WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Telstra Corporation Limited v. CQ Media Group Pty Ltd Case No. DAU2008-0023 1. The Parties
The Complainant is Telstra Corporation Limited of Melbourne, Victoria, Australia, represented by Davies Collison Cave Australia.
The Respondent is CQ Media Group Pty Ltd of Rockhampton, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with AussieHQ Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 12, 2008. On December 12, 2008, the Center transmitted by email to AussieHQ Pty Ltd a request for registrar verification in connection with the disputed domain name. On December 23, 2008, AussieHQ Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On January 21, 2009 the Center sent an email communication to the Complainant requesting for an Amendment to the mutual jurisdiction paragraph in the Complaint. The Complainant filed an Amendment to the Complaint on January 23, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the "Policy"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 13, 2009.
The Center appointed Nicholas Weston as the sole panelist in this matter on February 18, 2009. 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.
On December 29, 2008, the proceedings were suspended at the request of the Complainant in order to allow the Parties to negotiate a settlement. Proceedings were subsequently re-instituted at the Complainant's request on January 21, 2009. 4. Factual Background
The Complainant, Telstra Corporation Limited, is an Australian public listed company incorporated in 1991. It has a present market capitalization in excess of AUD50 billion. The Complainant has traded overseas as TELSTRA since 1993 and under that name in Australia since 1995.
The Complainant holds separate registrations for the TELSTRA mark and variations of it in 37 countries. In addition to these, it holds a Community Trade Mark and International (Madrid Union) Registration for word TELSTRA. In Australia, the Complainant has registered, or has filed applications for registration of over 80 trademarks comprising or containing the mark TELSTRA including a number in class 38 in respect of telecommunications services. One of these is the trademark TELSTRA-ONLINE TEXT BUDDY registered in classes 9 and 38.
The Complainant conducts business on the Internet using numerous domain names containing the word TELSTRA including the ccTLD . Businesses resolving from this website include fixed line and mobile telephony, an Internet service provider, information services, transactions, Internet search and pay television. The Complainant also owns the ccTLD which was registered under the Policy in August 2005.
The Complainant is a very well known provider of telecommunications goods and services.
The Respondent is an Australian proprietary company, limited by shares, incorporated in 2006. Its sole director at all material times is and was Alexander Dennis Ternowetsky, appointed in February 2006.
On July 13, 2007 the Respondent registered the domain name (the "Disputed Domain Name"). 5. Parties' Contentions A. Complainant
The Complainant lists its trademark registrations as prima facie evidence of its proprietary rights in the invented word TELSTRA and the mark TELSTRA-ONLINE TEXT BUDDY. The Complainant submits that the Disputed Domain Name is confusingly similar to its trademarks because:
(a) the Disputed Domain Name wholly incorporates the mark TELSTRA and that similarity is not removed by the addition of the generic word "online"; and
(b) the Disputed Domain Name is comprised by the first and dominant portion of the trademark TELSTRA-ONLINE TEXT BUDDY.
The Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name because the mark TELSTRA is well known and that its rights in that mark predate the Respondent's registration of the Disputed Domain Name . It submits that the Respondent must have been aware of the Complainant's trademarks through their use and registration many years before the Disputed Domain Name was registered. It submits that against that background, any use by the Respondent of the Disputed Domain Name is not bona fide, and in support of that proposition cites BellSouth Intellectual Property Corporation v. Jaclyn aka Jaclyn Thoms,WIPO Case No. D2001-1409.
The Complainant submits that the Respondent is not commonly known by the Disputed Domain Name, that it has not authorized, licensed or otherwise permitted or approved the use of any of its trademarks by the Respondent and, in support of this submission, has furnished evidence of its demand addressed to the Respondent that it cease and desist from such use. Specifically, the Complainant alleges that it first became aware of the Disputed Domain Name in July 2008 and that on July 11, 2008 the Complainant's attorneys sent a letter to the Respondent notifying it of the Complainant's interests in the Disputed Domain Name and asking it to transfer registration of the domain name to the Complainant.
The Complainant alleges that on July 27 2008, its attorneys received an email response purporting to be signed by "Alex Ternowetsky" containing the following text:
"I'm writing in response to your correspondence involving the domain name (ref# 30559278).
CQ Media Group Pty Ltd has reviewed your request to transfer the domain name to your client (Telstra Pty Ltd) and is prepared to offer a compromise that acknowledges the needs of both organisations.
In our opinion, we can document that our ownership of the domain satisfies the necessary AUDA criteria, and we are speaking here about the total registration policy, not just the policy that expired May 30, 2008.
We would appreciate the opportunity to fly down to Melbourne and discuss extended promotional opportunities with Telstra before we pursue this particular matter further.
Would it be possible to first schedule a meeting in Melbourne with the Telstra Marketing team? For we also represent web pages relating to olympic sport and believe that a united Australian effort would best suit the climate of the times."
On August 13, 2008 the Complainant's attorneys reiterated by email, the demands made in their letter of July 11, 2008.
The Complainant submits that the Respondent's intention in selecting, registering and using the Disputed Domain Name is to exploit the Complainant's reputation by misleadingly diverting Internet traffic to the Respondent's website by use of the Complainant's mark, or to tarnish the Complainant's trademarks in issue, which is not a legitimate use within the meaning of the Policy. Alternatively, it submits that the Respondent has not, before the demand of July 11, 2008, made a bona fide use of or made demonstrable preparations to use the Disputed Domain Name or a name corresponding with the Disputed Domain Name in connection with an offering of goods and services.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix), submitting, first, that the Respondent has registered the Disputed Domain Name in order to prevent the Complainant as owner of the TELSTRA and TELSTRA-ONLINE TEXT BUDDY trademarks from reflecting those trade marks in a corresponding domain name.
Second, the Complainant alleges that the current cost to register a "." ccTLD with AussieHQ is AUD22.00 and that (by implication) the cost to the Respondent of registering the Disputed Domain Name back in July 2007 was the same or less than that amount. It submits that by offering or seeking to use the Disputed Domain Name in connection with a business proposal or an attempt to otherwise barter the Disputed Domain Name with the Complainant are circumstances indicating registration or acquisition of a domain name primarily for the purpose of transferring the domain name registration to the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. In support of that proposition the Complainant cites BellSouth Intellectual Property Corporation v. Jaclyn aka Jaclyn Thoms,WIPO Case No. D2001-1409 and Kinko's, Inc. v. eToll, Inc. f/k/a E Corp, NAF Claim No. FA94447. B. Respondent
The Respondent did not reply to the Complainant's contentions. However, there are two correspondences of note from the Respondent. The first is the email that the Complainant alleges its attorneys received on July 27 2008, purporting to be signed by "Alex Ternowetsky," set out in full above.
The second item of correspondence was received by the Center on December 16, 2008 (subsequent to the filing of the Complaint with the Center on December 12, 2008) purporting to be signed by "Alex Ternowetsky, CQ Media Group Pty Ltd" containing the following text:
"Telstra is welcome to assume possession of the domain name. Please advise as to the steps necessary for the transfer to take place." 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Domain Name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered or subsequently used in bad faith.
It is noted that the Respondent has not replied to emails since December 16, 2008. The auDA WHOIS Policy (2002-06) states at paragraph 3.4 that "…registrants must notify their registrar of any changes to WHOIS data for their domain name(s)…" The Panel is satisfied that the Center has fulfilled its responsibilities to provide notice of these proceedings to the Respondent in accordance with paragraph 2 of the Rules. A. Identical or Confusingly Similar
The Panel finds that the Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark TELSTRA in Australia and in many countries throughout the world. The Complainant has also produced sufficient evidence to demonstrate that it has registered trademark rights in the mark TELSTRA-ONLINE TEXT BUDDY in Australia. The Panel finds that the Complainant has rights in the marks TELSTRA and TELSTRA-ONLINE TEXT BUDDY.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the TELSTRA trademark, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant's trademark TELSTRA followed by (b) the word "online" and (c) the country code level domain suffix "." all in one continuous word.
It is well-established that the "." country code level designation used as part of the address should be disregarded in the determination of similarity (see: BT Financial Group Pty Limited v. Basketball Times Pty Ltd,WIPO Case No. DAU2004-0001). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name: "telstraonline".
The word "online" is commonly used descriptively for anything connected to the Internet and is common as a part of trademarks for products and services available through the Internet (see: Deutsche Telekom AG v. foxQ,WIPO Case No. D2004-0102). The addition of the descriptive word "online" does nothing to prevent the confusing similarity of the domain name with the Complainant's trademark (see Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511; Barclays Bank PLC v. Mr. Mohammed Hassan,WIPO Case No. D2001-0253; Telstra Corporation Limited v. David John Singh,WIPO Case No. D2002-0260; Lyons Partnership, L.P. and HIT Entertainment PLC v. NetSphere, Inc.,WIPO Case No. D2004-0118).
The Panel accepts the Complainant's evidence that the Disputed Domain Name resolves to a webpage providing links to separate folders accessible only upon entering a username and password. However, in considering the elements of paragraph 4(a)(i) of the Policy, the contents of a website are not relevant. In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698 the Panel held that "The use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant's mark into thinking they are on their way to the Complainant's Website". Further, in The Crown in Right of the State of Tasmania trading as "Tourism Tasmania" v. Gordon James Craven,WIPO Case No. DAU2003-0001, the Panel held that: "the test of confusing similarity under the Policy is confined to a comparison of the Disputed Domain Name and the name or trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases."
Further, unlike the UDRP, the Policy extends protection expressly to "names" as well as trademark rights. For the purposes of the Policy, a "name" is defined by note 2 as referring to:
(a) the complainant's company, business or other legal or trading name, as registered with the relevant Australian government authority; or
(b) the complainant's personal name.
The Complainant's name, Telstra Corporation Limited, comprises the trademark and two descriptive words that connote its legal structure.
The Panel finds that on a side by side comparison, or relying on imperfect recollection, a person seeing the Disputed Domain Name would be caused to wonder if there was an association with the Complainant's trademark rights. The Disputed Domain Name is therefore confusingly similar to the TELSTRA trademark.
The Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists (illustratively rather than exhaustively) the ways that the Respondent may demonstrate rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice to [the Respondent] of the subject matter of the dispute, [the Respondent's] bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) [the Respondent has] (as an individual, business, or other organisation) 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 name, trademark or service mark at issue.
The Policy places the burden on the Complainant to establish the absence of Respondent's rights or legitimate interest in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The evidential burden then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1).
For the purposes of the Policy, auDA has determined that "rights or legitimate interests in respect of the domain name" are not established merely by a registrar's determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration: (see Note 2 to the Policy).
As to (i), there is no evidence that the Respondent has made any use nor that he has made demonstrable preparations to use the Disputed Domain Name in connection with an offering of goods and services (not being the offering of domain names that the Respondent has acquired for the purpose of selling, renting or otherwise transferring). On this point, the Respondent satisfies none of the criteria set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 though to be fair that case is of limited utility in circumstances such as these where there is no relationship between the parties and the Respondent is not offering the same goods or services.
Nor is there any evidence that the Respondent satisfies (ii) or (iii) above. The Panel accepts that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark TELSTRA, nor to apply for or use any domain name incorporating that mark. In these circumstances, the Complainant has made out a prima facie case.
The fact that the Respondent chose to register a domain name that includes the very well known TELSTRA name calls for an explanation, which the Respondent could have given in a Response. By its failure to submit a Response, the Respondent has not rebutted the prima facie case.
In the course of correspondence between the Respondent and the Complainant's legal representatives prior to the filing of the Complaint the Respondent put forward a statement in relation to its use of the word TELSTRA in its domain name. The Respondent's email (Annexure 15) dated July 27, 2008 included the following three paragraphs:
"we can document that our ownership of the domain satisfies the necessary AUDA criteria, and we are speaking here about the total registration policy, not just the policy that expired May 30, 2008.
We would appreciate the opportunity to fly down to Melbourne and discuss extended promotional opportunities with Telstra before we pursue this particular matter further.
Would it be possible to first schedule a meeting in Melbourne with the Telstra Marketing team? For we also represent web pages relating to olympic sport and believe that a united Australian effort would best suit the climate of the times."
The Complainant's legal representatives replied by email to the Respondent on August 13, 2008 (Annexure 16). Their email attempts to identify the "total registration policy" mentioned and points out that "a revised Domain Name Eligibility and Allocation Policy Rules for Open TLDs (2008 – 05) was introduced on 30 May 2008" and directing (the Respondent to the .au Dispute Resolution Policy (auDRP) (2008 01) and the Domain Monetisation Policy (2008 – 10). This email continues: "[Respondent's] "registration of the domain name is contrary to both of the above mentioned policies."
The Complainant's email does not mention the Transfers (Change of Registrant) Policy (2008-08) introduced on June 1, 2008 no doubt as the Respondent has done nothing to breach this policy. Nevertheless, this Panel agrees with the Complainant's assessment so far as it goes. This Panel finds the Respondent is in clear breach of clause 4.3(b) of the Domain Monetisation Policy (2008 – 10) which states: "the domain name must not be, or incorporate, an entity name, personal name or brand name in existence at the time the domain name was registered". This Panel rejects the Respondent's implication that it is somehow a "domainer" (as defined in the Domain Monetisation Policy (2008 10) or that it is engaging in "domain monetisation" (as defined therein) by inviting the Complainant to meet for the purpose of discussing commercial opportunities.
To put the issue beyond doubt, while the use to which a website is put is not relevant in considering paragraph 4(a)(i) of the Policy, it is relevant in considering paragraph 4(a)(ii). Clauses 4.1 and 4.4 of the Policy (relevantly) state:
"4.1 It is acceptable to register domain names under the close and substantial connection rule for the explicit purpose of domain monetisation within the category "a service that the registrant provides". The "service" being provided by a domainer is the service of providing users with information and advertising links about the subject matter of the domain name.
4. 4 If the content of a monetised website does not relate to the domain name in any discernible way, then the domainer is not providing the service described in paragraph 4. 1 and the close and substantial connection rule is not satisfied."
The evidence is that the Disputed Domain Name resolves to a webpage providing links to separate folders accessible only upon entering a username and password. This Panel finds that, pursuant to clause 4.4 of the Domain Monetisation Policy (2008 – 10) the close and substantial connection rule is not satisfied.
In the circumstances, the Panel can find no evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the Disputed Domain Name.
The Panel finds for the Complainant on the second element of the Policy. C. Registered or Subsequently Used in Bad Faith
The third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered or subsequently used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
"b. Evidence of Registration or Use in Bad Faith
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a web site or other online location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that web site or location or of a product or service on that web site or location."
It is therefore sufficient that the Complainant demonstrate that the Respondent registered the Disputed Domain Name in bad faith or has used it in bad faith. The Respondent's emailed response to the Complainant's cease and desist letter in which it requested a meeting "with the Telstra Marketing Team" to explore "extended promotional opportunities" (Annexure16) does not amount to an admission on the part of the Respondent to actual knowledge of the Complainant's activities, trademark or its secondary meanings at the time of the registration. However, the trademark TELSTRA is so famous a mark for telecommunications services in Australia that it would be inconceivable that the Respondent, also located in Australia, might have registered the mark without knowing of it. (See: Telstra Corporation Limited v. Totto Cutugno,WIPO Case No. D2007-1908; Telstra Corporation Limited v. Peter Yellowlees,WIPO Case No. D2002-0638; Telstra Corporation Limited v David John Singh,WIPO Case No. D2002-0260; Telstra Corporation Limited v. Heaydon Enterprises,WIPO Case No. D2000-1672; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Further, as here a gap of ten years between registration of a Complainant's trademarks and Respondent's registration of the disputed domain name (containing the trademark) can indicate bad faith: (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name fourteen years after the Complainant established trademark rights in the TELSTRA mark in 1993.
This Panel finds that the Respondent's conduct in response to the Complainant's cease and desist letter, seeking to barter the Disputed Domain Name in exchange for commercial opportunities with the Complainant, does support a finding of bad faith. In Telstra Corporation Limited v. Zanzibar IT Computer Services,WIPO Case No. D2002-0127 the panelist held that:
"The Respondent's response to Telstra's cease and desist letter, in effect, held Telstra to ransom by only indicating an intent to transfer if certain conditions were met relating to the explanation of business decisions made by Telstra. This response indicates a strong awareness of the operations of Telstra. In fact the Respondent's response to Telstra's cease and desist letter as a whole highlights his bad faith registration and use of the domain name."
The Respondent's email to the Center on December 16, 2008 in which the Respondent confirms an interest in transferring the Disputed Domain Name to the Complainant, and Respondent's prior conduct and communications indicate an intention to profit from the transaction that also supports a finding of bad faith (see: Telstra Corporation Limited v. Mr. Andy Kang,WIPO Case No. D2002-0832).
The Respondent's failure to reply to the Complainant's second and subsequent cease and desist communications is an aggravating circumstance (see: Ebay Inc. v. E and Tony Caranci,WIPO Case No. D2000-1632).
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Dated: March 3, 2009
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