WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Telstra Corporation Ltd v. Brett Micallef

Case No. D2000-0919

 

1. The Parties

The Complainant is Telstra Corporation Ltd, an Australian corporation with its headquarters in Melbourne, Victoria, Australia. It is represented by Ms. Nadine Courmadias and Mr. Warwick Rothnie of Mallesons Stephen Jacques, Solicitors, Melbourne, Australia.

The Respondent is Brett Micallef of 3 Swallow Street, Penrith, Forest Gardens, Sydney, New South Wales, Australia. The Respondent is not represented and has taken no part in the proceeding.

 

2. The Domain Name and Registrar

The domain names at issue are "telstramobilenet.com", "telstramobilenet.org" and "telstramobilenet.net". The domain names are registered with Register.com of New York, NY, USA ("the Registrar"). The domain names were registered on December 20, 1999.

 

3. Procedural History

The Complaint submitted by Telstra Corporation Ltd was received on August 2, 2000, (electronic version) and August 4, 2000, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").

On August 7, 2000, a request for Registrar verification was transmitted by WIPO Center to the Registrar, requesting it to:

(a) Confirm that a copy of the Complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, paragraph 4(b).

(b) Confirm that the domain names at issue are registered with the Registrar.

(c) Confirm that the person identified as the Respondent is the current registrant of the domain names.

(d) Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact for the domain names.

(e) Confirm that the Uniform Domain Name Dispute Resolution Policy was in effect.

(f) Indicate the current status of the domain names.

By email dated August 21, 2000, the Registrar advised WIPO Center as follows:

(a) The Registrar had not received a copy of the Complaint from the Complainant as required by the Rules.

(b) The Registrar is the registrar of the domain name registrations "telstramobilenet.com", "telstramobilenet.org" and "telstramobilenet.net".

(c) Brett Micallef of the above address is the current registrant of the said domain names. He is also the administrative contact.

The technical and zone contact is the Registrar.

(d) The Uniform Agreement is in effect.

(e) The domain name registrations "telstramobilenet.com", "telstramobilenet.org" and "telstramobilenet.net" are in "Active" status.

The Registrar has adopted the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").

The Respondent has never requested that the domain names at issue be deleted from the domain name database. The Respondent has not sought to terminate his agreement with the Registrar. The Respondent is accordingly bound by the provisions of the Uniform Domain Name Dispute Resolution Policy.

Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, WIPO Center, on August 22, 2000, transmitted by post/courier and email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was emailed to Register.com and ICANN.

The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to WIPO Center.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by September 11, 2000). He was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.

The Respondent filed no Response. A Notification of Respondent Default was sent by post/courier and email on September 25, 2000.

On October 5, 2000, WIPO Center invited the Honourable Sir Ian Barker QC of Auckland, New Zealand, to serve as sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.

On October 5, 2000, the Honourable Sir Ian Barker QC advised his acceptance and forwarded to WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplementary Rules.

On October 6, 2000, WIPO Center forwarded to the Honourable Sir Ian Barker QC by courier the relevant submissions and the record. These were received by him on October 11, 2000. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by October 18, 2000.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

The language of the administrative proceeding is English, being the language of the registration agreement.

 

4. Factual Background

The Complainant is one of the largest companies listed on the Australian Stock Exchange, having a market capitalization of approximately $A60 billion. It is the largest provider of telecommunications and information services in Australia, with financial year 1998-99 revenue exceeding $A18 billion. The Complainantís main activities, each of which is carried out under or by reference to the "Telstra" mark, are the provision of a fixed telephone network to residences and businesses across Australia; the provision of local, long-distance, domestic and international telephone call services to over 7 million residential and business customers in Australia; the provision of 78,000 public payphones in Australia; the operation of mobile telecommunications services to 3.4 million customers; the provision of a range of data, Internet and online services (including the largest Internet Service Provider in Australia); the provision of wholesale services to other telecommunications carriers and service providers; the provision of directory information and connection services to over 520 million calls per annum; the publication and distribution of white pages and yellow pages directories in hard-copy, CD-ROM and online formats; and the operation of over 80 retail outlets throughout Australia which use the trademark "Telstra Shop".

The predecessors-in-title to the Complainantís business can be traced back to 1901. In April 1993, the Complainant changed its name to Telstra Corporation Limited. It traded under the name "Telstra" outside Australia since then, and within Australia since July 1995. The Complainant is the proprietor of more than 60 registrations in Australia of trademarks consisting of or containing the word "Telstra", including a number of registrations in class 38 in respect of telecommunications services. The various trademark registrations and applications cover an extensive range of goods and services, and span 17 of the 42 trademark classes. As well, the Complainant has registered, or applied for registration of, a range of trademarks consisting of or containing the word "Telstra", in numerous countries, including Brunei, Cambodia, France, Germany, Hong Kong, Indonesia, Ireland, Japan, Kazakstan, Kiribati, Korea, Laos, Malaysia, Mauritius, New Zealand, Papua New Guinea, Peopleís Republic of China, Russian Federation, Samoa, Saudi Arabia, Singapore, South Africa, Taiwan, The Philippines, Tonga, United Kingdom, United States of America, Vanuatu and Vietnam. In addition, the Complainant has obtained a registered European Community Trade Mark for a trademark including the word "Telstra".

Included in the Complainantís Australian trademarks are 20 comprising and containing the word "MobileNet", including a pending application for "Telstra MobileNet. Far and Away Australiaís Best". It first launched its MobileNet brand in Australia in 1987 for use in its mobile telecommunications service. It was also used in conjunction with the word "Telstra" from 1995. Telstra MobileNet was registered as a business name in 1995/6 in all Australian states and territories, save one.

The Complainantís products and services are offered by reference to the "Telstra" trademark alone, or in combination with other trademarks, such as "MobileNet" or "Telstra Shop". It provides more mobile phone services to more Australians than any other mobile phone service provider. It is a major sponsor of sporting, cultural and entertainment events. In the 1999/2000 financial year, it spent $A208.9 million on advertising and promotion.

On July 27, 2000, the Respondent advised that the website "telstramobilenet.com" was for sale. There was no "cease and desist" letter from the Complainant as is usually the case. However, for such a cheeky exercise as the Respondentís, one was hardly necessary.

 

5. Partiesí Contentions

The Complainant submits that its mark is a household name throughout Australia and is known in other countries in which it trades. It submits that the disputed domain names are identical with two of its marks Ė "Telstra" and "MobileNet" Ė as well as confusingly similar to its extensive portfolio of registered marks.

The Respondentís only use of the domain names has been to offer "telstramobilenet.com" for sale.

The Complainant alleges that the Respondent must have known of its marks at the date of registration, given the Complainantís profile in Australia. His attempt to sell one of the names indicates bad faith use, as does his continued passive holding of the names.

The Respondent has not filed a Response.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

(a) That the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

(b) That the Respondent has no rights or legitimate interests in respect of the domain names.

(c) That the domain names have been registered and used in bad faith.

In the Panelís view, the domain names "telstramobilenet.com", "telstramobilenet.org" and "telstramobilenet.net" are identical or confusingly similar to the Complainantís marks. The Complainant has an Australian-wide reputation for the "Telstra" name for telecommunications, including mobile telephones.

Applying the usual tests under trademark law and passing-off law, the Panel decides that the domain names are confusingly similar. Persons dealing with, or even perusing the website of, "telstramobilenet.com", "telstramobilenet.org" and "telstramobilenet.net" would automatically conclude that the registrant of the domain names was associated with the Complainant.

Paragraph 4(c) of the Policy shows how a Respondent can demonstrate rights or interest in the domain names at issue. Whilst the overall onus of proof rests on a Complainant, nevertheless failure by a Respondent to demonstrate that he comes within paragraph 4(c) can assist the Panel in deciding whether on consideration of all the evidence a Complainant has discharged the onus of proof. The following circumstances in particular, but without limitation, if found by the Panel to be proved, demonstrate rights or legitimate interests in the domain names at issue.

"(i) before any notice to you of the dispute, your 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) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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."

The Panel finds that there is no evidence that the Respondent, before receiving notice of the dispute, used or demonstrably prepared to use the domain names in connection with a bona fide offering of services.

Nor has the Respondent ever been commonly known by the disputed domain names. Nor is the Respondent making any legitimate non-commercial or fair use of the domain names without intent for commercial gain misleadingly to divert customers or to tarnish the mark at issue. The Respondentís conduct in purporting to sell one of the domain names on the Internet suggests otherwise. Moreover, the Internet site has not been developed.

The Respondent has no license or other legal right in respect of the domain names, unless his usage is permitted at law. The Panel therefore decides that the Respondent has no rights or legitimate interests in respect of the domain names.

Paragraph 4(b)(iii) and (iv) of the ICANN policy document, on which the Complainant relies, states:

"the following circumstances Ö shall be evidence of the registration and use of the domain name in bad faith:

(iii) You have registered the domain name primarily for disrupting the business of a competitor.

(iv) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line locations, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location."

The Respondent, being an Australian resident, must be taken to have known of the Complainantís business and reputation. The inference is inescapable that the Respondent took the opportunistic and blatant step of registering these domain names in the knowledge of the Complainantís reputation in telecommunications in Australia.

The Respondent did offer to sell one of the disputed names on the Internet. The fact of soliciting the sale and placing a domain name on the Internet for sale has been regarded in a number of WIPO cases as being evidence of abuse and bad faith.

The Panel accordingly determines that the Respondent has registered and uses the Complainantís mark in bad faith.

 

7. Principles of Law Applicable

It is legitimate under paragraph 15(a) of the Rules that the Panel should look at principles of law deemed applicable. Since the Respondent is domiciled in Australia, any legal action would have to be taken against him in that country. The Panel has had cited principles of law established by decisions of Courts in the United States, the United Kingdom, Australia and New Zealand in similar cases. The law protecting intellectual property, whilst admitting of local differences, is often quite similar, given various international treaties on intellectual property. The Respondent would be likely also to fall foul of the Australian Commonwealth Trade Practices Act, section 52, the tort of "passing-off" and trademark infringement.

The legal position in England on domain names of confusingly similar wording to registered trademarks was discussed by the Court of Appeal in British Telecommunications Plc and Others v One in a Million Ltd and Others [1999] 1 WLR 903. The Court there was dealing with domain names identical or confusingly similar to registered trademarks where the domain name holders had tried to sell the names to the trademark owners. This is the situation envisaged by paragraph 4(a)(i) of the Rules.

The English position is similar to that taken in other common law jurisdictions. In the United States there are well-known cases, such as Panavision International LP v Toeppen 141 F.3d. 1315 (9th Cir. 1998). See also Fletcher Challenge v Fletcher Challenge Pty Ltd (1981) 1 NSWLR 196 and NZ Post Ltd v Leng [1999] 3 NZLR 219.

The Panel has determined that, under the Policy, the Complainant has proved its case. Accordingly, the Complainant is entitled to the relief which this Panel is empowered to give. The Panelís decision is based on the terms of the Policy cited earlier.

 

8. Decision

For the foregoing reasons, the Panel decides:

(a) that the domain names registered by the Respondent are identical or confusingly similar to trademarks to which the Complainant has rights;

(b) that the Respondent has no rights or legitimate interests in respect of the domain names; and

(c) that the Respondentís domain names have been registered and are being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names "telstramobilenet.com", "telstramobilenet.org" and "telstramobilenet.net" be transferred to the Complainant.

 


Hon. Sir Ian Barker QC
Presiding Panelist

Date: October 16, 2000