WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Telstra Corporation Ltd v. Warren Bolton Consulting Pty Ltd

Case No. D2000-1293

 

1. The Parties

The Complainant is Telstra Corporation Ltd, an Australian corporation with its headquarters in Melbourne, Victoria, Australia. It is represented by Ms. Jessie McDonald of Mallesons Stephen Jacques, Solicitors, Melbourne, Australia.

The Respondent is Warren Bolton Consulting Pty Ltd of 90 Bryant Street, Rockhampton, Queensland, Australia. The Respondent is represented by Mr. Warren Bolton.

 

2. The Domain Name and Registrar

The domain name at issue is "bigpons.com". The domain name is registered with Register.com of New York, NY, USA ("the Registrar"). The domain name was registered on August 2, 1999.

 

3. Procedural History

The Complaint submitted by Telstra Corporation Ltd was received on October 3, 2000, (electronic version) and October 5, 2000, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").

On October 3, 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 name at issue is registered with the Registrar.

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

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

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

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

By e-mail dated October 5, 2000, the Registrar advised WIPO Center as follows:

(a) The Registrar had received a copy of the Complaint from the Complainant as required by the Rules.

(b) The Registrar is the registrar of the domain name registration "bigpons.com".

(c) The Respondent at the above address is the current registrant of the said domain name. It is also the administrative contact.

The technical and zone contact is the Registrar.

(d) The Registrarís Uniform Agreement is in effect.

(e) The domain name registration "bigpons.com" is 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 name at issue be deleted from the domain name database. The Respondent has not sought to terminate its agreement with the Registrar. The Respondent is accordingly bound by the provisions of the Uniform Domain Name Dispute Resolution Policy.

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.

Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, WIPO Center, on October 6, 2000, transmitted by post/courier and e-mail a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was e-mailed to the Registrar and ICANN.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by October 26, 2000). It was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by e-mail.

On October 16, 2000, the Respondent sought an extension of time for filing a Response. After referring this request to the Complainant (which opposed any extension), WIPO Center advised the Respondent on October 17, 2000, that it could have an extension until October 31, 2000. A Response was filed electronically by the Respondent on October 29, 2000. The Respondent did not file a hard copy as required by the Rules. On this omission being referred to the Panel, the Panel indicated to WIPO Center that the Respondent should file a hard copy, no valid reason for dispensing with this requirement having been given.

On November 1, 2000, WIPO Center invited the Honorable 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 November 1, 2000, the Honorable 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 Supplemental Rules.

On November 8, 2000, WIPO Center forwarded to the Honorable Sir Ian Barker QC by courier the relevant submissions and the record. These were received by him on November 13, 2000. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by November 22, 2000.

On the application of the Complainant, the Panel allowed the Complainant to file a reply to the Response. The Panel also allowed the Respondent to reply to any such submission in the Complainantís reply. These further representations were received by the Panel on November 15, 2000, and have been considered by the Panel.

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. One of the Complainantís main activities is the provision of data, Internet and online services. As the largest Internet Service Provider in Australia, it operates these through a subsidiary. They are branded "Big Pond Internet Services". Some 500,000 persons in Australia, including the Respondent, use the services of the Big Pond Internet Service Provider, which was launched in November 1996.

The Complainant has registered the mark "Big Pond" in Australia for classes 9, 35, 38, 41 and 42. This registration was effected on October 8, 1996. On August 10, 2000, the Complainant registered a "Big Pond" device in the same classes.

The Complainant has registered or has registrations pending for the same mark in various other countries in Asia, Europe and the United States of America. The Complainantís revenue from services provided under the "Big Pond" brand are estimated to be $A146 million in the 1999/2000, financial year and $A92 million in the 1998/99, financial year. In the same two periods, the Complainantís advertising expenditure in relation to services provided under the "Big Pond" brand has been estimated at $A2.027 million and $A1.65 million respectively.

The Complainant owns the domain names "www.bigpond.com" and "www.bigpond.com.au" which latter name defaults to the former. Its site provides Internet access to other Telstra websites. Big Pond has received awards from various IT industry sources as a leading Internet Service Provider.

On the disputed website operated by the Respondent can be found the statement: "No! we are not the big Australian but by God you were close!". The Respondent also has offered the disputed domain name for sale on "www.greatdomains.com" which says: "Huge potential with this name Ė Only on [sic] key separates this name from the biggest website in Australia "BigPond.com"".

The Respondentís home page on its website says: "We would love to know how many people end up there while chassing [sic] BigPond.com so please e-mail us". Apart from these statements, the website contains little except an advertisement to sell the name for $600.

 

5. Partiesí Contentions

The Complainant submits that its mark is well known throughout Australia. It submits that the disputed domain name is confusingly similar to its registered mark.

The Respondent has no legitimate interests or rights in the disputed domain name, having been granted none by the Complainant.

The Complainant alleges that the Respondent must have known of its mark at the date of registration, given the Complainantís profile in Australia. Its attempt to sell the name indicates bad faith use, as does its continued passive holding of the name. This bad faith is clearly shown by the various messages on the website already quoted.

The Respondent filed a Response of immoderate length (some 26 A4 pages) which is difficult to summarize and which fails to address the issues with any degree of succinctness or orderliness. Many of the Respondentís complaints are not relevant to the principles, which a Panelist operating under the special ICANN procedure must follow. The points made by the Respondent can be summarized as follows:

(a) The ICANN Policy contains no statement of objective and does not exhibit proper fundamental legislative standards.

(b) Trademark protection was not intended to stop people using a protected word in everyday communication.

(c) The trademark registration system was developed long before the Internet and therefore trademarks and domain name registration have no relationship.

(d) Owning "bigpons.com" is not in breach of any Australian or international law. If it had been, the Complainant would have taken action sooner against the Respondent.

(e) A search of Australian trademarks shows a pending registration for "Bigpond" and two for "Big Pond". The Complainantís annexure did not indicate that one registration was only pending. The 2-word form is not enough to achieve trademark protection.

(f) Within 10 years, it is estimated that there will be some 500,000,000 domain names. If 26 letters and 10 numbers are retained as symbols, there will be many names confusingly similar to registered marks.

(g) In the United States, the following domain names exist: "Bigponds.com", "Bigpong.com" and "Bigpon.com".

(h) The words "big pond" are not novel and are used often in idiomatic English expressions, e.g., "little fish in a big pond".

(i) The Complainant has not documented its assertion that the Respondent has no rights or legitimate interests in the name.

(j) The Complainant has offered no evidence that the Respondent acquired the disputed domain name in order to sell it, nor has the Respondent ever approached the Complainant with a view to sale.

(k) The fact that the Complainant owned "bigpond.com" for years before the Respondent bought the subject name is irrelevant. The Respondent is not a competitor of the Complainant.

(l) The Respondent company specializes in "providing creative solutions to problems". It realized the potential for change of the Internet. It knew that, as the need to seek information grew, many people would make errors in listening, speaking or typing. "My company works on the cutting edge of human activity and is involved in entrepreneurial activities".

(m) The Respondent, as part of research and development, acquired a number of domain names "that could be expected to be the recipient of traffic as a result of the functionality of humans using this new medium".

(n) The subject site at present:

- is structured to harvest data.

- does not contain any trademark in contravention of any trademark laws.

- is not a commercial Internet site.

- does not compete with any of the commercial activities of the Complainant and in no way stops or interferes with the Complainantís commercial operation in any of the fields in which the company is engaged.

- is not advertised in any way; and

- is not designed to attract people to visit it except by the deliberate outcome of the functionality of that personís own actions.

The ownership by the Respondent of the domain name does not deny the Complainant access to the worldwide web using its registered or pending trademarks.

The Complainant has not produced any evidence that the ownership of the domain name and the existence of the site has or is likely to cause the Complainant any negative commercial or other impact.

(o) The "use it or lose it" attitude of the criteria (i) and (ii) under the Policy is unjust and unrealistic.

(p) The Respondent owns some 100 domain names and develops a range of websites. Names include "RockhamptonCity.com". It also markets domain names: see "OzWebPages.com" and "OzDomainSales.com". "Bigpons.com" is one of the Respondentís "stable of domain names". Like a land developer, it will sell off raw materials as they appreciate in value.

(q) "Bigpons.com" has the potential to be developed as a competent website and a business plan was in preparation "long before this dispute arose".

(r) Starting up e-com sites is not the only purpose for acquiring domain names.

(s) The Complainantís mark is registered in only 19 countries.

(t) Harvesting data is a fair non-commercial use of the site. The Respondent needs to establish dialogue with those who reach the site so that they may be interviewed and then more would be learned about the ways they happened to arrive at the subject site. This data is invaluable in forming decisions about the trend of future issues of the worldwide web.

(u) The name "bigpons" comprises two words, the second of which means a connection and is used as a medical term in neurology.

(v) The Complainant has failed to prove the bad faith criteria exemplified in 4(a) of the Policy.

 

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 name registered by the Respondent is 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 name.

(c) That the domain name has been registered and used in bad faith.

In the Panelís view, the domain name "bigpons.com" is confusingly similar to the Complainantís marks. The Complainant has an Australian-wide reputation for the "Big Pond" name as an Internet Service Provider. It is no answer for the Respondent to assert that trademark law should not be applied to Internet domain name disputes. That is what the Policy mandates. The Respondent bought into the Policy when it registered the domain name.

Applying the usual tests under trademark law and passing-off law, the Panel decides that the domain name is confusingly similar with the Complainantís marks. The effect on the viewer must be such that there is a real likelihood of confusion between the two expressions. The noun "pons" (derived from the Latin word for bridge) is not in common usage and has a restricted, anatomical meaning. The one letter difference between the two expressions creates the confusion.

Paragraph 4(c) of the Policy shows how a Respondent can demonstrate rights or interest in the domain name at issue. Whilst the overall onus of proof rests on a Complainant, nevertheless failure by a Respondent to demonstrate that it 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 Respondent has not demonstrated any of the above circumstances.

The Respondentís protestations and submissions lack substance. The Respondent is, on its own admission, essentially a warehouser and vendor of domain names. It alleges that the Complainant offered no evidence of the Respondentís lack of rights. Yet the Respondent does not deny the Complainantís assertion that it has conferred no rights on the Respondent. The numerous allegations summarized above are largely irrelevant as a defense to a complaint under the Policy.

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 name in connection with a bona fide offering of services.

Nor has the Respondent ever been commonly known by the disputed domain name. Nor is the Respondent making any legitimate non-commercial or fair use of the domain name without intent for commercial gain misleadingly to divert customers or to tarnish the mark at issue. The Respondentís conduct in purporting to sell the domain name on the Internet suggests otherwise.

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

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 company, 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 the disputed domain name in the knowledge of the Complainantís reputation as a major Internet Service Provider in Australia. The statement on the "For Sale" website to the effect that only one key separates this website from the Complainantís "bigpond" website exemplifies the Respondentís bad faith use.

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. Moreover, the Respondentís use of the domain name creates a real likelihood of confusion with the Complainantís mark.

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 an Australian company, any legal action would have to be taken against it in that country. The Panel is aware of principles of law established by decisions of Courts in the United States, the United Kingdom, Australia and New Zealand in similar cases. These decisions assist the Complainantís case. The Respondent might also fall foul of the Australian Commonwealth Trade Practices Act, section 52, and the tort of "passing-off". It might be able to be sued for trademark infringement. The fact that it has not been is irrelevant.

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, Panavision International LP v. Toeppen 141 F.3d. 1315 (9th Cir. 1998); in Australia Fletcher Challenge v. Fletcher Challenge Pty Ltd (1981), 1 NSWLR 196; and in New Zealand 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 name registered by the Respondent is 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 name; and

(c) that the Respondentís domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name "bigpons.com" be transferred to the Complainant.

 

 


 

 

Hon. Sir Ian Barker QC
Presiding Panelist

Dated: November 21, 2000