WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Telstra Corporation Limited v. Ozurls

Case No. D2001-0046

 

1. The Parties

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

The Respondent: Ozurls, Box 255, Para Hills, Adelaide, South Australia 5096, Australia. Administrative, technical, and billing contact for the Domain Names: Barry Goode, Adelaide, South Australia 5096, Australia.

 

2. The Domain Name and Registrar

The domain names in issue are

(1) <i-telstra.com> registered November, 4 2000;

(2) <telstraaustralia.net> registered November 3, 2000;

(3) <telstracommunications.com> registered November 3, 2000;

(4) <telstradigital.com> registered November 3, 2000;

(5) <telstradomains.com> registered November 3, 2000;

(6) <telstra-ecommerce.com> registered November 3, 2000;

(7) <telstrainternet.com> registered November 3, 2000;

(8) <telstramobiles.com> registered November 3, 2000;

(9) <telstranetwork.com> registered November 3, 2000;

(10) <telstraphones.com> registered November 3, 2000;

(11) <telstrasatellite.com> registered November 3, 2000;

(12) <telstratechnical.com> registered November 3, 2000;

(13) <telstraurls.com> registered November 3, 2000;

(14) <telstraustralia.com> registered November 3, 2000; and

(15) <telstraweb.com> registered November 3, 2000;

(Hereafter collectively referred to as "the domain names").

All of the domain names were registered with OpenSRS, c/- Tucows.com Inc., 96 Mowat Ave, Toronto, Ontario MSK 3M1, Canada.

 

3. Procedural History

(1) The Complaint in Case D2001-0046 was filed in e-mail form on January 10, 2001 and in hardcopy form on January 15, 2001.

(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 filed in due time; and that

- the Administrative Panel was properly constituted.

As Panelist, I accept these findings.

(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

(4) The date scheduled for issuance of a decision is: March 19, 2001.

(5) No extensions have been granted or orders issued in advance of this decision.

(6) The language of the proceedings 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; retail sales of handsets and related equipment, and so forth. The Complainant also operates a large number of retail outlets throughout Australia under the name "Telstra Shop".

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; Telstra Corporation Limited v. Heaydon Enterprises, <thetelstrashop.com>, WIPO case no. D2000-1672.

The Complainant has registered, or has filed applications with registrations pending for, 68 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 outside Australia 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 "TELSTRA" 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, "Ozurls", is an Australian entity, the legal status of which is unclear. It appears to be some type of trading name of Mr Barry Goode, who is the administrative, technical, and billing contact for the domain names. The informal Response, which was provided by way of email, is signed "Barry", and presumably was written by Mr Goode.

C. Registration, Use, and Negotiations in Relation to the Domain Names

The domain names were registered on November 3 and 4, 2000. Within ten days, the Complainant contacted the Respondent, advising of its rights in the TELSTRA marks, and requesting transfer of the domain names. Mr Barry Goode, the administrative, billing and technical contact for the domain names, telephoned the Complainantís solicitors in response to the letter on November 20, 2000. During this telephone conversation,

Mr Goode said he registered the domain names because he was "amazed" that the Complainant had not registered them itself. He said he wanted to sell the domain names to the Complainant for the cost of their registration as well as an additional fee for his "time". Mr Goode said "if you donít think that is good value you can go to court or do whatever you like." Mr Goode also said that if the Complainant did not purchase the domain names from him at this price he would "put them on the international market" and offer them to the "internet world". Following this telephone conversation the Complainantís solicitors sent a further letter to the Respondent dated 5 December 2000. This letter stated that the Complainant was prepared to reimburse the Respondent for the cost of the registration fees paid by the Respondent in return for a transfer of the domain names to the Complainant. Mr Goode sent several emails to the Complainantís solicitors rejecting this offer. The Complainantís solicitors pressed Mr Goode for confirmation that he wanted more money that the documented out-of-pocket costs of registration. Mr Goode replied "I have stated fairly clearlyÖ what our position is", "you do not set the conditions for the sale of transfer of registration to Telstra - we do". "We will not tell you how much we paid for the domains, that is our business". Negotiations, such as they were, terminated at this point, and the Complainant instituted this proceeding.

The domain names have never resolved, and do not resolve, to any active web site.

 

5. Partiesí Contentions

A. The Complainantís assertions

The relevant parts of the fifteen domain names (eg ignoring the gTLDs ".com" and ".net"), are confusingly similar to the Complainantís "TELSTRA" marks. The Complainant asserts:

(1) The word "TELSTRA" is an invented or coined word. The domain names clearly incorporate the Complainantís "TELSTRA" trade mark and the relevant parts of the domain names have no meaning but for their association to the Complainantís 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.

(2) The second level name of the domain names is identical to the Complainantís "TELSTRA" trade mark but for the additional words: "i"; australia; communications, digital; domains; ecommerce; internet; mobile; network; phones; satellite; technical; urls; and web. The use of these additional words does not remove the potential for confusing similarity with the "TELSTRA" trade marks. The Respondent cannot escape a finding of confusing similarity by adding a geographic destination or generic term to the Complainantís mark. The additional words obviously refer to the location of the Complainantís head office (telstraaustralia.net; telstraustralia.com), a product or service offered by the Complainant (telstramobiles.com; telstraphones.com; telstraurls.com; telstra-ecommerce.com; telstrasatellite.com; telstracommunications.com; telstradomains.com), equipment used by the Complainant in the provision of goods and services (telstradigital.com; telstrainternet.com; telstranetwork.com; telstratechnical.com; telstraweb.com).

(3) Given the extensive reputation throughout Australia of "TELSTRA", the public (particularly in Australia) would clearly expect the registrant of, and user of, the domain names to be associated with the Complainant.

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 names (by at least 7 years) and the Respondent does not have any association with the Complainant. In particular, the Complainant has not licensed or otherwise permitted the Respondent to use any of its trade marks, nor has it licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of those marks.

(2) The Respondent was not using, nor had it even registered, the domain names 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 names were registered, the Respondent did not carry on any business and was not commonly known by any of the domain names or any other name consisting of "TELSTRA". In fact, the domain names are not being used at all.

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

The Respondent registered the domain names and is using them in bad faith. The Complainant asserts:

(1) The Respondent has not been known by the domain names at any point prior to its registration of the domain names.

(2) The Respondent has not legitimately traded under the mark "TELSTRA" or i-telstra, telstraaustralia, telstracommunications, telstradigital, telstradomains, telstra-ecommerce, telstrainternet, telstramobiles, telstranetwork, telstraphones, telstrasattelite, telstratechnical, telstraurls, telstraustralia or telstraweb, nor have any of its principals.

(3) The name "TELSTRA" and i-telstra, telstraaustralia, telstracommunications, telstradigital, telstradomains, telstra-ecommerce, telstrainternet, telstramobiles, telstranetwork, telstraphones, telstrasattelite, telstratechnical, telstraurls, telstraustralia and telstraweb have no natural affiliation with or obvious connection to the Respondent, its principals or their business. The name "TELSTRA" is an invented word and not one that traders would legitimately choose. On the other hand, "TELSTRA" is uniquely distinctive of the Complainant on account of its extensive use and promotion in Australia and elsewhere. In particular this combination of a unique word, "TELSTRA" and a word describing the Complainantís business activities or location are even less likely to be chosen by legitimate traders

(4) Mr Goode admitted that he registered the domain names with the aim of later selling them for an excessive price and, if the Complainant did not comply, to prevent Telstra from registering it by selling it to someone else on the "international market".

(5) Registering these domain names in the hope of re-selling them is not a legitimate, "good faith" use.

(6) Registering numerous domain names that are the names or marks of well-known businesses suggests an intent to profit from the activities of others, an example of bad faith.

(7) Although the domain names are not active, the concept of use in bad faith is not limited to positive action.

(8) Given the distinctive nature of "TELSTRA", the reputation of the owner of that trade mark and the Respondentís statements, there can be no doubt that the Respondent is well aware of the reputation of the Complainant in its name. Further, it was this very fact that led the Respondent to register the domain names. This behaviour is clearly in bad faith as the use or even existence of the domain names will lead to consumer confusion as anyone who consults one of the widely available Whois tools would be led to believe that the Respondent is the Complainant or is associated with the Complainant.

Accordingly the Panel should order that the domain names be transferred to the Complainant.

B. The Respondentís assertions

The Respondentís assertions do not specifically address the three requirements in Paragraph 4.a; indirectly some aspects of the Response go to the requirements of Paragraph 4.a.(iii). The Respondent asserts that it gave the Complainant the opportunity to settle the proceeding for either AU$30.00 or AU$48.00 per domain name, which represents its out of pocket costs. Therefore, it seems that the Respondent is asserting that the bad faith requirement is not made out.

Accordingly the Panel should not order that the domain names be transferred to the Complainant.

 

6. Discussion and Findings

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 an enormous telecommunications and infrastructure provider, with an extensive presence in Australia, in Asia, and internationally. 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" in respect of numerous classes in a number of countries, but most saliently Australia. 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. There is no question therefore that the Complainant has rights in the abovementioned trade marks as registered proprietor of the 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 names are confusingly similar to its "TELSTRA" marks. It asserts that this is so because: (1) The mark "TELSTRA" is an invented or coined word and so it is not one that traders would legitimately choose unless they were trying to create a false association with the Complainant; (2) The domain names are identical to the Complainantís "TELSTRA" trade mark but for the additional words: "i"; "australia", "communications", "digital", "domains", "ecommerce", "internet", "mobile", "network", "phones", "satellite", "technical", "urls", and "web" and the use of these additional words does not remove the potential for confusing similarity with the "TELSTRA" trade marks for various reasons; and (3) given the extensive reputation throughout Australia of "TELSTRA", the public (particularly in Australia) would clearly expect the registrant of, and user of, the domain names to be associated with the Complainant.

The Respondent makes no assertion as to this issue.

Clearly the domain names are similar to the Complainantís marks. The domain names all contain the "TELSTRA" mark, with various additions of prefixes or suffixes. The issue then is whether this similarity is confusing, and here each domain name must be examined on its own merits or demerits. However, a principle which applies to all the domain names is that the addition of generic top level domains (gTLDs) or country code top level domains (ccTLDs) does not affect the confusing similarity or identity between the domain name and the trade mark(s) in issue. This has been clearly established from the beginning of the UDRP process, and now is no longer an issue. Thus, the addition of various types of gTLDs to the domain names (".com", ".net") does not change the assessment of confusing similarity.

In relation to domain names (2) (<telstraaustralia.net>) and (14) (<telstraustralia.com>): as many cases have now concluded, the addition of a geographic descriptor does not change the confusing nature of the similarity, see eg Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; Wal-mart Stores, Inc. v. Yongsoo Hwang, NO-WALMART and NO-WALMART.COM, WIPO Case No. D2000-0838; AltaVista Company v. S.M.A., Inc., WIPO Case No. D2000-0927; Yahoo! Inc. v. Microbiz, Inc., WIPO Case No. D2000-1050; Viacom International Inc. v Sung Wook Choi and M Production, WIPO Case No. D2000-1114; Amway Corporation, Inc. v. Business Internet Connection and Rex Mehta, WIPO Case No. D2000-1118; Jefferson Smurfit Group plc v. Stephen Davidson Inc., WIPO Case No. D2000-1117. I see no reason to depart from this line of authority. Thus the domain names that involve the Complainantís mark with the addition of the geographical descriptor of where both the Complainant and Respondent are based ("Australia") are confusingly similar to the Complainantís mark.

In relation to domain names (3) (<telstracommunications.com>), (5) (<telstradomains.com>), (6) (<telstra-ecommerce.com>), (7) (<telstrainternet.com>), (8) (<telstramobiles.com>), (9) (<telstranetwork.com>), (10) (<telstraphones.com>), (11) (<telstrasatellite.com>), (13) (<telstraurls.com>), and (15) (<telstraweb.com>): these domains all involve the Complainantís marks in conjunction with a word that is descriptive of services or products that it offers. Any Australian consumer coming across these combinations will clearly associate the domain names with the Complainant, not the Respondent. Since both parties are Australian, clearly here it is Australian consumers of whom we need to be mindful. The addition of the descriptive words in these domain names is not going to reduce the confusing similarity present in these domain names.

In relation to the remaining domain names, numbers (1) (<i-telstra.com>), (4) (<telstradigital.com>), and (12) (<telstratechnical.com>): these are similar to the domain names dealt with in the last paragraph, except the additions are not descriptive of products or services, but are generic words. As has been held in a number of other cases, this too is insufficient to ward off the spectre of confusing similarity, see Quixtar Investments Inc v Dennis Hoffman WIPO Case No. D2000-0253; State Farm Mutual Automobile Insurance Company v Douglas La Faive, NAF Case No. FA 95407; State Farm Mutual Automobile Insurance Company v Kyle Northway, NAF Case No. FA 95464; Jefferson Smurfit Group plc v. Stephen Davidson Inc., WIPO Case No. D2000-1117. There is nothing in the additional words that alters the fundamental character of the domain name, as referring to some aspect of the Complainant and its marks.

The Complainant has therefore shown that it has rights in marks. It has also shown that each one of the domain names is confusingly similar to these marks. I conclude therefore that the Complainant has satisfied the requirements of paragraph 4.a.(i) of the UDRP in respect of all fifteen marks.

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 detailed in section 4, above.

The Respondent makes no submission in relation to this requirement. The Respondent has taken the opportunity to respond to the Complaint, and makes no assertions in relation to this ground. It pleads none of the special circumstances of Paragraph 4.c of the UDRP. Therefore, I have no hesitation in concluding that it has no legitimate interest in the domain names in issue.

As a consequence I 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.

The Complainant makes a large number of assertions in relation to this requirement, but the issue can be resolved on the basis of only one claim. There is sufficient evidence, in my view, to conclude in this case on the basis of Paragraph 4.b.(ii) of the UDRP. This provides that bad faith registration and use will be made out where the Respondent has "registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] Ö engaged in a pattern of such conduct." A "pattern of conduct" as required in Paragraph 4.b.(ii) typically involves multiple domain names directed against multiple Complainants, but may involve multiple domain names directed against a single Complainant (see Smoky Mountain Knife Works v. Deon Carpenter, eResolution Case Nos. AF-230ab; Gruner + Jahr Printing & Publishing Co., G + J McCallís LLC, Rosie OíDonnell and Lucky Charms Entertainment, Inc. v. Savior Baby, WIPO Case No. D2000-1741). Here the latter applies. Fifteen domain names that involve the Complainantís mark and a series of services, products, geographical descriptors, or generic words obviously involves a pattern of conduct directed against the Complainant, stopping it from reflecting its mark in corresponding domain names. I conclude that paragraph 4.b.(ii) is made out.

I conclude therefore 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 Paragraph 4.i. of the Uniform Domain Name Dispute Resolution Policy and Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is granted.

I hereby order that the following domain names be transferred forthwith to the Complainant:

<i-telstra.com>

<telstraaustralia.net>

<telstracommunications.com>

<telstradigital.com>

<telstradomains.com>

<telstra-ecommerce.com>

<telstrainternet.com>

<telstramobiles.com>

<telstranetwork.com>

<telstraphones.com>

<telstrasatellite.com>

<telstratechnical.com>

<telstraurls.com>

<telstraustralia.com>

<telstraweb.com>

 


 

Dan Hunter
Sole Panelist

Dated: March 20, 2001