. As outlined above, the Complainant’s uncontested allegations demonstrate that it has not authorized the Respondent’s use of the TELUS trademarks for registering the disputed domain name. Furthermore, the Panel notes that there is no evidence in the record or WhoIs information showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy. Finally, the Panel notes that there is no evidence in the record either showing that the Respondent might be making a noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to paragraph 4(c)(iii) of the Policy. In particular, the disputed domain name is used for a commercial website, so a noncommercial use is excluded from the outset. In addition, the Panel is satisfied that the registered trademark TELUS is distinctive so that it is unlikely that the Respondent wanted to fairly use the disputed domain name containing this trademark. Furthermore, the nature of the disputed domain name, comprising the Complainant’s trademark and a descriptive term, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1. It is acknowledged that once the Panel finds a prima facie case has been established, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any claims or evidence, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith. One of these circumstances is that the Respondent by using the disputed domain name, 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 its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy). It is the view of this Panel that these circumstances are met in the case at hand: It results from the Complainant’s documented allegations that the disputed domain name is connected to a website that falsely appears to be a website for or associated with the Complainant by describing itself as “Telus Network”, using a logo that is similar to the Complainant’s TELUS logo and purporting to offer a “call center operation”, which directly competes with services offered by the Complainant. It is further uncontested that the Complainant has not given any authorisation for such use and is not linked to the Respondent or this website. For the Panel, it is therefore evident that the Respondent positively knew of the Complainant’s trademarks and products. Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the disputed domain name included the Complainant’s trademark TELUS entirely when it registered the disputed domain name. Registration of a domain name, which contains a third party’s trademark, in awareness of said trademark and in the absence of rights or legitimate interests is suggestive of registration in bad faith (see e.g. Charlotte Tilbury TM Limited v. Domains By Proxy, LLC / Qiangdong Liu, 365rw.com.ltd,WIPO Case No. D2020-0408). The finding of bad faith registration and use is supported by the following further circumstances resulting from the case at hand: (i) the Respondent’s failure to submit a response, In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy. 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 Tobias Malte Müller
- Canadian trademark registration No. TMA421361 (registered on December 24, 1993 for services in class 35)
- United States trademark registration No. 2,396,640 (registered on October 24, 2000, for services in classes 37, 38, 42)
- United States trademark registration No. 3,613,014 (registered on April 28, 2009, for services in class 35)
- United States trademark registration No. 3,543,607 (registered on December 9, 2008, for services in classes 35, 37, 42)
(ii) the Respondent’s failure to provide any evidence of actual or contemplated good-faith use,
(iii) the implausibility of any good faith use, to which the disputed domain name may be put, and
(iv) the impersonation of the Complainant on the website under the disputed domain name, including use of a variation of the Complainant’s TELUS logo.
Sole Panelist
Date: May 25, 2021
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