WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Telstra Corporation Limited v. Heaydon Enterprises

Case No. D2000-1672

 

1. The Parties

The Complainant: Telstra Corporation Limited, 38/242 Exhibition Street, Melbourne, Victoria 3000, Australia.

The Respondent: Heaydon Enterprises, 1-3 Endeavour Road, Sydney, NSW 2229 Australia. Administrative, technical, and billing contact for the Domain Name: Grant Hartley, 1-3 Endeavour Road, Sydney, NSW 2229 Australia.

 

2. The Domain Name and Registrar

The domain name in issue is <thetelstrashop.com> (hereafter "the domain name").

The domain name is registered with Registrars.com, 475 Sansome Street #570 San Francisco, CA 94111, United States of America.

The domain name was registered on February 29, 2000.

 

3. Procedural History

3.1 The Complaint in Case D2000-1672 was filed on December 1, 2000. While the WIPO Arbitration and Mediation Center was completing its compliance review, and prior to being formally notified of the Complaint, an officer of the Respondent submitted a number of emails to the Center and to the Complainant seeking to explain its position. The Respondent was then formally notified of the Complaint, but did not file a Response within the twenty day period provided in Rule 5(a) of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy. After being notified of default, the Respondent filed a Response out of time, on or about January 12, 2001. The Complainant filed a Reply to the Respondentís Response on January 17, 2001.

3.2 The WIPO Arbitration and Mediation Center has found that:

- the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy;

- payment for filing was properly made;

- the Complaint complies with the formal requirements;

- the Complaint was properly notified in accordance with the Rules, paragraph 2.a.;

- a Response to the Complaint was not filed in due time, as explained in (1) above; and that

- the Administrative Panel was properly constituted.

As Panelist, I accept these findings.

3.3 As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

3.4 The date scheduled for issuance of a decision is: January 24, 2001.

3.5 No extensions have been granted or orders issued in advance of this decision.

3.6 The language of the proceeding is English.

 

4. Factual Background

A. The Complainant

The Complainant, Telstra Corporation Ltd, is one of the two largest publicly listed companies in Australia. It is Australiaís leading telecommunications and information services company. The Complainant adopted "Telstra Corporation Limited" as its legal name in April 1993. It has traded internationally as "Telstra" from that time, and has traded domestically (within Australia) from July 1995 under that name.

The Complainant operates a vast telecommunications network and service, including the provision of telephone exchange lines to residences and businesses; the provision of local, long distance domestic and international telephone call services to over 8 million residential and business customers in Australia; the provision and maintenance of approximately 36,000 public payphones in Australia; the operation of mobile telecommunications services; and so forth. Further to this, the Complainant operates a large number of retail outlets throughout Australia under the name "Telstra Shop". The Complainant has been using the brand "Telstra Shop" for its retail outlets since early 1994. Telstra shops sell "Telstra" branded communications equipment including telephone handsets, cordless phones, answering machines and other accessories.

Other background details of the Complainant (not directly relevant to this decision) may be found in section 4 of the following WIPO decisions: Telstra Corporation Ltd v Nuclear Marshmallows, <telstra.org>, WIPO case no. D2000-0003; Telstra Corporation Ltd v Barry Cheng Kwok Chu, < telstrashop.com>, WIPO case no. D2000-0423; Telstra Corporation Ltd v Brett Micallef, <telstramobilenet.com> <telstramobilenet.net> <telstramobilenet.org>, WIPO case no. D2000-0919; Telstra Corporation Ltd v Kandasamy Mahalingam, < telstraa.com>, WIPO case no. D2000-0999.

The Complainant has registered, or 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 Brunei, Cambodia, France, Germany, Hong Kong, Indonesia, Ireland, Japan, Kazakhstan, Kiribati, Korea, Laos, Malaysia, Mauritius, New Zealand, Papua New Guinea, Peopleís Republic of China, South Africa, Russian Federation, Saudi Arabia, Singapore, Taiwan, the Philippines, Tonga, the United Kingdom, the United States of America, Vanuatu, Vietnam and Western Samoa. It has also obtained a registered Community Trade Mark. (Hereafter all of these trade marks shall be termed the "Telstra" marks).

The Complainant registered the trade mark "TELSTRA SHOP" in Australia in 1994. The Complainant has also filed applications for registration of trade marks for "TELSTRA LICENSED SHOP". (Hereafter all of these trade marks shall be termed the "Telstra Shop" marks).

The "Telstra" and "Telstra Shop" marks are heavily promoted through advertising and sponsorship in Australia and overseas, the amount spent numbering in the hundreds of millions of Australian dollars per annum.

B. The Respondent

The Respondent, "Heaydon Enterprises", is an Australian entity, the legal status of which is unclear. It appears now to be known as Heaydon.com Pty Ltd, an Australian limited liability, private company. There is no evidence of transfer of the domain name. However, the administrative and billing contact for the domain name is Grant Hartley; the Complainant asserts that it undertook a search of Heaydon.com Pty Ltd, and states that Grant Hartley is the sole director, secretary and shareholder of Heaydon.com Pty Limited. This assertion is supported by the communications from the Respondent, where it seems that "Heaydon Enterprises", Heaydon.com Pty Ltd, and Grant Hartley can be considered one and the same entity. For the purposes of this decision nothing turns on this issue, and I will assume that the entities are the same.

It is unclear from the evidence what business the Respondent pursues. The Respondent suggests that it has operated imaging and cleaning businesses, and that it is now pursuing internet business opportunities.

 

5. Partiesí Contentions

A. The Complainantís assertions

The Respondent's domain name is confusingly similar to the Complainant's "Telstra" and "Telstra Shop" marks. The Complainant asserts:

(1) that the word "telstra" is an invented word and so is not susceptible to innocent overlap with other usages, especially where, as here, the Complainant has been careful to protect its mark from other infringing uses;

(2) that the additional word "shop" is not one that traders would legitimately choose unless they were trying to create a false association with the Complainant; and

(3) the addition of the definite article, "the", does not alter the similarity.

The Respondent has no legitimate interest or rights in the domain name. The Complainant asserts:

(1) the Complainantís use of its mark predates the registration of the domain name and the Respondent does not have any association with the Complainant;

(2) the Respondent was not using, nor had it even registered, the domain name before the Complainant acquired rights in its mark;

(3) the Complainantís mark is so distinctive that no one (particularly no one in Australia) could legitimately choose it unless trying to trade off the Complainantís rights;

(4) before the domain name was registered, the Respondent did not carry on any business and was not commonly known by the name "thetelstrashop", any of its derivatives, or any other name consisting of "Telstra" or "Telstra Shop"; and

(5) none of the other elements of paragraph 4(c) of the Uniform Domain Name Dispute Resolution Policy apply.

The Respondent registered <thetelstrashop.com> and is using it in bad faith. The Complainant asserts:

(1) the Respondent was aware of the reputation of the Complainant in its name and its trade marks at the time of registration and continuing to the present;

(2) the Respondentís use of the domain name clearly indicated bad faith use;

(3) the Respondentís web site initially accessible using the domain name was intended to mislead the viewer into believing that the web site was associated with the Complainant.

Accordingly the Panel should order that <thetelstrashop.com> be transferred to the Complainant.

B. The Respondentís assertions

The Respondent's domain name is not confusingly similar to the Complainant's "Telstra" and "Telstra Shop" marks. The Respondent asserts:

(1) that its business is called "Thetelís Trash Op" which forms three words, and therefore it cannot be confused with the Complainantís marks;

(2) the nature of its business is different from the Complainantís; and

(3) the Complainantís primary web site is found at <telstra.com>, which is "no way similar" to the domain name.

The Respondent has a legitimate interest in the domain name. It asserts that this is evidenced by the following:

(1) that it has an Australian registered business name "TheTelís Trash Op";

(2) it has met all legal requirements to operate its business by its registration of the domain names <thetelstrashop.com> and <thetelstrashop.com.au>;

(3) its business is called "Thetelís Trash Op", and involves the auctioning of unwanted goods over the internet. The Respondent asserts that Mr Hartley has the nickname "The Tel", that the business involves "trash and treasure" and is like an "opportunity shop". The concatenation of various parts of these observations, lead to "TheTelís", "Trash", "Op", and hence the domain name.

The Respondent has neither registered the domain name in bad faith, nor is it using the domain name in bad faith.

Accordingly the Panel should not order that <thetelstrashop.com> be transferred to the Complainant.

 

6. Discussion and Findings

Procedural issues

There are two procedural problems which arise in this proceeding. The first involves the filings of the Respondent. It seems that the Respondent became aware of these proceedings before it was formally notified of the Complaint against it. While the WIPO Arbitration and Mediation Center was completing its compliance review, and prior to the time when the Respondent was formally notified of the Complaint, Mr Hartley of the Respondent submitted a number of emails to the Center and to the Complainant seeking to explain the Respondentís position. The Respondent was then formally notified of the Complaint, but did not file a Response within the twenty day period provided in Rule 5(a) of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). After being notified of default, the Respondent filed a Response out of time, on or about January 12, 2001.

Under Rule 10(a) of the Rules a Panel is free to conduct the proceeding in such manner as it sees fit, subject to the requirement in Rule 10(b) of the Rules that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. It is therefore within my discretion to ignore the Response. However, I have decided to consider the Response as part of the pleadings in this matter, for a number of reasons. First, the arguments raised in the late-filed Response were adumbrated in the Respondentís earlier emails. Hence there is no basis for arguing that the Respondent was wilfully ignoring the proceeding. Nor, as result, can it be argued that the Complainant, the Center, or the Panelist is detrimentally affected by the late filing. Secondly, the Respondent is represented pro se, and hence some allowance should be made for procedural mistakes. I therefore have considered the late-filed Response as the Respondentís arguments in this matter.

There is a second procedural issue. The Complainant filed a Reply to the Respondentís Response on January 17, 2001, after the appointment of the Panel. The issue is whether I should consider these pleadings. Following the same Rules 10(a) and 10(b) noted above, I conclude that the Partiesí initial filings are sufficient to give both parties the fair opportunity to present their cases. I have exercised my discretion not to consider the Complainantís Reply.

Substantive issues

Paragraph 4.a. of the UDRP requires the Complainant to make out three elements:

A. The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar (paragraph 4.a.(i)); and

B. The Respondent has no rights or legitimate interests in respect of the domain name (paragraph 4.a.(ii)); and

C. The Respondent registered and is using the domain name in bad faith (paragraph 4.a.(iii)).

Looking then at each element in turn.

A. The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar.

The Complainant, Telstra Corporation Ltd, is a huge organisation, with an extensive presence in Australia, in Asia, and internationally. It is one of the worldís largest companies, and operates a vast telecommunications network and service in Australia and the region. It has an extensive portfolio of registered trade marks, in Australia and internationally, as noted above in section 4. These marks include registration for the word marks "Telstra" and "Telstra Shop". These marks have been registered since the early 1990s. They have been used in trade and commerce regularly since that time, and have been supported by advertising budgets in the many millions of dollars.

As such, there can be no question that Complainant has rights in the abovementioned trade marks, and thus has established the first requirement of paragraph 4.a.(i) of the UDRP.

The second requirement of paragraph 4.a.(i) of the UDRP is that the domain name be identical or confusingly similar to the Complainantís marks. The Complainant asserts that the domain name is confusingly similar to its "Telstra" and "Testra Shop" marks. It supports the assertion by noting: (1) that the word "telstra" is an invented word and so is not susceptible to innocent overlap with other usages, especially where as here the Complainant has been careful to protect its mark from other infringing uses; (2) that the additional word "shop" is not one that traders would legitimately choose unless they were trying to create a false association with the Complainant; and (3) the addition of the definite article, "the", does not alter the similarity.

In response to this, the Respondent argues that its domain name is not confusingly similar to the Complainant's marks. The Respondent asserts (1) that its business is called "Thetelís Trash Op" which forms three words, and therefore it cannot be confused with the Complainantís marks; (2) the nature of its business is different from the Complainantís; and (3) the Complainantís primary web site is found at <telstra.com>, which is "no way similar" to the domain name.

Clearly the domain name is similar to the Complainantís marks. The domain name <thetelstrashop.com> is the same as the "Telstra" marks, with the addition of the prefix "the" and the suffix "shop". The domain name is the same as the "Telstra Shop" marks, with the addition of the prefix, "the". The issue is whether the similarity is confusing.

Here the Complainantís assertions carry great weight. Its first assertion goes to the issue of whether alternate legitimate usages of the marks are likely to, or have, come about, and as a consequence that no confusion will exist in the mind of the consumer. Given the evidence that the marks are invented, and that they have been scrupulously protected I conclude that no legitimate usages of the marks exist outside those of the Complainant, at least so far as the Respondent is concerned. I accept the Complainantís assertion that confusion is inevitable in the event that the marks are present in a domain name not controlled by the Complainant. I agree with the Complainant that the addition of the definite article does not affect the basic concern about confusing similarity. This has been held in a number of UDRP decisions: Quixtar Investments Inc. v. Dennis Hoffman, WIPO case no. D2000-0253: Chernow Communications Inc. v. Jonathan D. Kimball WIPO case no. D2000-0119. I happily adopt the reasoning of these decisions in relation to this issue.

The addition of the suffix "shop" equally does not change the issue. First, in relation to the "Telstra Shop" marks there is no addition at all. Second, in relation to the "Telstra" marks, the evidence is that the Complainant trades under the name "Telstra Shop" in a retail business. Hence, the addition of the suffix is designed to confuse the consumer, rather than alleviate the confusion.

Having come to the initial conclusion that the domain name is confusingly similar to the Complainantís marks, the question is then whether the Respondentís arguments alter this position. They do not.

Two of the Respondentís arguments are irrelevant to this decision. It argues that the nature of its business is different from the Complainantís; and the Complainantís primary web site is found at <telstra.com>, which is "no way similar" to the domain name. The issue here turns on whether there is confusing similarity between the Respondentís domain name and the Complainantís marks. The Complainantís business and domain names are not relevant to this decision.

The Respondentís other assertion is more substantial. It suggests that it is in the process of starting a business, called "TheTelís Trash Op". According to the Respondent, this business is to be an Internet-based auction, sale, or barter site. I shall deal with the nature of this business below, when I examine whether the Respondent has a legitimate interest or rights to the name. However, the Respondent submits that <thetelstrashop.com> is actually the only way to render "TheTelsí Trash Op" into a domain name, since punctuation such as spaces and apostrophes are not permitted. This goes not just to the question of right or legitimate interest (pursuant to Paragraph 4.a.(ii) of the UDRP) but also to whether there is confusing similarity between the domain name and the Complainantís marks.

It is possible, if "TheTelsí Trash Op" were a large business with significant reputation and consumer recognition, that there would be no confusion between the domain name and the Complainantís marks. Consumers would see <thetelstrashop.com> as indicating "TheTelís Trash Op" rather than "The Telstra Shop". However, it is clear from its own Response that any business of the Respondentís is putative (if not a convenient fiction). There is, therefore, no conceivable way that a consumer could see <thetelstrashop.com> and assume that it referred to anyone but the Complainant. The Respondentís addition of spaces and punctuation in imaginative places does not change this, since these are not rendered in the domain name.

The Complainant has therefore shown that it has rights in the marks, and that the domain name is confusingly similar to these marks. I conclude therefore that the Complainant has satisfied the requirements of paragraph 4.a.(i) of the UDRP.

B. The Respondent has no rights or legitimate interests in respect of the domain name.

The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4.a.(ii) of the UDRP. The specific arguments it presents to back this assertion are as follows:

(1) the Complainantís use of its mark predates the registration of the domain names and the Respondent does not have any association with the Complainant;

(2) the Respondent was not using, nor had he even registered, the domain name before the Complainant acquired rights in its mark;

(3) the Complainantís mark is so distinctive that no one (particularly no one in Australia) could legitimately choose it unless trying to trade off the Complainantís rights;

(4) before the domain name was registered, the Respondent did not carry on any business and was not commonly known by the name "thetelstrashop", any of its derivatives, or any other name consisting of "Telstra" or "Telstra Shop"; and

(5) none of the other elements of paragraph 4(c) of the Uniform Domain Name Dispute Resolution Policy apply.

Against this the Respondent argues that it has a legitimate interest in the domain name. It asserts that this is evidenced by the following:

(1) that it has an Australian registered business name "TheTelís Trash Op";

(2) it has met all legal requirements to operate its business by its registration of domain names <thetelstrashop.com> and <thetelstrashop.com.au>;

(3) its business is called "Thetelís Trash Op", and involves the auctioning of unwanted goods over the internet. The Respondent asserts that Mr Hartley has the nickname "The Tel", that the business involves "trash and treasure" and is like an "opportunity shop". The concatenation of various parts of these observations, lead to "TheTelís" "Trash" "Op", and hence the domain name.

The first four arguments of the Complainant present a strong prima facie claim that the Respondent has no legitimate interest. This claim may be rebutted by arguments from the Respondent; but here the Respondentís arguments are insufficient to rebut the Complainantís claim. Let me examine each of the Respondentís arguments in turn.

The Respondent first argues that it has an Australian registered business name "TheTelís Trash Op", and that this is sufficient to ground its claim for a legitimate interest in the domain name. This is clearly correct in the abstract: it is not necessary for a Respondent to have a registered trade mark to show a legitimate interest, and a business name can be sufficient to show rights or legitimate interest in the domain name (see Paragraph 4.c.(i) of the UDRP). However this is not so where the business name is registered for the purpose solely of defeating the Complainantís Complaint and where there is no evidence that the Respondent has ever conducted business under the name. Here it is obvious that the business name has been registered for the sole purpose of defeating this action. The business name registration was not mentioned in the early correspondence of the Respondent with the WIPO Arbitration and Mediation Center (prior to the formal notification of the Complaint), and yet it appears in the late-filed Response. No evidence is presented in the Response that a business has ever been conducted under the name "TheTelís Trash Op", and indeed the Response indicates that the business is not yet operational. As a result I reject the argument of the Respondent: in this case, the business name has clearly been registered to defeat this action. It is therefore insufficient to show rights or a legitimate interest in the domain name.

The Respondentís second argument is that it has met all legal requirements to operate its business, evidenced by its registration of the domain names <thetelstrashop.com> and <thetelstrashop.com.au>. Clearly this is a nonsensical argument. The legitimacy of the registration of the <thetelstrashop.com> is the subject matter of this case, and so it cannot be used as evidence to prove its own validity. As to registrations of other cognate domain names being used as evidence in these proceedings, it is obvious that they carry little if any weight. The registration practices of registrars of other namespaces differ widely, and many register on a first-come-first-registered basis, viz the namespace is an "open" one. This Panel is in no position to assess the registration practices of other registrars. Even if the registrars adopt a closed namespace policy Ė as in the <.com.au> namespace Ė the registration of a cognate name is largely unhelpful to the issue of whether the Respondent has a legitimate interest in this name registered in a different namespace. The Respondent must demonstrate some evidence of rights or legitimate interest to the domain name in issue here. In general, other registrations are unlikely to be useful evidence going to this issue. And in this case, the registration of <thetelstrashop.com.au> says nothing at all about the registration of <thetelstrashop.com>

Finally, the Respondent suggests that it is about to operate a business called "Thetelís Trash Op". This business allegedly involves the auctioning of unwanted goods over the internet. The Respondent asserts that Mr Hartley has the nickname "The Tel", that the business involves "trash and treasure" and is like a goodwill store, known in Australia as an "opportunity (or "op") shop". The concatenation of various parts of these observations, lead to "TheTelís" "Trash" "Op", and hence the domain name <thetelstrashop.com>. The Respondent here seeks to show a combination of "demonstrable preparations to use" the domain name, as provided in Paragraph 4.c.(i) of the UDRP, and that he has been commonly known by the domain name, as provided in Paragraph 4.c.(ii) of the UDRP.

Unfortunately for the Respondent, the argument bears the hallmarks of the abusive registrant seeking to find some Ė or any Ė excuse for its registration; see for example Telstra Corporation Ltd v Barry Cheng Kwok Chu, < telstrashop.com>, WIPO case no. D2000-0423 (Respondent arguing that <telstrashop.com> was the name of his business in Chinese ideograms). The Respondent provides no evidence that he was ever known as "The Tel", and his explanation of how this came about (a tenuous connection to a newspaper called "The Telegraph") is not credible. Equally lacking in credibility is his explanation for the rest of the domain name. One might have an online trash-and-treasure market and opportunity ("op") shop. But it beggars belief that one would choose "Trash Op" as the obvious name for this. The two terms are just not found together in this configuration. The sheer leap of faith necessary to believe this explanation is, unfortunately for the Respondent, beyond this Panelist.

As a consequence I conclude that the Respondent has not shown demonstrable preparations to use the domain name. Nor has he pleaded or shown any of the other elements available in Paragraph 4.c. of the UDRP. I therefore conclude that the Complainant has satisfied the requirements of paragraph 4.a.(ii) of the UDRP.

C. The Respondent registered and is using the domain name in bad faith.

Which brings us to the final issue, that of bad faith registration and use by the Respondent. For paragraph 4.a.(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith.

On the initial question of whether there was bad faith registration, the domain name was registered on February 29, 2000. The Complainant has been operating in Australia under the name "Telstra" for five years prior to this, and its marks are extraordinarily well-known in Australia. It has been operating "Telstra Shops" in retail environments for years prior to the registration of the domain name. It is extremely unlikely that the registration could have been in good faith. The Respondent has provided no evidence rebutting the Complainantís assertions, except the material going to legitimate interest that I have already dismissed. I conclude that the registration was in bad faith.

There is evidence that the Respondent initially directed the domain name to a site that looked similar to the main Telstra site, in its use of colours, and features of the layout. The Complainant seeks here to introduce a number of concepts from Australian law about misleading and deceptive conduct, pursuant to s52 of the Trade Practice Act. I find that it is unnecessary to introduce these concepts formally. The direction of address to a web site that adopts the Complainantís trade dress is clear evidence of bad faith use by the Respondent I conclude that the Respondent has continued to use in bad faith.

I conclude that the Complainant has satisfied paragraph 4.a.(iii) of the UDRP.

 

7. Decision

The Complainant has made out all of the elements of paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy.

Pursuant to Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is granted.

I hereby order that the domain name <thetelstrashop.com> be transferred forthwith to the Complainant.

 


 

Dan Hunter
Sole Panelist

Dated: January 21, 2001