WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers
Case No. D2000-1511
1. The Parties
The complainant in this administrative proceeding is Telstra Corporation Limited ("TCL") a company incorporated in Australia.
The first and second respondents are Peter Lombardo and Marino Sussich, both of Melbourne, Victoria, Australia. The third respondent is Ray Landers who resides in the United States of America. (There had been some confusion as to Peter Lombardo and Marino Sussich’s correct address as it had been noted as Vienna, Austria but with an Australian postcode and telephone number. It has now been established that they both reside in Melbourne, Australia.)
2. The Domain Names and Registrar
The domain names in dispute ("Domain Names") are:
The Domain Names were registered to the respondents on various dates between February and October 2000.
The domain names <telstrafreeonline.com> and <telstrafreeonline.net> were first created on February 25, 2000 and registered to Peter Lombardo and Marino Sussich .
The remaining domain names <telstra-free-online.com> and <telstra-free-online.net> on October 1, 2000, <telstra-freeonline.com> and <telstra-freeonline.net> on October 8, 2000 and <telstraprimebuy.com> and <telstraprimebuy.net> on October 26, 2000.
The registrar with which the Domain Names are registered is Register.com,
New York, USA.
It is understood by the panelist that Register.com customers have access to Domain Manager, an on line utility that allows them to modify their domain name information (i.e. contact information, IP address, dns changes) directly. Therefore, they can change WHOIS information. However, to change the registrant in these records they are required to fill out the appropriate Registrant Transfer forms with notarized signatures and a copy of a photo identification of the current registrant. Since a transfer of registrant was not done the panelist considers Marino Sussich and Peter Lombardo the legal registrants of the Domain Names and not Ray Landers, the person identified in the WHOIS record.
3. Procedural History
A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") both of which were implemented by ICANN on October 24, 1999, was received by WIPO in electronic format on November 3, 2001 and hardcopy on November 6, 2000. Payment in the required amount to the Center has been made by the complainant.
On November 13, 2000 a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the complaint from the complainant, that the domain name was currently registered with it and that the Policy was in effect, and requesting full details of the holder of the Domain Names and advice as to the current status of the Domain Names.
On November 21, 2000 WIPO received a verification response from the Registrar.
On January 4, 2001 there was notification of the complaint and commencement of the administration proceeding.
On January 23, 2001 a response was filed.
On January 29, 2001 a supplemental filing was made by the complainant.
On February 5, 2001 a notification of appointment of administrative panel and projected decision date ("the appointment notification") was sent to the complainant and the respondent. In accordance with the complainant’s request, the appointment notification informed the parties that the administrative panel would be comprised of a single panelist, Clive Elliott, and advised that the decision should be forwarded to WIPO by February 18, 2001.
On February 21, 2001 a request for an extension of time to complete the draft decision was made. This was granted and the new draft decision date was moved to February 28, 2001.
4. Factual Background
The complainant is one of the two largest publicly listed companies in Australia. The 49.9% publicly issued stock has a market capitalisation of about AUD$60 billion. (Telstra is 50.1% owned by the Australian Federal Government). It is Australia’s leading telecommunications and information services company, offering a wide range of telecommunications and information services. Its revenue in the financial year 1999-2000 exceeded $A19 billion. The complainant is one of Australia’s largest employers. Its full-time employees as at June 30, 2000 numbered 50,761.
The complainant has filed applications with registrations pending for, 69 trade marks comprising or containing the word "TELSTRA" in Australia, including a number in class 38 in respect of telecommunications services. The trade marks cover an extensive range of goods and services and span 17 of the 42 trade mark classes.
The complainant has also registered, or has filed applications with registrations pending for, a large number of "TELSTRA" trade marks overseas in countries including Korea, Hong Kong, Brunei, Cambodia, France, Germany, Indonesia, Ireland, Japan, Kazakstan, Kiribati, Laos, Malaysia, Mauritius, New Zealand, Papua New Guinea, People’s Republic of China, South Africa, Russian Federation, Saudi Arabia, Singapore, Taiwan, The Philippines, Tonga, United Kingdom, United States of America, Vanuatu, Vietnam and Western Samoa. It has also obtained a registered Community Trade Mark.
The complainant states that it has for several years operated its principal website at <www.telecom.com.au>, followed by <www.telstra.com.au>. In December 1999 the complainant relaunched its website at <www.telstra.com> which <www.telstra.com.au> now resolves to. The site includes electronic customer services for its fixed-line and mobile-phone customers, news and other entertainment services as well as combining its White Pages directories and Yellow Pages directories, which previously were accessible only through separate sites located respectively at <www.whitepages.com.au> and <www.yellowpages.com.au>.
The complainant is the owner of many domain names containing the word "TELSTRA" including the following:
<telstra.com>; <telstra.net>; <telstra.org>; telstra.com.au>; telstra-inc.com>; and <telstrainc.com>.
The complainant states that it was telephoned by a Mr Kent Grogan, acting as an agent for the registrant of the Domain Names, in early March 2000 on two occasions offering to sell certain of the Domain Names to the complainant. It is said that he offered to sell the domain names to the complainant over the telephone was the first time that the complainant became aware of the creation of the domain names.
The complainant asked their solicitors to send a "cease and desist" letter of demand to Cres Pty Ltd dated March 28, 2000 and received a short response from Marino Sussich who claimed to be the director of Cres Pty Ltd. Searches from the Australian Securities and Investments Commission ("ASIC") showed that this was not the case at that time, as he and many of the other "previous" directors of Cres Pty Ltd were shown as having been disqualified as directors and were not allowed to manage corporations in Australia for a number of years. The complainant asserts that in his short response Mr Sussich also said he would be responding to the letter of demand in "the next few days" but did not do so.
Solicitors for the complainant also received a telephone call from Philip Mannerheim. Although he was listed as a shareholder of Cres Pty Ltd on the ASIC report, he stated that he was unaware of this. He also said that in the past he had "discovered" he was a director of a company he had not believed he was a director of. More recent ASIC searches show that Mr Sussich has now been reinstated as a director and Mr Mannerheim is no longer a shareholder.
On June 26, 2000 the solicitors for the complainant received a facsimile from the solicitors for Cres Pty Ltd which questioned the basis of the original letter of demand and gave the impression that Cres Pty Ltd was still the owner of the domain names then under discussion.
The complainant says that the respondent subsequently registered <telstra-free-online.com> and <telstra-free-online.net> on October 1, 2000, <telstra-freeonline.com> and <telstra-freeonline.net> on October 8, 2000 and <telstraprimebuy.com> and <telstraprimebuy.net> on October 26, 2000.
As of November 2:
(a) the domain <telstrafreeonline.com> resolves to a "shopping mall" at www.primebuytown.com; and
(b) the remainder of the domain names have been inactive, but for a "coming soon" message.
5. Parties’ Contentions
The Complainant alleges the following:
"TELSTRA" is one of the best known brands in Australia and, has substantial operations in many overseas countries where it is working toward achieving world wide recognition through sponsorship and advertising. The products and services referred to above are all offered under or by reference to the trade mark "TELSTRA" (alone, or in combination with other trade marks such as Telstra ShopÒ , MobileNetÒ , White PagesÒ and BigPondÒ ).
The "TELSTRA" trade marks are heavily promoted through advertising and sponsorship in Australia and overseas (for example through its sponsorship of the 2000 Olympic and Paralympic games).
It is asserted that the word "TELSTRA" is an invented or coined word. The Domain Names incorporate the complainant’s trade mark "TELSTRA" and the relevant part of the Domain Names, has no meaning but for its association to the complainant’s trade mark. The word "TELSTRA" is not one that traders would legitimately choose unless they were trying to create a false association with the complainant.
The complainant alleges it has more than fifty years experience that has earned it a solid reputation and is reflected in its position as one of Asia’s profitable communications companies.
The complainant says that it did not discover this until later, but on June, 27 and 28, 2000 the domain name register was altered to reflect the fact that the Domain Names had been sold or otherwise transferred to the respondents.
The complainant submits that all of the respondents are engaged in a common enterprise to register and use these domain names.
The complainant say that before , <telstrafreeonline.com> was registered, none of the respondents carried on any business nor were they commonly known by the name "TelstraFreeonline", any of its derivatives or any other name consisting of TELSTRA
The complainant says that the Domain Names are identical with or confusingly similar to a trade mark or service mark in which the complainant has rights.
The respondents make certain denials and allegations but have not supplied evidence in support of their claims. Their response comprises largely a denial of the allegations along with a comprehensive questioning of the basis of the complainant’s case.
It is asserted that the third respondent (Mr Ray Landers) is not the registrant of the Domain Names; the actual registrant being telstrafreeonline.com an Illinois corporation formed on June 26, 2000.
The first and second respondents say that Cres Pty Ltd, a company incorporated in Victoria, Australia was the original registrant, of <telstrafreeonline.com> and <telstrafreeonline.net> on March 22, 2000, and no longer is the registrant, having transferred the said two domain names to the current registrant, telstrafreeonline.com.
The respondents submit that they are not proper parties to this proceeding and insofar as a complaint is made against them it ought to be properly dismissed. This is not accepted, for the reasons given in paragraph 2 above.
It is argued that if, as is alleged by the complainant, that the actual registrants of the Domain Names are Marino Sussich and Peter Lombardo then this is an error which requires rectification of the concerned Registrar, Register.com. Notwithstanding this mistake, it is said that the first and second respondents are not the present registrants of the Domain Names. They say that this mistake has since been rectified once it came to the attention of the first and second respondents. On this basis, it is argued the claim is against the wrong respondents. Once again, this is not accepted.
The respondents admit that the Registration Agreement pursuant to which the Domain Names that are the subject of this complaint are registered incorporates the Policy. The first and second respondents however deny that they are proper parties to this dispute as they are not and were not the registrants of the Domain Names.
The respondents accept that Cres Pty Ltd did not ever place "any contents on its domain names". However, they say Cres Pty Ltd did not have a Web Site, and that the first respondent placed a price on the name when he came across the Web Site Great Domains.com. It is somewhat cryptically asserted however that the first respondent would not sell the name as he was not the owner and the company of which he was a director was not interested in selling the name.
The complainant alleged that Kent Grogan was acting as agent for the "registrant" of the Domain Names. The respondents deny that Mr Grogan was an agent for one or any of them and that he had no authority to act on behalf of any of the respondents.
It is alleged that the first respondent was a director of Cres Pty Ltd at the date of the correspondence between the complainant’s lawyers and the first respondent and was since June 26, 1999 and the Australian Securities & Investments Commission records do not correctly disclose the position of the directorships of the company. The current Australian Securities & Investments Commission is stated to correctly discloses the position of the directorships of the company.
It is asserted that the use of telstrafreeonline.com is the use by a company known as telstrafreeonline.com of its own name on the World Wide Web. The argument is made that the complainant should not be permitted to prevent a company incorporated in the United States of America from being able to use its own name.
The first and second respondents say that they did not approach Telstra as alleged.
Finally the respondents deny that the domain names have been registered in bad faith and further deny that they have been used in bad faith.
6. Discussion and Findings
Para. 4(a) of the Policy requires that the complainant must prove each of the following:
- The domain names are identical or confusingly similar to the trade marks; and
- The respondent has no right or legitimate interest in respect of the domain names; and
- The domain names have been registered and are being used in bad faith.
Para. 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by para. 4(a)(iii) referred to above.
Para. 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in para. 4(a)(ii) referred to above.
Domain Names Identical /confusingly similar
It is clear that the Domain Names incorporate, as their first part, the word TELSTRA. Given the finding above the question arises whether the addition of a descriptive or generic element to the trade mark is sufficient to render it distinguishable. The complainant refers to the previous WIPO decision Quixstart Investments Inc. v Dennis Hoffman, WIPO D2000-0253 where the panel found that the addition of generic words to the complainant’s mark was not sufficient to escape the finding of similarity. Likewise, the complainant referred to the WIPO decision Cherno Communications Inc. v Jonathan Dennis Kimball, WIPO D2000-0119, that the placement of hyphens is also irrelevant in determining confusing similarity. The former of these two cases is more relevant in the present situation.
The TELSTRA element is just as relevant in a practical sense in that search engines may find either the element ‘Free on line" or "TELSTRA". Either of these is likely to link to the site telstrafreeonline.com.
It is also noted that the complainant has been successful in securing transfer of a number of domain names, incorporating the element TELSTRA, for example telstrashop.com – Telstra Corporation Limited v Barry Cheng Kwok Chu, WIPO D2000-0423.
While the respondent filed a detailed response it did not challenge the applicability or correctness of these decisions.
The ground is accordingly made out.
No Right or Legitimate Interest
A key part of the respondents’ case is that while the third respondent has a connection with the alleged current registrant, telstrafreeonline.com, the first and second respondents have no current connection and accordingly they are not proper parties to the proceeding.
The panel has attempted to outline the thrust of the respondents’ denial. The question at this point is whether the respondents, as they currently stand, have any legitimate interest in respect of the Domain Names. The respondents admit that the first and second respondents are Australian citizens who reside in Victoria. They are no doubt well aware of the TELSTRA name and trade mark, even though they deny it has sufficient reputation to be found an action under the UDRP. Likewise, the third respondent, Ray Landers, has admitted travelling to Australia and being aware that TELSTRA is a "communication network of Australia". While this may not mean that it has been acknowledged the complainant has a reputation in the name/trade mark, the panel is entitled to draw reasonable inferences from the facts and admissions made.
It is found that the respondents do not have a right or legitimate in respect of the Domain Name.
The question arises whether the alleged current registrant, telstrafreeonline.com should be a party to the proceeding and/or whether it has a right or legitimate in respect of the Domain Names. The Registrar confirmed that it is not, the registrant. But, the panelist considers the alternative position alleged by the Respondents and makes certain assumptions solely for purposes of the argument.
It was possible, through a tortuous path of errors, corrections and transfers, to trace the Domain Names from a company in which the first respondent had an interest, to the current registrant. It is clear that complainant has had some difficulty in tracing the correct parties to this dispute and errors in the registration details have not assisted. Whether these errors were inadvertent or deliberate cannot be resolved on the evidence as it stands. However, the question arises whether an entity, whatever it is, is entitled to take transfer of the Domain Names from the current respondents and claim to have a legitimate interest in the Domain Names because it is a separate entity (at least to some extent). In the panelist’s view while it does not need to resolve this issue in this case, a complainant with a valid claim against a respondent should not be denied relief solely because the respondent transferred the domain name to another entity, subsequent to the filing of a complaint by the trademark holder.
Whether in such a situation, as a matter of practicality a further procedural order would need to be made is not clear to the panelist. However, once again this does not call for a decision here, given the earlier findings.
The panelist is of the view that the complainant has made out its case on this ground
Domain Names registered and used in Bad Faith
The posting of the domain name telstrafreeonline.com on the Great Domains website and the offer for sale at $500,000.00, was explained by the respondents as somehow innocent and it was argued that it should be disregarded by the panelist. Likewise, it was argued that the offer for sale, if found to exist, should not taint the other domain names comprising the Domain Names. Neither of these submissions is accepted. Firstly, the offer for sale of the domain name telstrafreeonline.com did not appear to be inadvertent but deliberate. The amount sought was far in excess of the likely costs incurred by the registrant and indicated knowledge that the domain name was worth a considerable amount of money. Likewise, bad faith has to be looked at in "round" and in this case it is felt there is no reason why bad faith conduct in relation to one of the domain names in dispute should not be considered in relation to the others.
In view of the above it is found that the Domain Names were both registered and are being used in bad faith.
In view of the above the Domain Names should be transferred to the complainant.
Dated: March 23, 2001