WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Telstra Corporation Limited v. 11/Shinpyo Kang

Case No. D2001-0623

 

1. The Parties

The Complainant is Telstra Corporation Limited, a company incorporated in Australia with its registered office located at 38/242 Exhibition Street, Melbourne, Victoria 3000, Australia. It is represented by Ms. Effie Markopoulos and Mr. Warwick A. Rothnie of Mallesons Stephen Jaques, Melbourne, Australia.

The Respondents are either or both of 11 and an individual, Shinpyo Kang, of Seoul, Republic of Korea. No postal or street address is available for the Respondents.

 

2. The Domain Name and Registrar

The domain name at issue is <imt2000telstra.com>.

The Registrar with which the domain name is registered is Internet Names World Wide (a division of Melbourne IT Limited), 120 King Street, Melbourne, Victoria 3000, Australia.

 

3. Procedural History

On May 2, 2001, a Complaint was received by the WIPO Arbitration and Mediation Center ("WIPO Center") for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution Policy ("the Policy"), adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999.

On May 15, 2001, the Registrar responded to a request for Verification of the domain name, confirming details of the Respondents, that the Policy applied to the domain name and that the current status of the domain name was "active".

On May 15, 2001, the WIPO Center sent a notification of complaint and commencement of administrative proceedings to the Respondents. The Respondents were advised that a response to the Complaint was required within 20 calendar days i.e. by June 3, 2001.

No response was received from the Respondents.

On June 8, 2001, a Notification of Respondent Default was sent to the Respondents.

On June 19, 2001, the WIPO Center informed both parties by email that an administrative panel comprising Andrew Brown had been appointed.

The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, that the Complaint was properly notified to the Respondents in accordance with the Rules, and that the Administrative Panel was properly constituted.

 

4. Factual Background

The Complainant has asserted and provided evidence in support of the following facts. Unless stated otherwise, the Panel finds these facts established.

The Complainant is a telecommunications company and is one of the two largest publicly listed companies in Australia. It is owned 50.1% by the Commonwealth Government of Australia and 49.9% by approximately 2.14 million shareholders.

The Complainant is the successor in title to the telecommunications business operated from 1901 to 1975 by the Australian Commonwealth Post Master-General and from 1975 under the name "Telecom Australia" by the Australian Telecommunication Commission and the Overseas Telecommunications Commission ("OTC"). Telstra was formed in 1992 by the merger of Telecom Australia and OTC and adopted Telstra Corporation Limited as its legal name in April 1993. At that stage it was still trading domestically as Telecom Australia, however, it was trading offshore as "Telstra". On July 1, 1995, the domestic trading name Telecom Australia was changed to "Telstra". TELSTRA is one of the most well-known brands in Australia.

The Complainant has registered, (and has filed applications with registrations pending for), 68 trademarks comprising or containing the word TELSTRA in Australia including a number of registrations in class 38 in respect of telecommunication services. The Complaint has exhibited these registered trademarks and pending applications.

The Complainant has registered, or has filed applications with registrations pending for, a number of TELSTRA trademarks overseas in various countries. The Complainant has registered the trademark TELSTRA in Korea (where the Respondents are located). The Complaint is also the owner of over 50 domain names containing the word TELSTRA.

The TELSTRA trademarks have been heavily promoted through advertising and sponsorship in Australia and overseas. For example, the Complainant sponsored the 2000 Sydney Olympic and Paralympic Games which received worldwide press and television coverage. All the Complainantís advertising in Australia media since 1995 (and in overseas locations since 1993) has been by reference to the TELSTRA brand. Promotional and advertising expenditure is very significant ranging from A$164 million in 1996/7 to A$181 million in 2000/2001.

The Complainant has a significant international presence. It operates a number of businesses in a number of Asia-Pacific, North American and European countries, either alone or in partnership.

The Complainant has also submitted detailed evidence of its activities in Korea:

(i) The Complainantís presence was known in Korea during the 1998 Seoul Olympics during which the Complainant worked with Koreaís Telecom provider;

(ii) Telstra Korea Limited is a 100% subsidiary of the Complainant and began operations in August 1999, providing wholesale voice services;

(iii) The TELSTRA brand was exposed extensively on television throughout the world, including Korea, during the lead up to and in the course of the Sydney Olympics in September 2000;

(iv) The Complainant advertised in Korean newspapers prior to the Australian Prime Ministerís visit to Korea in May 2000;

(v) Reports in relation to the Complainantís activities in Korea have been published in the Korean press prior to the registration by the Respondents of the disputed domain name.

The Complainant has been involved in the development of "IMT-2000". IMT-2000 is a common telecommunication industry abbreviation for "International Mobile Telecommunications-2000". It refers to the third generation mobile system which was scheduled to start in some parts of the world in the year 2000. The International Telecommunications Union ("ITU") has been involved in (amongst other things) the standardization of IMT-2000. The Complainant is an operator of IMT-2000 and has participated in various activities organised by the ITU including the harmonisation and standardization procedure.

On October 23, 2000, the Respondents registered the disputed domain name <imt2000telstra.com>.

On December 13, 2000, the Complainantís solicitors wrote to the Respondents by email, requiring them to either cancel the domain name or transfer it to the Complainant.

On December 18, 2000, the Respondents replied by email refusing to surrender the name. The email is reproduced in its entirety:

"Iím wonder recieving unwanted and unexpected your e-mail for my domain. Because I donít know and I didnít have ever heard your trade telstra. Before recieving your unwanted email, I didnít know telsta in where country was.

In my country your trade Telstra is not well known as your thought. If you ask anybody in my own country and though other country which has known telstra, you will recognize nobody known Telstra.

swear my god, I didnít registered beside your trade to confuse and imfringe your right.

But Iím registered my domain imt2000telstra that imt2000telephone using imt2000technology plus strada which means "a way" by english.

If you have any valuable right unimpended, I have also same right corresponds to it.

I think your demand which protests your right and if you commerse imt2000 in your company by your own name you did obligate yourself to protect your name association with imt2000.

IMT2000 technology, service and producs is boomed in my country.

I want supplying others informations(contents) through imt2000technology, networking to my clients and I needs my internet zip name.

But I didnít deal with imt2000 products in association with telstra and telstra products.

swear my god, I didnít registered beside your trade to confuse and imfinge your right.

But Iím registered my domain imt2000telstra that imt2000telephone using imt20000technology plus strada which means "a way" by english.

thanks for your recognition of TELSTRA.

Using my domain imt2000tel stra.com, I swear did not impringe your telstra"

The domain name <imt2000telstra.com> currently resolves to a "free parking" website that advertises the services of Verio, the Internet service provider (which is the technical contact for the domain name).

 

5. Partiesí Contentions

A. The Complainant

The Complainant contends that the domain name <imt2000telstra.com> is confusingly similar to the Complainantís extensive portfolio of TELSTRA trademarks, which have been registered in numerous countries, including Korea.

The Complainant contends that TELSTRA is a distinctive, invented or coined word and is not one that traders would legitimately chose unless they were trying to create a false association with the Complainant. It claims that, given the extensive reputation through Asia and Australia of TELSTRA, the public would expect the registrant and user of the disputed domain name to be associated with the Complainant, and that this likelihood of confusion is increased when the word "TELSTRA" is combined with "IMT 2000", which is a telecommunications service that the Complainant operates.

The Complainant also contends that the Respondents have no rights or legitimate interests in respect of the disputed domain name because the Complainantís use of the mark predates the registration of the disputed domain name and the Respondents do not have any association with the Complainant. The Complainant has not licensed or otherwise permitted the Respondents to use any of its trademarks, nor has it licensed or otherwise permitted the Respondents to apply for or use any domain name incorporating any of those marks.

The Respondents were not using the domain name before the Complainant acquired rights in the TELSTRA trademark and do not carry on any business and were not commonly known by the name TELSTRA, or any other words including the word TELSTRA, before the domain name was registered.

The Complainant contends that the Respondentsí explanation of the use of the mark is implausible. Apart from anything else "strada" is not an English word and has no meaning in English. From this, the Complainant concludes that the explanation was concocted after the event to justify the registration of the domain name.

The Complainant contends that the Respondents are well aware of the reputation of the mark TELSTRA. It bases this contention on the evidence that TELSTRA is a well-known trademark internationally and is highly distinctive, and that its significant international reputation was boosted by the extensive promotion the Complainant achieved with the Sydney Olympic Games in September 2000. The Complainant notes in this regard the timing of the Respondentsí registration of the disputed domain name on October 23, 2000, just after the Sydney Olympic Games.

It contends that the Respondentsí choice of the mark TELSTRA coupled with IMT 2000 (a telecommunications service) is not coincidental and the intention of this registration is to:

(a) attract Internet users to the Respondentsí online location by creating a likelihood of confusion with the Complainantís marks; or

(b) register the domain name with the aim of later selling it for an excessive price; or

(c) register the name to prevent the Complainant from registering it.

B. The Respondents

There has been no formal response from the Respondents.

 

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:

- 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; and

- That the Respondent has no rights or legitimate interests in respect of the domain name; and

- That the domain name has been registered and is being used by the Respondent in bad faith.

Domain name is confusingly similar/identical to Complainantís trademark

The Complainant has provided extensive evidence of registrations of its trademark TELSTRA in some 29 countries (including Korea) and as a Community Trade Mark.

The Panel considers that the mark is associated with the Complainant and the Complainantís products and services, particularly within Australia and the Asia-Pacific region.

The Panel accepts the Complainantís contentions that the likelihood of confusion is increased by the fact that the disputed domain name contains both the Complainantís trademark TELSTRA and the word IMT2000, a telecommunications industry abbreviation for the third generation mobile system which the Complainant operates. The domain name is a combination of the Complainantís distinctive trademark and additional words which do nothing to alter the fundamental character of the domain name as referring to some aspect of the Complainant and its marks (Telstra Corporation Limited v Ozurls, WIPO Case No.D2001-0046).

Accordingly, the Panel finds that the domain name <imt2000telstra.com> is confusingly similar to the trademark TELSTRA in which the Complainant has rights.

No legitimate rights or interest in respect of the domain name

The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondentsí rights or legitimate interest in the domain name. These circumstances are:

(i) before any notice to the Respondent of the dispute, the Respondentís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel finds that none of the conditions outlined in (i) to (iii) above have been made out by the Respondents. The Respondents have not provided any evidence on which the Panel could base such a finding. Nor does any evidence from the Complainant give rise to a suggestion that such a finding should be made. The Panel finds it appropriate to draw an adverse inference from the Respondentsí failure to respond to the Complaint (SSL International PLC v Mark Freeman, WIPO Case No. D2000-1080 and Alta Vista Company v Grandtotal Finances Limited, WIPO Case No. D2000-0848.)

The Panel accepts the Complainantís contentions that:

(a) the Complainantís use of the mark predates the registration of the disputed domain name;

(b) the Respondents do not have any association with the Complainant; and

(c) the Respondents do not carry on any business and were not commonly known by the name TELSTRA or any other words including the word TELSTRA before the domain name was registered.

Overall, the Panel can find no evidence to demonstrate that the Respondents have legitimate rights or a legitimate interest in the disputed domain name. The Panel therefore finds that the Complainant has met the requirement in paragraph 4(a)(ii) of the Policy.

Domain name has been registered and is being used in bad faith

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

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

It should be noted that the circumstances of bad faith are not limited to the above.

The Panel concludes that the Respondentsí conduct is in breach of paragraph 4(b)(iv) of the Policy above. Although the Respondents have not provided any formal response, a number of the statements made in their email to the Complainantís solicitors point to bad faith within the scope of this sub-paragraph.

The statement made by the Respondents:

"I want supplying others informations (contents) through imt2000technology, networking to my clients and I needs my internet zipname." (sic)

demonstrates that the Respondents intended to market their IMT related services via the domain name <imt2000telstra.com>. The Respondents could have chosen any other suffix to use with the generic name "imt2000" and did not need to use the Complainantís well-known trademark. The Respondentsí attempt to explain their choice of name i.e. "imt2000telephone using imt2000technology plus strada which means Ďa wayí by English" is implausible and represents an unsuccessful attempt to find an explanation after the event. Even on the Respondentsí explanation, the domain name would be <imt2000telstrada.com> not as registered by the Respondent.

Internet users encountering the domain name <imt2000telstra.com> will be likely to strongly identify the Telstra component of the domain name and associate it with the Complainant. This is likely to give rise to confusion with the Complainantís well-known trademark such that users will think the site is operated by the Complainant or is affiliated with it (when it is not).

The Policy requires not only that the Respondent has registered/acquired the domain name in bad faith, but also that the Respondent is using the domain name in bad faith. The domain name site resolves to a "free parking" website that advertises the services of Verio, the Internet service provider which is the technical contact for the domain name. This evidences bad faith use since the domain name containing the Complainantís well-known trademark leads to a site which has no connection with the Complainant. Indeed, the Panel infers from the Respondentsí email explanations and actions that, had it not been for the Complaint, this site would have been in even more active use.

The Panel therefore finds the domain name has been registered and is being used in bad faith.

 

7. Decision

For the foregoing reasons, the Panel decides that:

(a) the domain name registered in the name of the Respondents is identical or confusingly similar to the trademark TELSTRA to which the Complainant has rights; and

(b) the Respondents have no rights or legitimate interests in respect of the domain name in dispute; and

(c) the Respondentsí 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 <imt2000telstra.com> be transferred to the Complainant.

 


 

Andrew Brown
Sole Panelist

Dated: June 28, 2001