WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telstra Corporation Limited v. Jinseok Yang / JYT112
Case No. D2001-0800
1. The Parties
The Complainant is Telstra Corporation Limited ("Telstra"). It is a public company incorporated in Australia. Its principal place of business is in Melbourne, Victoria. It operates extensively throughout Australia. It is represented by Mr. Warwick Rothnie and Ms. Effie Markopoulos of Mallesons Stephen Jaques, Solicitors, of Melbourne, Victoria, Australia.
The Respondent is identified as Jinseok Yang / JYT112 whose details are given according to Network Solutions Whois database as Okin APT.7-716, Okin-Dong, Jongro-gu, Seoul 110-035, Republic of Korea.
2. The Domain Name and Registrar
The domain name the subject of the dispute is <telstra-pccw.net>.
The Registrar with whom the domain name is registered is Network Solutions Inc of 505 Huntmar Park Drive, Herndon, VA 20170, United States.
3. Procedural History
On June 18, 2001, the Complaint by Telstra was received by email.
On June 20, 2001, Registrar Verification was requested.
On June 25, 2001, the Registrar responded to the request.
On June 26, 2001, a Formal Notification of Complaint and Commencement of Administrative Proceeding was notified.
On July 16, 2001, a Respondent Default Notification was issued.
On July 26, 2001, a Notification of Appointment of Administrative Panel and projected decision date was notified.
The Panel having accepted the appointment and having considered the papers delivers the following Administrative Panel Decision.
4. Factual Background
Telstra is a company incorporated in Australia. It is majority owned by the Commonwealth Government of Australia with the balance of the shareholding owned by shareholders and instalment receipt holders.
Telstra is the successor in title to the telecommunications businesses operated for some 75 years by the Commonwealth Postmaster-General and since 1975, under the name "Telecom Australia" and "Overseas Telecommunications Corporation" or "OTC". Telstra was formed in 1992, by the merger of Telecom Australia and OTC and adopted its legal name Telstra Corporation Limited. Since July 1995, the domestic trading name has been Telstra which has been used ever since.
Telstra has a number of registered trade marks and pending applications including various in class 38 relating to telecommunications services. The trade marks however are extensive and cover 17 of the 42 Nice classes. The Australian registrations are shown in Annexure E to the Complaint.
The Annexure F to the Complaint lists a substantial number of registrations or pending applications in a variety of jurisdictions world-wide, including a Community Trade Mark. It has trade mark registrations in Korea.
Telstra also owns a number of websites and domain names containing the word Telstra, some details of which are given in para 27 of the Complaint.
Little is known of the Respondent. It is assumed that the Respondent is an individual residing in Korea. The Network Solutions WHOIS database shows the registrant as JYT112 (TELSTRA-PCCW2-DOM) with the address details as stated in para 1 above. The Respondent may be a business or other entity. Nothing turns on this. Some of the documents appear (inadvertently) to refer to JYT122. The details supplied by Network Solutions (which are assumed to be correct) state JYT112.
The Respondent does not appear to use the disputed domain name. The Complainant has not sent a cease and desist letter to the Respondent (but as to which see para 5A).
5. The Partiesí Contentions
Telstra claims as Complainant that it is the owner of various rights to the mark TELSTRA. It claims to be known under or by reference to the TELSTRA mark in connection with a broad range of telecommunications services. These include not only conventional telecommunications services but electronic services such as data, internet and online services.
Telstra has obtained an extensive range of trade mark registrations and has a number of registrations pending in a variety of jurisdictions. Annexures E and F to the Complaint provide evidence of the Australian registrations and pending applications as well as those registered or pending overseas.
Telstra claims to be one of the best known brands in Australia and accordingly claims to have a substantial reputation in Australia. It also claims to have a substantial reputation overseas almost to the extent of world-wide reputation as a result of its marketing, advertising, sponsorship and joint venture arrangements. These rights are protected in part by the trade mark registrations obtained in numerous overseas jurisdictions.
Telstra also indulges in considerable sponsorship as well as general advertising. In fiscal year 2000, the advertising spend is stated to be A$208,900,000. The advertising spend in the 3 years down to end fiscal 1999, is comparable. It appears that this advertising spend is what is commonly known in the industry as including above the line and below the line advertising expenditure. It is considerable.
Telstra performs services in a number of south-east Asian countries and has over 50 years experience in the Asia/Pacific region. Its reputation world-wide and especially in the Asia/Pacific region is clearly established.
As for its reputation and exposure in Korea, the Complainant points to its advertising in Korea leading up to the Sydney Olympics 2000, the visit to Korea of Prime Minister John Howard in May 2000, the establishment of its wholly owned subsidiary Telstra Korea Limited and also its trade mark registrations extant in that jurisdiction.
Telstra Korea Limited began operations in August 1999, providing wholesale voice services. It is involved in a joint venture (through Telstra Corporation Limited) with Pacific Century CyberWorks and has relationships with Korea Telecom, Dacom and Onse and an emerging ISR Seoul Telenet.
Reference is also made to various proceedings in Australia and complaints under the UDRP where Telstra has been successful in securing orders protecting its name and rights.
In the section below (para 6, discussion and findings) reference is made to a previous dispute over the domain name in suit (see decision in WIPO Case No. D2000-1789). The Complainant notes that in WIPO Case No. D2000-1789 the disputed domain <Telstra-pccw.com> was ordered by the Panelist to be transferred to the Complainant. The Respondent in that case was Domain-Broker-Labs. The WHOIS database search of the Respondent registrant in that case when compared with the search of the Respondent registrant in the instant case shows:
(a) The physical address given is the same
(b) The administrative and billing contact person is strikingly similar
(c) The administrative and billing contact email address is the same save only for a different ISP
(d) The administrative and billing contact address is the same
(e) The administrative and billing contact phone is one digit different (being the final digit) and the fax number is the same.
The Complainant in the instant case relates specifically to the inclusion of the acronym PCCW in the domain name. That acronym derives from Pacific Century CyberWorks, a Hong Kong publicly listed technology flagship of Pacific Century Group, an integrated telecommunications company which merged with Cable and Wireless HKT in August 2000.
PCCW is claimed to have 17,000 employees in 25 offices in 18 countries world-wide and has a number of notable strategic partnerships. Website information gives details of its activities.
In April 2000, Telstra and PCCW announced a strategic Pan Asian alliance which was later redefined:
(a) A joint venture company to operate a global internet protocol backbone business carrying regionally and globally voice and data services
(b) Purchase by Telstra of a substantial interest in a mobile business of PCCW
(c) A joint venture to develop a network of internet data centres throughout Asia initially focusing on core hosting services.
(d) A convertible notes issue.
All this was extensively publicised in the media in Australia and Asia (see Annexure H) which included reference to Telstra's future plans regarding some of its offshore operations.
The Respondent has defaulted and has not provided a response to the Complaint.
Notwithstanding the default by the Respondent it remains incumbent on the Complainant to make out its case. The Respondent must establish a breach of Rule 4(a) of the Policy.
6. Discussion and Findings
The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abusive domain name registrations.
As part of the process the Complainant must provide evidence and submissions in support of its Complaint. The Respondent is given full opportunity to respond. In this case the Respondent has elected to place no evidence nor any submissions before the Panel. There is however its email response to the cease and desist letter.
Paragraph 4(a) of the Policy sets out three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) The Respondentís domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Respondentís domain name has been registered and is being used in bad faith.
Each of the three elements must be proved by a Complainant to warrant relief.
As to the first ground, the Complainant Telstra alleges that the Respondentís domain name is confusingly similar to a trade mark in which the Complainant has rights. It claims that the Telstra trade marks, both registered and unregistered and pending applications including those used on an extensive scale internationally including in Korea have created sufficient of a reputation and goodwill owned by Telstra that the use by the Respondent of <telstra-pccw.net> is confusingly similar.
There can be no doubt whatever but that the name TELSTRA is well known to anybody familiar with the telecommunications industry in Australasia.
Such reputation would no doubt spread throughout the southern and south-western Pacific and reach as far as south-east Asia. In Australasia at least Telstra as a mark on its own would no doubt now be regarded as a famous mark.
It is not unreasonable to assume that in the case of the telecommunications industry the fame or notoriety of the Telstra mark would have extended beyond these territories to include most countries world-wide and certainly the south-western Pacific and south-east Asia.
The Complainant relies on its business association with Pacific Century CyberWorks, to which much publicity has been given, as entitling it to certain rights either as derivative of the primary mark Telstra or the combination of Telstra and PCCW, the latter being associated with Pacific Century CyberWorks, Telstra's joint venturer.
The Complainant alleges that PCCW is a meaningless word that has no association other than with Pacific Century CyberWorks. It is an unlikely candidate for adventitious registration as a domain name and all the more so when in combination with Telstra.
Accordingly ground (i) is made out.
The second ground requires the Complainant to establish that the Respondent has no rights or legitimate interests in respect of the domain name.
As the Respondent has defaulted it has provided no evidence nor any submissions in justification of any claim that it has rights to or legitimate interests in the disputed domain.
It is apparent however from the extensive material provided by the Complainant that it has a reputation and is well known throughout the Asia Pacific region. Its exposure in Korea precedes the registration of the disputed domain.
The Complainant claims that Telstra is an invented or coined word and is a word unlikely to be chosen by a Respondent innocently as having any connection with the Respondent or a business with which the Respondent has a legitimate interest. So also with PCCW or pccw.
The Complainant alleges that the Respondent can have no rights or legitimate interests in the disputed domain name as no one could legitimately choose it unless seeking to trade off or in some way wrongly become associated with or cause disruption to the name by virtue of its belonging to someone else, in this case Telstra. That must be correct. No useful purpose would be served by overburdening this decision by reference to the many Panelists' decisions in point including that of the highly experienced Panelist in <telstra-PCCW.com> decision (WIPO Case No. D2000-1789). Reference can also be made to this Panelist's own earlier decision in <telstraonair.com> decision (WIPO Case No. D2001-0301).
The Complainant has been assiduous in its protection of its trade marks and its rights to various domain names. The submissions in the Complaint refer to a number of earlier Panelistís decisions involving the Complainant. The seminal case which the Panelist follows is Telstra Corporation Ltd v Nuclear Marshmallows (WIPO Case No. D2000-0003). That involved the disputed domain name <telstra.org>.
Of the various circumstances which could be raised by the Respondent in defence of its registration none are applicable and all have been dealt with satisfactorily by the Complainant in its submissions. None of the matters could be established on the available evidence in favour of the Respondent. That the disputed domain name is inactive is in itself a telling factor against any claim to rights by the Respondent. Accordingly, ground (ii) is made out.
The third ground requires the Complainant to establish that the domain name has been registered and is being used by the Respondent in bad faith. In respect of ground (iii) both of these heads under (iii) must be made out Ė see WIPO Case No. D2000-0003 Telstra Corporation Ltd v Nuclear Marshmallows.
The Complainant alleges that the Respondent has both registered and is using the disputed domain in bad faith. Of the latter point, the Complainant acknowledges that the site appears to be inactive. The Complainant however relies upon the WIPO Case No.D2000-0003 Telstra Corporation Ltd v Nuclear Marshmallows decision as well as others to the effect that an inactive website may still amount to use of the disputed domain name in bad faith. Clearly, as the Panelistís decision in WIPO Case No. D2000-0003 indicates, it depends on the facts of each particular case.
The disputed domain was registered in March 2001, just after the decision in WIPO Case No. D2000-1789.
In this case much reliance is placed on the earlier decision involving <telstra-pccw.com> WIPO Case No. D2000-1789. The Complainant submits that it is likely that the Respondent in that decision is the same as the Respondent in this dispute. In WIPO Case No. D2000-1789 the Panelist found registration and use in bad faith established. This Panelist is quite content to adopt, with respect, what fell from the Panelist in that decision.
None of the available defences that are set out in paragraph 4(b) of the Policy can apply in the circumstances of this case. Applying the warning of the Panelist in the WIPO Case No. D2000-0003 Telstra Corporation Ltd v Nuclear Marshmallows case, on the particular facts of this case it is clear that the registration of the disputed domain has been in part at least for the purposes of blocking access to it by the Complainant. Adopting a broad interpretation to "use", this Panelist finds that use can include employment for a particular purpose which in the circumstances of this case can include blocking. Extended definitions of "use" include "exploit", "misuse", "take advantage of".
In accordance with modern principles of interpretation, applying the extended definitions of "use" and a purposive construction to the Policy and Rules, the Panel finds as a fact that the Respondentís actions in this case amount to use in bad faith. As the registration was in October 2000 and post-dated the activities of the Complainant of which this Panel finds the Respondent must have been aware, registration in bad faith is also made out.
The Respondent has defaulted. The evidence placed before the Panelist and particularly that based on the earlier decision in WIPO Case No. D2000-1789, the remarkable similarity in registrant details, all results in the ineluctable conclusion that the Respondent in each case is either exactly the same or very closely associated one with the other. Moreover, the facts permit of the inference that the present registration was designed as a deliberate attempt to thwart the outcome in whole or in part in WIPO Case No D2000-1789.
Whilst in the absence of a Respondent reply any Panelist would be slow to draw adverse inferences particularly ones involving dishonesty or bad faith, the conclusion in this case is inescapable.
Accordingly it follows that both heads of ground (iii) are made out. The disputed domain has been registered and is being used in bad faith.
For the reasons set out above the Panel finds:
(a) The domain name <telstra-pccw.net> registered by the Respondent is confusingly similar to trade marks to which the Complainant has rights;
(b) The Respondent has no rights or legitimate interests in respect of the domain name;
(c) The Respondentís domain name was registered and is being used in bad faith.
Accordingly, pursuant to clause 4(i) of the Policy, the Panel requires that the registration of the domain name <telstra-pccw.net> be transferred to the Complainant.
John Katz QC
Dated: August 7, 2001