WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telstra Corporation Limited v. Clair Can
Case No. D2002-0727
1. The Parties
Complainant, Telstra Corporation Limited, is a corporation with its principal place of business in Melbourne, Victoria, Australia.
According to Opensrs.orgs. WHOIS database, Respondent in this administrative proceeding is Clair Cain, located in Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <australianwhitepages.com>, registered with Tucows, Inc. in Toronto, Ontario, Canada.
3. Procedural History
The Complaint was submitted to the WIPO Arbitration and Mediation Center (the "Center") by email on August 2, 2002. The Center acknowledged receipt that same day, together with Registrar Verification. The Center notified Respondent on August 8, 2002, that an administrative proceeding had been commenced pursuant to the Uniform Domain Name Dispute Resolution Policy. A copy of the Complaint accompanied that notification. No reply was received from Respondent. The Center provided notification of Respondent’s default on August 30, 2002, and notification of the appointment of the Administrative Panel on September 3, 2002. The projected decision date is September 17, 2002.
The Panel has reviewed the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Policy"), in effect as of December 1, 1999, (the "WIPO Supplemental Rules") and finds that Complainant is in formal compliance with the requirements of the Policy, the Rules and the Supplemental Rules. Complainant paid the required fees for a single-member Panel on time and in the required amounts.
Having reviewed the communications records in the case file, the Panel finds that the Center discharged its responsibility under Paragraph 2(a), Rules, "to employ reasonably available means calculated to achieve actual notice to Respondent."
The Panel finds further, that the Administrative Panel was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.
4. Factual Background
Complainant is 50.1% owned by the State (i.e. the Commonwealth Government of Australia) and 49.9% owned by shareholders and installment receipt holders, of which there are currently approximately 2.14 million. Complainant is the successor in title to the telecommunications business operated from 1901 to 1975, by the Commonwealth Postmaster – General and from 1975, under the name "Telecom Australia" and the overseas telecommunications corporation, OTC. Complainant was formed in 1992, by the merger of Telecom Australia and OTC and adopted Complainant Corporation Limited as its legal name in April 1993, still trading domestically as Telecom Australia, while trading offshore as Telstra. On July 1, 1995, the domestic trading name Telecom Australia was changed to Telstra and has been used ever since.
Complainant is one of the largest publicly listed companies in Australia. The 49.9% publicly issued stock has a market capitalisation of around AU$35 billion. It is Australia's leading telecommunications and information services company, offering a wide range of telecommunications and information services. Its revenue in the financial year 2000-2001, exceeded AU$23 billion of which AU$18.7 billion was sales revenue. Complainant is one of Australia's largest employers. Its full time employees as at June 30, 2001, numbered 44,874. Complainant produces documents in support of these facts.
Complainant's main activities are carried out under or by reference to the "TELSTRA" ® mark, and, where appropriate, by reference to other marks. Included among these are "White Pages" ®
Complainant provides a range of services, in Australia and around the world, not limited to telephone exchange lines to residences and businesses. Complainant’s fixed telephony network extends across Australia and serves almost all Australian homes and most businesses. It provides local, long distance domestic and international telephone call services to over 8 million residential and business customers in Australia. Complainant provides and maintains approximately 36,000 public payphones in Australia. It leases or has sold 42,000 coin-operated payphones to its customers. It also operates mobile telecommunications services.
Complainant’s digital network provides coverage to more than 95% of the Australian population. It also provides international roaming to 75 countries. At June 2001, Complainant claims that it had provided mobile (or cell) phone services to over 5.2 million customers.
Complainant is the largest Internet service provider in Australia, with over 700,000 Australians using its services. Complainant also provides wholesale services to other telecommunications carriers and carriage service providers, as well as directory information and connection services. During the financial year 1998-1999, Complainant responded to over 520 million calls. It publishes and distributes directories, such as the "Telstra White Pages" ® directory and the "Telstra Yellow Pages" ®. Both are available in hard copy, CD-ROM and on-line format. Its "Yellow Pages" ® website is one of the most frequently visited sites in Australia.
Complainant also operates approximately 100 Telstra ® retail outlets throughout Australia using the trade mark "TELSTRA SHOP". Telstra Shops sell Telstra ® - branded communications equipment. It also provides facilities for customers to pay their telephone bills. Its customers can also connect to Telstra's MobileNet ® mobile telecommunications service. Telstra internet service provider is Telstra BigPond ®.
In addition to its operations in Australia, Complainant operates a substantial number of businesses in a number of Asia-Pacific, North American and European countries, either alone or in partnership. Many of these operations are conducted via Complainant's subsidiary companies, including Telstra International Limited and Telstra International (HK) Holdings Limited. Many of Complainant's overseas operations involve extensive wholesale activities and a number are retail. Complainant has a significant retail and wholesale presence in the UK, New Zealand, the United States of America, India and Hong Kong. Complainant also provides primarily wholesale services in China, Germany, Singapore, South Korea and Vietnam. It provides telecommunications consulting, contracting facilities management and outsourcing services in Cambodia, Indonesia, Japan, Kazakhstan, Kiribati, Laos, Malaysia and Sri Lanka.
Complainant provides evidence that it has been a global leader in telecommunications. In 1999, The Wall Street Journal ranked Complainant in the top 50 of "The World's 100 largest Public Companies." Complainant ranked 62nd in Business Week's 1999 Global 1000 of the world's most valuable companies by market value.
While the information provided by Complainant is several years out of date and Complainant is no longer within the top 50 of the largest public companies, it is apparent that it continues to operate within a global market.
Among its global markets, Complainant has a significant business presence in the United States of America. There, it conducts its operations as "Telstra Incorporated", a company incorporated in Delaware with main offices in San Francisco and New York. Telstra Incorporated provides telecommunications solutions for United States and multinational companies. Complainant maintains that, since 1984, more than 200 of the global Fortune 500 companies have become customers of Telstra Incorporated.
Complainant’s association with "white pages" has a history commencing in 1984. Since that time, Complainant has published and distributed "White Pages" ® directories for all Australian capital cities and major regional centres. These directories are entitled *** " White Pages" – where *** designates the city or region which the directory covers, (e.g. "Melbourne White Pages"). In addition, Complainant has provided advisory and information services to individuals and businesses relating to their entries in and use of these directories.
The hard copy "White Pages" ® directories, which are annual publications, include details relating to the names, addresses (including PO Box details), telephone numbers and facsimile, mobile telephone and pager numbers and more recently e-mail web site addresses, for individuals and businesses. They also include professional or business titles; the location and services provided by regulatory and government bodies; community help and welfare services; basic first aid; emergency contract numbers; the deaf alphabet; interpreting services; services for the elderly (known as The Age Page); postcodes; international telephone information and information about Complainant and its many products and services, including information about telephone connections, fault repairs, services for the disabled and recycling services.
In addition to the "White Pages" ® directories provided in hard copy form, the directory has been provided in CD-ROM format since approximately 1996. Complainant indicates that, more recently, it has provided a directory which is accessible on-line and provides high-speed access to the "White Pages" ® directory database at <www.whitepages.com.au>. A wireless residential search is also available to wap enabled mobile phone users at "www.wap.whitepages.com.au". Also available is a Palm Query Application (PQA) search of the White Pages database at <www.pqa.whitepages.com.au> for users of web clipping enabled personal digital assistants (PDA).
Complainant claims that it distributes a copy of its "White Pages" ® directory in hard copy book form to every home and business in Australia. It provides additional copies to businesses and individuals on request. In addition, it places copies in Complainant'a payphones throughout Australia; in Post Offices which operate as both distribution and resource centres, and in Complainant's libraries, which are located in the capital cities of Australia.
Complainant indicates that, owing to difficulties in accessing the historical records of distribution figures, it is difficult to provide an exact figure for the circulation figures of Telstra "White Pages" ® directories over the years. However, it states that in the 1994/1995, calendar year, 19 million directories were distributed nationally. It estimates that circulation figures throughout the years are in the hundreds of millions.
Independent market research found that 54% of metropolitan Australian adults surveyed used the "White Pages" ® directory in the previous week for contact details when they knew for whom they were looking. See Independent research conducted by DBM Consultants Pty Ltd, in Sydney, Melbourne, Brisbane, Adelaide and Perth, March 2002.
Complainant indicates that each individual and business situated in a particular Area is entitled to one free entry in the relevant "White Pages"® directory for each telephone number to which they subscribe. This free entry includes a name, address and telephone number. Businesses may also include, free of charge, a recognised occupation (such as gardener, doctor, motor mechanic or salesman) in abbreviated form.
Complainant provides detailed evidence of its numerous Australian trade mark registrations and pending applications for the "White Pages" trade mark for a wide variety of telecommunication services.
Complainant is also the owner of the domain name <whitepages.com.au>.
For several years, Complainant has operated its principal website at "www.telecom.com.au", followed by "www.telstra.com.au". In December 1999, Complainant re-launched its website at "www.telstra.com", to which "www.telstra.com.au" now resolves. The website is well-recognized in Australia. Complainant indicates that a leading national newspaper, The Australian, described the "www.telstra.com.au" website at that time as "the mother of all websites". It includes electronic customer services for its fixed-line and mobile-phone customers, news and other entertainment services, as well as combining its "White Pages" directories and "Yellow Pages" directories which previously were accessible only through separate sites located respectively at "www.whitepages.com.au" and "www.yellowpages.com.au". Complainant maintains that use of the various Telstra websites continues to grow at a rapid rate; that its websites received between 11 million and 22 million hits per month throughout the year 2000; and that, during September 2000, the <telstra.com> site was the fourth most frequently visited website in Australia.
Complainant provides published evidence that White Pages ™ OnLine averages approximately 1.3 million unique users and more more than 13 million searches per month; that this enables access to over 8 million residential listings and 1.4 million business and government listings; and that it is consistently rated as Australia’s no.1 Online directory.
Complainant provides evidence that it has rigorously protected its intellectual property and made strenuous efforts to monitor the activities of potential infringers, both in Australia and overseas. It has successfully secured orders from the Australian Federal Court for the transfer of <telstranet.com> in Proceeding VG 1 of 2000, and has successfully used the ICANN internet dispute resolution process to obtain orders for the transfer of <telstra.org> (Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003, <telstrashop.com> (Telstra Corporation Limited v Barry Cheng Kwok Chu, WIPO Case No. D2000-0423), <thetelstrashop.com> (Telstra Corporation Limited v Heaydon Enterprises, WIPO Case No. D2000-1672), <elstra.com> (Telstra Corporation Limited v Kandasany Mahalingam, WIPO Case No. D2000-0999), <telstramobilenet.com> <telstramobilenet.net>, <telstramobilenet.org> (Telstra Corporation Limited v Brett Micallef, WIPO Case No. D2000-0919), <telstra-freeonline.com>, <telstrafreeonline.com>, <telstrafreeonline.net>, <telstraprimebuy.com>, <telstraprimebuy.net> (Telstra Corporation Limited v Peter Lombardo & Ors, WIPO Case No. D2000-1511), <telstra-pccw.com> (Telstra Corporation Limited v Domain-Broker-Labs, WIPO Case No. D2000-1789), <bigpons.com> (Telstra Corporation Limited v Warren Bolton, Bolton Consulting Pty Ltd, WIPO Case No. D2000-1293), <i-telstra> and others (Telstra Corporation Limited v Ozurls, WIPO Case No. D2000-0046), <telstrapccw.com> (Telstra Corporation Limited v Mr Jeon, WIPO Case No. D2001-1161) and <telstrainternational.com> (Telstra Corporation Limited v Zanzibar IT Computer Services, WIPO Case No. D2002-0127).
The disputed domain name, <australianwhitepages.com> was registered on February 8, 2000. The current owner according to the Whois database is Clair Cain.
Complainant alleges that it became aware of the registration of <australianwhitepages.com> domain name in January 2002. The website came to Complainant's attention through a complaint received from an Australian consumer who, while looking for the Telstra "White Pages" Directories website, came across the website hosted by the Respondent. At this time, the domain name resolved to a website at "www.adultcinema.org" which contained explicit adult pornographic material. Complainant maintains that the woman in question was extremely upset and complained to her local Member of Parliament who in turn complained to Complainant. Complainant provides a printout of that website as it appeared on January 17, 2002.
At that time, the domain name in dispute was due to be renewed on or before February 8, 2002. Complainant provides documentary evidence that a check of the Whois database on February 11, 2002, disclosed that no renewal application had been filed. Complainant indicates further that, at that time, it elected not to pursue Respondent, claiming that it hoped the domain name would simply lapse.
Complainant checked the Whois database on February 14, 2002. The domain name had been renewed with a new expiry date of February 8, 2003. On March 18, 2002, an authorized representative of Complainant sent a cease and desist letter to Respondent by post to the address provided on the Whois record for the domain name. Complainant provides a copy of that letter.
On April 17, 2001, Complainant's authorised representative received the letter of demand by return post with a note "No such post office in Ark – do not remail in this envelope".
Complainant provides documentary evidence that, on May 2, 2002, the cease and desist letter was again forwarded to Ms. Clair Cain by e-mail at the three e-mail addresses listed in the Whois database namely firstname.lastname@example.org, email@example.com and firstname.lastname@example.org.
On May 8, 2002, Complainant's authorized representative received notification through a watching service that "the domain name has been removed from the root name service. As a result, website, e-mail and other server functions may stop functioning". From this date onwards, the <australianwhitepages.com> domain name ceased to resolve to a web-site.
On May 13, 2002, an authorised representative of Complainant forwarded a further e-mail to Respondent at the three e-mail addresses indicated earlier, noting that the website was no longer operational, but requesting the deletion of the offending domain name.
As of the date of the filing of this complaint, no response has been received from the Respondent.
Complainant, through its attorneys, maintains that it has attempted to discover the true identity and physical location of Respondent. It claims that it has conduced searches through altavista.com – maps page, att.com – directories page, US Census Bureau – Gazetteer, whitepages.com – "Find a person", "Look up by phone number", and "Look up by address".
Complainant claims that these searches produced one of the following results: no person was located under the name Clair Cain; no listing was located for the applicable telephone number (403) 512 6318; no listing was located for the registered address of the disputed domain name in Arizona, USA; the applicable area code relates to an area in the State of Kansas; the applicable zip code designates an area in Rooks County, Kansas; and the only city, town or locality listed under the applicable name is located in New York State.
5. Parties’ Contentions
Complainant contends that Respondent has registered a domain name which is nearly identical to and confusingly similar to the service marks and trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name in issue, and that Respondent has registered and is using the domain name <national-car-rental.org> in bad faith.
Respondent has not contested the allegations of Complainant.
6. Discussion and Findings
The Panel will evaluate each of Complainant’s contentions in order.
A. The Domain Name is Confusingly Similar to A Trade Market or Trade Service in which Complainant has Rights
Complainant alleges that Respondent’s use of the <australianwhitepages> domain name is confusingly similar to Telstra's extensive portfolio of "White Pages"® trade marks, included in the statement of facts above. Complainant provides further reasons for its assertions. The disputed domain name comprises Telstra's "White Pages"® trade mark, prefixed with the geographic designation "Australian". It alleges that the addition of that geographical designator serves to accentuate, rather than diminish, the confusing similarity between the disputed domain name and Complainant's trade marks. It adds that the addition of that designator makes it inevitable that Internet users will associate the domain name with the "White Pages" trade mark of the Complainant in Australia, rather than any other person or organization that may, in some other jurisdiction use, or have rights in, the name "white pages". Persons, and particularly persons outside Australia, who are seeking Australian telephone numbers, are likely to attempt to access Complainant's "White Pages"® directory by entering the domain name, only to be confronted with unwanted pornographic material.
Complainant alleges further that the word "Australian", although commonly used in other contexts, when used in combination with the term "White Pages" is not one which a trader would legitimately choose to use unless they were trying to create a false association with the "White Pages"® Directory of Telstra in Australia.
Complainant also argues that an Internet user, intuitively entering the URL "http://www.australianwhitepages.com" would almost certainly be doing so in an attempt to access the "Telstra White Pages" ® directory for Australia.
The Panel agrees with the Complainant. It is apparent that the disputed domain name, is confusingly similar to the Complainant’s mark, and that a reasonable person might be so confused in the particular circumstances. Internet users are likely to associate the three phrases in the domain name "Australian", "white" and "pages:" with Complainant’s registered mark, Telstra White Pages directory for Australia. The Panel agrees further that the use of the world "Australian" accentuates rather than detracts from the argument that "Telstra White Pages" and "Australian White Pages" are confusingly similar.
B. The Respondent has no rights or legitimate interest in respect of the disputed domain name
Complainant submits that Respondent has no rights and no legitimate interest in respect of the domain name <australiawhitepages.com>. The Panel agrees. Respondent has no connection with Complainant, and has not been licensed or authorized by Complainant to use Complainant's "White Pages"® trade mark as part of the domain name or in any other way. The Panel agrees further, that Respondent appears to have no connection with Australia. Nor is Respondent making a legitimate non-commercial or fair use of the domain name without an intention to mislead and divert customers or tarnish Complainant's trade mark, for commercial gain. Respondent clearly registered and is using the domain name for the purpose of diverting Internet users to a commercial web-site, which offers pornographic material for a fee. The Panel agrees that, doing so, causes user confusion and tarnishes Complainant's' trade mark and reputation.
Nor can the use to which the disputed domain name was put be characterized as being connected with a bona fide offering of goods or services. Respondent's conduct, in using the domain name to divert Internet users to a pornographic web-site which is operated under another domain name, does not constitute a legitimate offering of the goods or services under that domain name. Nor does Respondent’s adoption and use of the disputed domain name to mislead Internet users, constitute bona fides.
Complainant cites statements in support of its allegations in First American Funds Inc. v Ult. Search Inc., WIPO Case No. D2000-1840. There, panelist Scott Donahey stated: "…for use to be bona fide, the use must be one in good faith under paragraph 4(a)(iii) of the Policy". See also Cattlecase Ltd v. Wairua Holdings Pty Ltd., WIPO Case No. D2001-1373, and the further cases there cited, for example, Scholastic Inc v Applied Software Solutions Inc., WIPO Case No. D2000-1629, and Quixtar Investments Inc v. Dennis Hoffman, WIPO Case No. D2000-0253.
C. Respondent has registered and is using the domain name in bad faith
Complainant alleges that the record demonstrates that Respondent registered and is using the domain name in bad faith. Respondent had no authorization from, or connection to, Complainant, nor in the evidence presented, to Australia. Respondent’s registration and continued use of the disputed domain name, in the circumstances of this case, underscores Respondent’s intention, to attract, for commercial gain, Internet users to its web-site. Respondent was in bad faith in creating the likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's web-site, or of the products or services offered at that site or location. Respondent has also sought, in bad faith, to profit from the confusion arising from its bad faith usage.
Respondent’s removal of the link between the disputed domain name and the <adultcinema.org> web-site, has ameliorated at least some of the effect of Respondent’s bad faith in initially registering and continuing to use the disputed domain name.
Respondent is still in bad faith, however, in continuing to use the disputed domain name and in not canceling it, or transferring it to Complainant.
Moreover, should Respondent be permitted to retain the disputed domain name, there would be nothing to prevent the Respondent from reestablishing the link between the disputed domain name and the <adultcinema.org> or some other web-site, other than by Complainant initiating another Complaint. Such circularity would defeat the purpose underlying the good faith use of domain names.
On balance, given the registration and ongoing use of the domain name by the Respondent, the actual or probable harm to Complainant’s business in consequence, and the virtual certainty that Respondent knowingly used that domain name in the first instance in disregard of Complainant’s legitimate interests, constitutes bad faith; and the Panel so hold here.
For all of the foregoing reasons, the Panelist decides that the domain name registered by Respondent is identical or confusingly similar to the Name and Marks in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of that domain name, and that the disputed domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panelist requires that the registration <australiawhitepages.com> be transferred to Complainant:
Leon E. Trakman
Dated: September 10, 2002