WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Telstra Corporation Limited v. Mr. Jeon

Case No. D2001-1161

 

1. The Parties

The Complainant is Telstra Corporation Limited, an Australian company with its address in Melbourne, Victoria, Australia. The Complainant is represented by Ms. Effie Markopoulos and Mr. Warwick Rothnie, of the firm Mallesons Stephen Jaques, Solicitors, Melbourne.

The Respondent is Mr. Jeon, of Seoul, Republic of Korea. The Respondent is unrepresented.

 

2. The Domain Name and Registrar

The domain name at issue is <telstrapccw.com> ("the domain name"). The Registrar with which the domain name is registered ("the Registrar") is Network Solutions Inc., of Herndon, Virginia, United States of America. The domain name was registered on July 15, 2001.

 

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").

The Complaint was received by the Center on September 24, 2001 (email) and September 27, 2001 (hard copy).

On September 28, 2001, the Registrar confirmed that the domain name is registered with it, and that the registrant is, Mr. Jeon (TELSTRAPCCW3-DOM), Seoul 139-202, Korea.

The administrative and billing contacts for the domain name were given as Mr. Jeon of the above address.

The Registrar confirmed that its service agreement is in effect, and that the language of the service agreement is English. The domain name status was reported to be "Active".

Having satisfied itself as to procedural aspects of the Complaint, on October 1, 2001, the Center forwarded by email to the Respondent a form of Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint. The Notification and Complaint were sent (minus enclosures) by facsimile and email to the Respondent, and (with enclosures) by courier. The facsimile and courier transmissions were sent to the technical contact for the domain name which the Registrar had provided.

On October 2, 2001, the Respondent sent an email to the Center, stating:

"It was passed only two month that I registered the domain. but I want agreement the acident. i want korean language. Iím korea. Regards."

In response to that communication, on October 3, 2001, the Center advised the Respondent by email that it could not accept communications in Korean, as the language of the proceeding had been decided as English according to the registration agreement. The Center advised the Respondent to communicate to it and the other party in clear English.

On October 9, 2001, the Respondent sent an email to the Center, saying:

"I will transfer to TELSTRA. Regards."

The Center referred that communication to the Complainant, and on October 12, 2001, the Complainant requested that the Complaint be suspended for a period of two weeks, to permit the Complainant to correspond with the Respondent with a view to the transfer of the domain name to the Complainant.

On October 12, 2001, the Center advised the Complainant and the Respondent by email, that it would send formal Notification of Suspension of the administrative proceeding to the parties and to the concerned Registrar, on receipt of a request for suspension signed by the Complainantís representative.

On October 13, 2001, the Center received an email from the Respondent, which appears to be in the Korean language. On October 16, 2001, the Center emailed the Respondent, reminding him that it could not help him in the Korean language once the language of the proceeding had been determined as English.

On October 15, 2001, the Center issued a formal Notification suspending the administrative proceeding until October 26, 2001. The Notification advised that after October 26, 2001, the proceedings would be deemed to have been automatically terminated, unless the Center received a written request to re-institute the proceeding. In that event, the parties were advised that all time periods would be calculated from the re-institution date.

On October 26, 2001, the Complainant requested that the administrative proceeding be re-instituted, as the parties had been unable to settle the dispute during the suspension period.

In its request of October 26, 2001, for re-institution of the proceeding, and in a document styled "Supplementary Complaint" faxed to the Center on October 29, 2001, the Complainant sought to supplement its Complaint by reference to events which had occurred during the period of suspension of the Complaint. The Center requested additional copies of this document, and the additional copies were provided by the Complainant on or about October 31, 2001.

On October 31, 2001, the Center formally acknowledged receipt of the supplementary filing, and advised both parties by email that no express provision is made in the Rules or the Supplemental Rules for supplemental filings by either party, but that the Administrative Panel, when duly appointed, could, in its sole discretion, determine whether to admit and consider the supplemental filing in rendering its decision.

In notifying the Complainant and the Respondent of the re-institution of the proceedings on October 26, 2001, the Center advised the parties that the new deadline for the Respondent to file a Response would be November 4, 2001 (an extension corresponding with the two-week suspension period).

Nothing further was heard from the Respondent, and on November 6, 2001, the Center issued a formal Notification of Respondent Default.

A single-member Panel has been requested by the Complainant, and the requisite fee has been paid. On November 14, 2001, the Center invited Warwick Alexander Smith, of Auckland, New Zealand, to serve as sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.

On November 15, 2001, Warwick Alexander Smith advised his acceptance and forwarded to the Center his statement of impartiality and independence. The Center formally appointed Warwick Alexander Smith as sole Panelist in the administrative proceeding, on November 16, 2001. In terms of paragraph 15 (b) of the Rules, in the absence of exceptional circumstances, the Panel is therefore required to forward its decision by November 30, 2001.

The Complaint appears to comply with the requirements of the Rules and the Supplemental Rules, and the Panel has been properly appointed.

No other proceedings relating to the domain name have been notified to the Panel.

The language of the administrative proceeding is English, being the language of the registration agreement.

 

4. Factual Background

The Complainant - Domestic Activities

The Complainant is one of the largest publicly listed companies in Australia. It has a market capitalization of about AUD35 billion. It offers a wide range of telecommunications and information services, and the evidence shows that it is clearly a high-profile market leader in the telecommunications and information services fields in Australia. Its telephony network serves nearly all Australian homes and businesses. It is the largest provider of mobile phone services in Australia.

The Complainant operates about 100 "Telstra" shops across Australia. The shops sell Telstra-branded communications equipment, and provide facilities for customers to pay their telephone bills and arrange connection to Telstraís mobile communications service and the Internet service which it provides. The Complainant also publishes and distributes White Pages and Yellow Pages directories, in hard copy, CD Rom, and On-line formats.

The Complainant - Overseas Activities

The Complainant also operates numerous businesses outside of Australia, including in the United Kingdom, the United States of America, India, and Hong Kong. It provides a more limited range of (wholesale) services in China, Germany, Singapore, South Korea and Vietnam.

It has a 100% subsidiary, Telstra Korea Limited, in the Republic of Korea. Telstra Korea Limited began operations in August 1999, providing wholesale voice services.

The TELSTRA brand was advertised extensively throughout the world, including Korea, in the period immediately prior to the Sydney Olympic Games held in September of 2000. The Complainant also advertised in Korean newspapers in or about May of 2000.

The Complainantís Trademarks

The Complainant has numerous registrations for the trademark TELSTRA in Australia, covering an extensive range of services which span 17 of the 42 trademark classes. The registrations include both the word mark TELSTRA and the word TELSTRA with a device or devices. Many of the trademarks registered in Australia have been registered with effect from 1993.

The Complainant also has a number of other marks registered which include the word "Telstra" Ė eg TELSTRA SHOP registered in Class 42 for wholesaling and retailing services relating to telecommunications, and other specified services.

In addition, the Complainant has either registered or filed applications for registration of numerous "Telstra" trademarks in a number of overseas countries, including most of the larger Asian countries. One of those Asian countries is the Republic of Korea, where the TELSTRA mark is registered in Classes 9 and 38. The printout produced by the Complainant shows that the applications for registration in the Republic of Korea were lodged on September 27, 1993.

The Complainantís Domain Names

Telstra is the owner of numerous domain names containing the word "Telstra", including <telstra.com>, <telstra.net>, <telstra.org>, <telstra.com.au>, <telstra-inc.com>, and <telstrainc.com>. From December 1999, the Complainantís principal website has been at <www.telstra.com>. This site provides a number of electronic customer services, and also provides access to the Complainantís White Pages and Yellow Pages directories. The Complainant says that its websites have received between 11 million and 22 million hits per month throughout the year 2000, and that in September of 2000, the Telstra.com site was the fourth most frequently visited website in Australia.

The Complainant has successfully secured orders in the past under the Policy, procuring the transfer to it of a number of "Telstra" domain names that had been registered by other parties. Two of those domain names were very similar to the domain name in this case: in Telstra Corporation Limited v Domain-Broker-Labs (WIPO Case No. D2000-1789) the domain name "<telstra-pccw.com>" was transferred to the Complainant, and the same result was secured in respect of the domain name "<telstra-pccw.net>" in Telstra Corporation Limited v Jinseok Yang JYT 112 (WIPO Case No. D2001-0800).

The Complainant has provided details of very substantial expenditure on advertising and sponsorship featuring the TELSTRA mark, over the years since 1996/1997.

Complainantís Relationship with Pacific Century CyberWorks ("PCCW")

PCCW is a Hong Kong-based listed technology company forming part of the Pacific Century Group, one of Asiaís leading communications groups. PCCW operates in 18 countries around the world, and employs some 17,000 employees. PCCW is well known throughout Asia.

The Complainant and PCCW publicly announced a strategic Pan-Asian alliance, in April 2000. Since then, the alliance has been implemented in a number of ways, including the establishment of a 50/50 joint venture company providing voice, data and internet connectivity services in the Asia-Pacific region. The Complainant has also acquired a 60% interest in a former subsidiary of PCCW, and has purchased a PCCW convertible note with a value of US$750 million.

The joint undertakings between the Complainant and PCCW attracted substantial media attention worldwide, and the Complainant has produced numerous articles from the media in Australia and Asia demonstrating that interest.

The Respondent - registration of the domain name

The domain name was registered on July 15, 2001. When checked by the Complainant on September 24, 2001, the domain name was connected to a "parking style" site, advertising the services of the Internet website host Domain Valet.

On August 15, 2001, the Complainant received the following email at its web control office:

"Dear Sir

I am sending you this email because I believe my domain name would improve your business.

Companyís fate is depends on many things.

But the domain is most important, you know.

Good domain is more powerful than expensive advertisement.

And it will be more important that getting domain.

My Domain name telstrapccw.com is for sale.

Do you have any interesting in purchasing the domain.

please e-mail to me.

Thanks."

The Complainant then conducted a Whois search and confirmed that the email had been sent by the Respondent as the registrant of the domain name. The Complainant replied by way of a cease and desist letter from its solicitors, which was sent to the Respondent by email on August 17, 2001.

The Complainantís solicitors did not receive any response, and this administrative proceeding was then commenced.

 

5. Partiesí Contentions

Complainant

The Complainant relies on the previous WIPO decisions (WIPO Case No. D2000-1789 and WIPO Case No. D2001-0800) dealing with the domain names <telstra-pccw.com> and <telstra-pccw.net>. In both cases, the Panelists ordered the domain name to be transferred to the Complainant.

Domain name confusingly similar to TELSTRA marks

Generally, the Complainant says that the domain name is confusingly similar to its extensive portfolio of TELSTRA trademarks. In support of that general proposition, the Complainant says that the word "telstra" is an invented word, and can have no meaning apart from its association with the Complainant and its trademarks. The first part of the domain name is identical to the TELSTRA trademarks but for the additional "pccw", and "pccw" is only an acronym which would have no meaning but for its association with PCCW. The Complainant says that the addition of the acronym "pccw" does not remove the potential for confusing similarity with the TELSTRA trademarks, and that, given the extensive reputation throughout Asia and Australasia of both the Complainant and PCCW, the public would clearly expect the registrant of, and user of, the domain name to be associated with the Complainant alone or the Complainantís alliance with PCCW.

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

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain name.

It says that its use of the TELSTRA marks pre-dates the registration of the domain name by at least 7 years, and that the Respondent does not have any association with the Complainant or with its partner PCCW. Neither company has licensed the Respondent to use any of its trademarks.

Further, the Complainant says that the TELSTRA marks are so distinctive that no-one could legitimately choose the domain name unless trying to trade off the Complainantís rights.

Before the domain name was registered, the Respondent did not carry on any business under the name "telstrapccw", and was not commonly known by that name or by any other name containing the word "Telstra".

The domain name is currently inactive, and there has been no use (or demonstrable preparations for the use) of the domain name before notice of the Complainantís objections was given. Any future use would now be tainted by the email from the Respondent in which the domain name was offered for sale to the Complainant.

Generally, the Complainant says that none of the specific circumstances set out in subparagraphs 4(c)(i), (ii), or (iii) of the Policy (being specific examples of circumstances in which a Respondent might claim rights or a legitimate interest in a domain name) exists in this case.

Respondent has Registered, and is Using, the domain name in Bad Faith

The Complainant makes the following submissions under this head:

(i) The Respondent provided incomplete contact details on the Whois record for the domain name;

(ii) The email sent by the Respondent to the Complainant represents an attempt by the Respondent to make a profit on the registration, and was designed to induce the Complainant to offer an amount which would be more than the Respondentís cost of registration for the domain name (paragraph 4(b)(i) of the Policy, and WIPO Case No. D2000-0044);

(iii) The Respondent has not been known by the domain name at any point prior to its registration of the domain name;

(iv) Neither the name "Telstra" nor the acronym "pccw" has any natural affiliation or obvious connection to the Respondent. The combination of the unique word "Telstra" and an acronym are most unlikely to be chosen by legitimate traders;

(v) The email from the Respondent to the Complainant supports the conclusion that the Respondent was aware of the Complainant and its reputation when the domain name was registered;

(vi) Citing the <telstrashop.com> decision (WIPO Case No. D2000-0423), it does not matter that the Respondent does not live in Australia - given the offering of the domain name for sale, the media attention surrounding the Telstra/PCCW alliance, and the Respondentís likely awareness of Telstraís reputation in the TELSTRA marks, the Respondent cannot claim to have registered the domain name otherwise than in bad faith;

(vii) The fact that the Respondent has not actively used the domain name, does not matter. Inaction is within the concept of "use" in paragraph 4(a)(iii) of the Policy (citing the <telstra.org> decision (WIPO Case No. D2000-0003). The Respondent offering the domain name for sale to the Complainant evidences a form of passive holding of the name which amounts to use in bad faith.

Respondent

The only effective response which the Respondent has made to the Complaint, is the email of October 9, 2001, to the Center, stating "I will transfer to Telstra". A subsequent (very short) email communication to the Center on October 13, 2001, was in the Korean language, and no translation has been provided. The Respondent had previously communicated in English with both the Respondent and the Center, and the communication was sent in the face of specific advice from the Center that all communications must be in the English language (as required by Rule 11(a) of the Policy, English being the language of the Registration Agreement).

The Center repeated that advice to the Respondent after the Korean language email was received, but the Respondent has not provided a translation of the email.

 

6. Discussion and Findings

Preliminary Procedural Points

(i) The Korean language email of October 13, 2001

In some circumstances (eg where an important document on which one of the parties relies happens to be in some language other than the language in which the administrative proceeding is being conducted), it might be appropriate for the Panel to exercise its powers under Rule 11(b) of the Rules, and call for a translation of the foreign language documents. However, the Panel does not consider this to be an appropriate case for the exercise of that power. The Respondentís October 9, 2001 email to the Center was clear enough, and the Respondent has had ample opportunity after that date to make any additional response conforming with the Rules. The Complainant is entitled to have the proceeding conducted in accordance with the Rules, and Rule 11(a) requires (in the circumstances of this case) that the proceeding be conducted in the English language.

(ii) The Complainantís "Supplementary Complaint" filed on October 29, 2001

The parties do not have any general right to place further evidence before the Panel after the Complaint (or Response as the case may be) has been filed. In this case, the "Supplementary Complaint" was filed only some 6 days before the Respondentís Response was due, and if the "Supplementary Complaint" were to be considered, fairness would require that the Respondent be given some additional time to respond to the late filing. Furthermore, the "Supplementary Complaint" addresses matters which are said to have arisen after the original Complaint was filed. In most circumstances the merits of a complaint should be addressed as at the date of the Complaint, without the need for later supplementation. The justice of this case does not appear to the Panel to call for any different approach, and the Panel declines to consider the "Supplementary Complaint".

General Principles under the Policy and the Rules

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:

(i) That the Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

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

(iii) That the domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules requires the Panel to:

"Ö 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".

Rule 5(e) provides:

"If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint."

Paragraph 4(a)(i) of the Rules Ė domain name confusingly similar to Complainantís marks

The Panel accepts that this part of the Complaint has been established.

The Complainant is the proprietor of numerous registered trademarks or service marks consisting of or including the word TELSTRA, both in Australia and in other parts of the world. It has enjoyed those rights from as early as 1993, and it is clear that it has a very substantial reputation and goodwill in the TELSTRA stable of marks. That reputation and goodwill appears to extend beyond Australasia into Hong Kong and other Asian countries.

The word "Telstra" is an invented word, which has become distinctive of the Complainant and its goods and services in the minds of millions of people in Australasia, Asia and elsewhere.

The Panel accepts that the additional letters "pccw" do not remove the scope for confusion with the Complainantís TELSTRA marks. Those letters form an acronym which would have no meaning to Internet users who may be unfamiliar with PCCW, and the Panel is satisfied that a significant number of Internet users would be likely to assume that the domain name is associated with the Complainant. Those familiar with the Complainantís commercial alliance with PCCW would be likely to assume that the domain name is associated with the parties who formed that alliance.

In all those circumstances, the Panel finds that the domain name is confusingly similar to the Complainantís TELSTRA goods and services marks.

Paragraph 4(a)(ii) of the Policy - Respondent has no rights or legitimate interests in respect of the domain name

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective to demonstrate that a Respondent has rights or legitimate interests in a domain name for the purposes of paragraph 4(a)(ii) of the Policy.

The first of these situations is where the Respondent has either used the domain name in connection with a bona fide offering of goods or services before receiving notice of the dispute, or where there is evidence of demonstrable preparations for such use.

In this case, there is no evidence of the Respondent using the domain name for a bona fide offering of goods or services, and nor is there any evidence of preparations for such a use. The domain name is simply linked to an Internet website host. The only "use" which the Respondent appears to have made of the domain name, has been, within one month after the domain name was registered, to offer it for sale to the Complainant.

The second example of a circumstance constituting a possible "right or legitimate interest" under paragraph 4(c) of the Policy, is the situation where the Respondent (whether as an individual or through a business or other organization) has been commonly known by the domain name. There is no suggestion of that in this case.

The third example of a possible "right or legitimate interest" provided in paragraph 4(c)(iii) of the Policy, requires that the Respondent be 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. In this case, the only apparent use of the domain name has been the Respondentís attempt to sell it to the Complainant one month after it was registered. That could not constitute a legitimate or fair use of the domain name.

The Panel concludes that none of the specific examples of rights/legitimate interests provided for in paragraph 4(c) of the Policy exists in this case. More generally, the Panel accepts the Complainantís submissions that neither it nor PCCW has authorized the Respondent to use the domain name, and that the Respondent could have no connection, business or otherwise, with the invented word "Telstra" combined with the legitimate acronym "pccw".

Finally under this heading, the Respondent has not suggested that he has any right or legitimate interest in the domain name. On the contrary, his response on receiving the Complaint was to advise the Center on October 9 that he would transfer the domain name to the Complainant.

In all of those circumstances, the Panel is satisfied that the Complainant has sufficiently proved that the Respondent has no rights or legitimate interests in respect of the domain name.

Paragraph 4(a)(iii) of the Policy Ė Domain name registered and being used in bad faith

Paragraph 4(b) of the Policy sets out certain examples of conduct which, if found by the Panel to be present, are deemed to be evidence of the registration and use of a domain name in bad faith. One of the circumstances set out in paragraph 4(b) of the Policy is the circumstance where the domain name has been registered or acquired 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) Ö for a "valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name" (paragraph 4(b)(i) of the Policy).

In this case, the Respondent wrote to the Complainant only one month after the domain name was registered, pointing out that a domain name is most important to a companyís fate, and that a good domain "is more powerful than an expensive advertisement". The Respondentís email suggested that the domain name would improve the Complainantís business, and inquired whether the Complainant was interested in purchasing the domain.

The very choice of an invented word such as "Telstra", in combination with an acronym denoting a corporation with which the Complainant has a business alliance, makes it clear (at least in the absence of any denial from the Respondent) that the Respondent was well aware of the Complainant and PCCW at the time he registered the domain name. The Respondent made no use of the domain name within the first month after registration, and at the end of that month, approached the Complainant attempting to sell the domain name to it. When challenged by the Complainantís solicitors, the Respondent made no response, and in answer to the formal Complaint, the Respondent has advised that he will transfer the domain name to the Complainant.

In all those circumstances, the Panel has little difficulty in concluding that the domain name was registered primarily for the purpose of selling it to the Complainant. The Complainant is the owner of the trademarks / service marks to which the Panel has found that the domain name is confusingly similar, and the only remaining matter under paragraph 4(b)(i) of the Policy is whether the Respondent has sought to obtain a valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name.

The Respondent did not mention any proposed sale figure in his August 15, 2001 email, but it is clear that he had in mind more than the simple recovery of his out-of-pocket expenses. In the email, the Respondent expressed the view that the domain name would improve the Complainantís business, and he observed that a good domain is more powerful than an expensive advertisement. He said that the domain is "most important". In those circumstances, and in the absence of any explanation from the Respondent, the Panel finds that the Respondent intended to seek from the Complainant a consideration which was in excess of any modest out-of-pocket expenses which the Respondent may have incurred relating to the domain name.

In summary, the combination of the choice of a domain name which could only have been chosen because of its similarity with the Complainantís marks, the Respondentís failure to use the domain name, the offer to sell for profit to the Complainant within one month after registration, the failure to respond to the Complainantís solicitorsí cease and desist letter, and the Respondentís eventual advice to the Center that he would transfer the domain name to the Complainant, persuade the Panel that 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 Respondentís domain name is confusingly similar to the TELSTRA 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 has been registered and is being used in bad faith.

The Panel is satisfied that the Complainant is the party who is entitled to the domain name Ė previous decisions under the Rules have effected the transfer of the domain names <telstra-pccw.com> and <telstra-pccw.net> to the Complainant, and it therefore appears that, as between the Complainant and PCCW, the Complainant is the party entitled to ownership of the domain name. Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <telstrapccw.com> be transferred to the Complainant.

 


 

Warwick Alexander Smith
Sole Panelist

Dated: November 28,2001