WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Telstra Corporation Limited v. Telsra com /Telecomunicaciones Serafin Rodriguez y Asociados

Case No. D2003-0247

 

1. The Parties

The Complainant is Telstra Corporation Limited, Melbourne, Victoria, of Australia, represented by Davies Collison Cave of Australia.

The Respondent is Telsra com/Telecomunicaciones Serafin Rodriguez y Asociados, Porto Do Son A Coruna of Spain.

 

2. The Domain Name and Registrar

The disputed domain name <telsra.com> is registered with OnlineNic, Inc. dba China-Channel.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 1, 2003. On April 2, 2003, the Center transmitted by email to OnlineNic, Inc. dba China-Channel.com a request for registrar verification in connection with the domain name at issue. On April 3, 2003, OnlineNic, Inc. dba China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 7, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2003. The Response was filed with the Center on April 28, 2003, in Spanish.

On April 28, 2003, the Center sent an e-mail to Respondent, explaining (in English and Spanish) that the language of the registration agreement is English, and that Respondent was therefore required to file an English translation of his Response. The requested translation was not received in the Center.

The Center appointed Kiyoshi I. Tsuru as the sole panelist in this matter on June 16, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On June 23, 2003, Complainant addressed a communication to the Center, whereby Complainant stated that the official language of the proceeding, according to Rule 11, was English. Complainant argued that Respondentís submission in Spanish violated Complainantís due process rights.

On June 26, 2003, the Panel issued Procedural Order No. 1, thereby requesting Respondent to provide an English translation of his Response by July 7, 2003. No translation was filed with the Center.

 

4. Factual Background

4.1 Complainantís Activities

4.1.1 In Australia

Complainant is one of the largest publicly listed companies in Australia. The 49.9% publicly issued stock has a market capitalization of about A$35 billion.

It is Australiaís leading telecommunications and information services company. Its revenue in the financial year 2000-2001 exceeded $A23 billion of which $A 18.7 billion was sales revenue.

Its full-time employees as of June 30, 2001, numbered 44,874. Its fixed telephony network extends across Australia and serves virtually 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.

It provides and maintains approximately 36,000 public payphones in Australia, and leases or sells 42,000 coin operated payphones to Telstraís customers.

It is the largest provider of mobile phone services in Australia, providing mobile telecommunications services to more than 95% of the Australian population and international roaming to 75 countries.

It is the largest Internet service provider in Australia with over 700,000 Australians now using its services.

It publishes and distributes directories, one of which is the most frequently consulted, via the Internet.

It operates around 100 retail outlets, which are distinguished by the trademark TELSTRA SHOP.

It operates a substantial array of businesses in a number of Asia Pacific, North American and European countries, either alone or in partnership.

4.1.2 Internationally

Complainant has an active retail and wholesale presence in the following countries:

UK
New Zealand
USA
India
Hong Kong

It also operates wholesale services in the following jurisdictions:

China,
Germany,
Singapore,
South Korea
Vietnam

And finally, it provides telecommunications consulting, contracting, facilities management and outsourcing services in the following countries:

Cambodia
Indonesia
Japan
Kazakhstan
Kiribati
Laos
Malaysia
Sri Lanka

In 1999, The Wall Street Journal ranked Telstra in the top 50 of "The Worldís 100 largest Public Companies" and it ranked 62nd in Business Weekís 1999 Global 1000 of the worldís most valuable companies by market value.

4.2 Complainantís trademarks

Complainant has registered, or has filed applications for 74 trademarks comprising or containing the word "TELSTRA" in Australia, some of which belong to class 38, as well as 16 trademarks covering the word "TELSTRA" in the U.S., and some applications for "TELSTRA" in Brunei, Cambodia, France, Germany, Hong Kong, Indonesia, Ireland, Japan, Kazakhstan, Kiribati, Korea, Laos, Malaysia, Mauritius, New Zealand, Papua New Guinea, Peopleís Republic of China, South Africa, Russian Federation, Saudi Arabia, Singapore, Taiwan, The Philippines, Tonga, United Kingdom, Vanuatu, Vietnam and Western Samoa. Complainant has also obtained a group of Community Trademarks, which cover European Countries such as Spain.

Complainantís trademarks have been registered in Australia since as early as 1992, and in the European Union since as early as June 1998.

4.3 Complainantís domain names

Complainant is the owner of the following domain names, inter alia:

<telstra.com>
<telstra.net>
<telstra.org>
<telstramobiles.com>
<telstra-mobile.com>
<telstra.com.au>
<telstra-inc.com>
<telstrainc.com>
<telstrashop.com>

4.4 The disputed domain name

The domain name <telsra.com> was registered on August 30, 2002

4.5 Others

Complainant has spent more than A$ 118.4 in advertising activities during the 2002/2003 financial year (to date).

Complainantís websites received between 11 million and 22 million hits per month throughout the year 2000.

Complainant has obtained approximately 20 UDRP cancellation or transfer orders, regarding domain names relating to Complainantís trademark.

 

5. Partiesí Contentions

A. Complainant

Complainant states the following:

- That it appears from an initial viewing of Respondentís site that Respondent may be involved in the telecommunications industry in Spain, considering that the title of the home page, as translated into English means "Serafin Rodriguez and Associates Telecommunications/Telecom".

- That on the home page of the www.telsra.com site there is a facility where users are invited to register domain names, provided with a hyperlink to a commercial site that provides domain name registration and hosting services.

- That when attempting to exit this website, users are "mouse-trapped" and linked to pornographic websites hosted at www.instant-access.sex-explorer.com. That when attempting to exit the pornographic sites several other pages automatically open onto the screen making it difficult for the user to exit the site.

- That on November 11, 2002, Complainantís counsel sent a cease and desist letter to Respondent by e-mail to the address provided on the Whois record for the disputed domain name. That no response was received. That a reminder letter was sent on November 19, 2002. That on November 20, 2002, a response was received from Respondent in Spanish, stating "I only speak Spanish, warm greetings, kind regards". That Complainant translated into Spanish all correspondence previously sent to Respondent, and resent it on November 28, 2002.

A.1. Identity or Confusing Similarity

Complainant states the following:

- That "telsra" is confusingly similar to Telstraís extensive portfolio of "TELSTRA" trademarks (see point 4.2 supra).

- That the word "TELSTRA" is an invented or coined word.

- That the domain name <telsra.com> is only a minor variation of the well-known trademark "TELSTRA" (eliminating the "t")

- That traders would not legitimately choose the domain name <telsra.com> unless they were trying to create a false association with Complainant, or attempting to attract users to its site or related sites by attracting traffic who in error type <telsra.com> rather than <telstra.com>. That such activity is called "typosquatting" and has been adopted by a number of cybersquatters to attract Internet users to their websites and related websites for monetary gain.

- That the following precedents are applicable to the present proceeding:

- Reuters Limited v Global Net 2000, Inc, WIPO Case No. D2000-0441, July 13, 2000.

- VeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446, January 31, 2001.

- NIHC, Inc. and Nordstrom, Inc. v. John Zuccarini, WIPO Case No. D2001-1260, January 15, 2002.

- That in addition to the fact that the <telsra.com> domain name and <telstra.com> domain name are nearly identical, Respondent is using the disputed domain name to divert traffic to the "www.dns.com" site, which offers for sale domain name registrations and website services. That the "www.telsra.com" website mousetraps users to pornographic websites when they attempt to exit the site. That the above factors contribute to the likelihood of confusion, and that Respondent appears to have made use of minor misspellings of Complainantís trademark "TELSTRA" solely to take bad faith advantage of spelling errors made by Internet users when attempting to enter the Complainantís Internet address at "www.telstra.com".

A.2 Respondentís lack of rights or legitimate interests in respect of the domain name

Complainant argues the following:

- That Respondent has no connection with, license from or authorization from Complainant.

- That the disputed domain name is not the name of Respondent nor is it similar to or, in any way connected with the name under which Respondent holds the domain name registration.

- That having instructed a Spanish Firm to investigate the business activities of Telecomunicaciones Serafin Rodriguez Y Asociados, and having conducted its own investigations, it obtained the following results:

▪ No company named Telecomunicaciones Serafin Rodriguez Y Asociados or "Telsra" was found in the Spanish Registry of Companies;

▪ No such names were found in Spanish Yellow Pages directories.

▪ According to the Whois records for the Spanish Country Code Domain, Mr. Serafin Rodriguez is the manager of Fastroson S.L., a Spanish ISP domiciled in Porto Do Son (a Coruna), the same town where the Registrant and three contacts relating to the disputed domain name are domiciled.

▪ Mr. Serafin Rodriguez is the administrative and technical contact of the domain name <registrando.com>. The same postal address and telephone number features for such domain name are disclosed in the Whois record for <telstra.com> and <fastroson.com>.

▪ The webpage "www.registrando.com" is a portal for the registration of domain names and was allegedly established in 1995.

▪ Mr. Rodriguez is also the sole manager and partner of the company Construcciones Serafin Rodriguez C.L., which was incorporated on January 14, 2002.

▪ No use of the term "TELSRA" by Respondent was found as a result of said investigation. No registrations for any trademarks, company or business names were found in Spain.

▪ No records regarding a Community Trademark for "TELSRA" were found.

▪ In light of the above, the domain name <telsra.com> is in no way associated with Respondent and Respondent has not become commonly known by this name.

- That Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. That Respondent is diverting Internet users to a commercial website, "www.dns.com" presumably for pecuniary gain. That users are mouse-trapped to pornographic sites when attempting to exit Respondentís website, allowed to view pornographic material for free and invited to pay a sum of money to become members of pornographic sites (Complainant cites Park Place Entertainment Corporation v. Bowno, WIPO Case No. D2001-1410, January 29, 2002).

- That Respondentís use of the disputed domain name cannot be catalogued as a bona fide offering of goods or services, considering that Respondentís conduct consists of diverting users to the www.dns.com website and trapping users to pornographic sites (and cites First American Funds, Inc. v. Ult.Search, Inc, WIPO Case No. D2000-1840, April 20, 2001).

A.3 Bad faith registration and use

Complainant has made the following arguments :

- That Respondentís absence of any authorization by, or in connection to Complainant and the subsequent use of the domain name, leads to the inevitable conclusion that Respondent registered the domain name with the intent that it would be used to attract, for commercial gain, Internet users to the websites.

- That Respondentís use of the disputed domain name is clearly an attempt to attract users to online pornographic websites for commercial gain by creating a likelihood of confusion with Complainantís name and trademarks (and cites NIHC, Inc. and Nordstrom, Inc. v. John Zuccarini, see point 5.A.1. supra, National Association of Stock Car Auto Racing, Inc. v. RMG Inc - BUY or LEASE by E-MAIL, WIPO Case No. D2001-1387, January 23, 2002, and Daniel C. Marino, Jr. v. Video Images Productions, et al., WIPO Case No. D2000-0598, August 2, 2000).

- That Respondent cannot contend that it was unaware of Complainantís trademark rights, considering that Complainantís mark has been extensively used and promoted throughout the world, including Europe for many years; that Respondent appears to be in a business in which it must know of the major players worldwide in the telecommunications industry. (Complainant cites Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, August 3, 2000, and The Nasdaq Stock Market, Inc. v Vidudala Prasad, WIPO Case No. D2001-1493, February 27, 2002).

- That Respondent could not possibly make any plausible, actual, or contemplated active use of the domain name that would not violate or infringe the Complainantís trademark rights to its trademark "TELSTRA", or otherwise be legitimate.

B. Respondent

Respondent submitted a document in Spanish. The Center informed Respondent that the language of the relevant service agreement was English, and required Respondent to submit a Spanish translation of his document. Respondent did not do so (see point 3 supra).

After the proper appointment of this Panel, Complainant submitted a communication, stressing the point that according to the Rules, Respondentís Response should have been filed in English. That the existing Spanish Response did not allow Complainant to understand (and perhaps contest) Respondentís arguments. That the official language of the proceeding should be English.

Pursuant to Paragraph 11 of the Rules, this Panel issued a Procedural Order, thereby requesting Respondent to submit an English Translation of his Response. The required translation was not filed by Respondent.

Therefore, Respondentís original Spanish submission shall not be taken into account, for having been filed in a language other than the official language of this proceeding, and considering that Respondent was required to file an English translation of his original document, but that such requirement was not complied with.

 

6. Discussion and Findings

6.1 In accordance with the Policy, Paragraph 4(a), the Complainant must prove that:

"(i) the domain name in question is identical or confusingly similar to a trademark 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 domain name has been registered and is being used in bad faith."

In the administrative proceeding, the Complainant must prove that each three of these elements are present.

6.2 As the Respondent has failed to submit a valid Response to the Complaint, the Panel may accept as true all of the allegations of the Complaint. Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487 (August 12, 2002); Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000).

A. Identical or Confusingly Similar

Complainant owns a solid trademark portfolio worldwide. Complainantís marks have been registered in Australia since as early 1992, and in the European Union since as early as 1998. Complainantís Community Trademarks are valid in Spain, where Respondent apparently lives.

Complainantís trademarks have been extensively publicized and are widely known in the telecommunications realm.

Complainantís trademark "TELSTRA" cannot be found in English Dictionaries, because it is an invented word. Given its nature and its widespread advertisement and exposure to consumers worldwide, Complainantís mark is deemed to be highly distinctive. See Reuters Limited v Global Net 2000, Inc, point 5. A.1 supra, in that "[t]he trademark REUTERS is not descriptive of anything, and is thus highly distinctive of the Complainantís business. The domain name which differs by only one letter from a trade mark has a greater tendency to be confusingly similar to the trade mark where the trade mark is highly distinctive. In the absence of any argument to the contrary from the Respondent, this administrative panel concludes that on balance, domain names (2)-(4) are confusingly similar to the Complainantís trade mark"

Complainantís trademark "TELSTRA" is almost entirely reproduced in Respondentís domain name. The only differences are: a) the elimination of a "T" in the contested domain, and b) the addition of the gTLD .com, which is completely without legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859, December 4, 2000 (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300, June 13, 2000; J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035, March 23, 2000). Such differences are not sufficient to render the disputed domain name inherently different from Complainantís trademarks. In other words, said minor discrepancies existing between Complainantís trademarks and Respondentís domain name are not sufficient to make the latter non-confusingly similar with respect to the former.

Following VeriSign, Inc. v. Onlinemalls (see point 5. A.1 supra), this Panel believes that "Respondent appears to have employed minor misspellings of Complainantís mark to take bad faith advantage of spelling errors made by Internet users while attempting to enter Complainantís Internet address from the web browser." Complainant has proved that the trademark "TELSTRA" is an invented term which has acquired a high degree of distinctiveness, that to the best of its knowledge, there is no other "TELSTRA" trademark registered in the world, that "TELSTRA" is a familiar name in the telecommunications/Internet business, and that such trademark has a strong presence globally, through national and regional trademark registrations, through advertisements, or through physical presence in various jurisdictions. Rsepondentís alleged choice of his domain name due to the apparent existence of an association called "TELECOMUNICACIONES SERAFIN RODRIGUEZ ASOCIADOS" is not convincing, especially taking into account that Respondent himself claims to participate in the telecommunications business, and considering that Complainant has submitted evidence showing that Respondent participates in the business of registering domain names. In the opinion of this Panel, choosing a domain name that is confusingly similar to a trademark that has been widely used and publicized in a business that Respondent is well aware of, being the relevant domain name only a letter apart from said well publicized and protected trademark, cannot be coincidental. This conduct rather seems to constitute the practice known as "typosquatting", which consists of taking advantage of common misspellings made by Internet users who are looking for a particular site of a particular provider of goods or services, in order to obtain some benefit therefrom.

The foregoing argument is confirmed by NIHC, Inc. and Nordstrom, Inc. v. John Zuccarini, (see id.), in that, mutatis mutandis, "[t]he disputed domain name <nordstom.com> is the same as the Complainantís NORDSTROM mark, but for the absence in the domain name of the second letter "r" found in the mark, and the addition of the generic top level domain <gTLD.com>. The disputed domain name is very similar to the mark in its visual impression. An Internet user or consumer viewing the disputed domain name is likely to confuse it with the Complainantís mark [Ö] Respondent appears to have employed a minor misspelling of Complainantís mark to take advantage of a typographical error that may be made by Internet users while attempting to enter Complainantís mark and website as its logical Internet address in their web browsers. Bad faith in selecting a domain name may contribute to a finding of confusing similarities."

Thus, Complainant has proved that the disputed domain name is confusingly similar to a trademark in which it has rights, and has therefore met the first requirement of the Policy.

B. Rights or Legitimate Interests

Complainant has proved that it has no connection to, or relationship with Respondent, and that it has not granted any license or authorization to Respondent, with regard to its trademarks "TELSTRA."

Complainant has further stated that the contested domain name is not the name of Respondent. In accordance to an investigation conducted by instructions of Complainant, and by some inquiries made by Complainant itself, there is no company incorporated under the name Telecomunicaciones Serafin Rodriguez Y Asociados or "Telsra" in the Spanish Registry of Companies. Complainant has also stated that no such names were found in Spanish Yellow Pages directories.

Complainant affirms that no registrations for any trademarks, company or business names regarding "TELSRA" were found in Spain

Based on the above, this Panel concludes that no individual or entity in Spain has an exclusive right to use the trademark or company name "TELSRA."

Therefore, Respondent, as an individual domiciled in Spain, has no exclusive rights to use the said name. Complainant is not commonly known by the disputed domain name either.

Complainant has proved that Respondent manages a Spanish ISP domiciled in Porto Do Son (a Coruna), the same town where the Registrant and three contacts of the disputed domain name are domiciled, and that said Respondent is also the administrative and technical contact of the domain name <registrando.com>, which in turn resolves to the webpage "www.registrando.com", a portal devoted to the registration of domain names. Respondent has provided certain Whois information regarding the disputed domain name, wherein he claims to have some sort of link to the Telecommunications business. Based on these facts, the Panel presumes that Respondent knew of the existence of Complainant.

This presumption is reinforced by the fact that Respondent is re-directing Internet users to a commercial website, "www.dns.com", and that such users are mouse-trapped to pornographic sites when attempting to exit Respondentís website, allowed to view pornographic material for free thereafter, and invited to pay a sum of money to become a member of pornographic sites.

In other words, this Panel finds no reasonable justification for Respondent, an individual immersed in the business of registering domain names, and to whom the telecommunications industry is familiar, to obtain a domain name registration that is confusingly similar to "TELSTRA", a widely publicized trademark in the telecommunications/Internet realm, in order to have such a domain name resolve to a website devoted to registering domain names, and to implement mouse-trapping devices in the said website, so that users may not exit such site, but be offered pornographic materials. See Park Place Entertainment Corporation v. Bowno, point 5. A.1. supra, in that, mutatis mutandis: "[Ö]this Panel cannot conceive of any situation where such confusion would not likely arise as a result of the Respondent, or any third-party not affiliated with the Complainant to which the Respondent were to transfer the contested domain name, using that name in conjunction with casino/hotel services similar to those provided by the Complainant. In fact, the Respondent is posting a website that identically copies language from the Complainant's website and actively links to pages within the Complainant's website is clearly and intentionally causing and exploiting that very confusion for its own pecuniary gain."

Thus, the Panel finds no legitimate interests on the side of Respondent, concerning the disputed domain name.

Complainant has met its burden of proof under Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant has proved that by the date of registration of the contested domain name, i.e., August 30, 2002, Complainant owned a considerable number of trademark registrations inside and outside Australia, including some Community Trademarks, which were registered as early as June 9, 1998.

Complainant has also submitted evidence showing that Respondent is involved in the business of registering domain names and that Respondent himself claims to pertain to the Telecommunications business.

Considering that Complainantís trademark "TELSTRA" has been extensively publicized worldwide by Complainant, in addition to the fact that Complainantís trademark has been duly registered in and added to a publicly accessible database of protected trademarks in the European Community, where Respondent lives, this Panel presumes that, at the time of registration of the disputed domain name, Respondent knew or should have known of the existence of Complainantís trademark. Taking into account that Complainantís trademark is an invented word, which cannot be found in dictionaries, and that Complainantís trademark has been found to be highly distinctive by a considerable number of Panels in similar proceedings to the present one, this Panel finds it difficult to presume that Respondentís registration of the disputed domain name <telsra.com> was merely coincidental (See the arguments set forth in point 6. C. supra, and the cases cited therein.) Thus, this Panel decides that the contested domain name was registered in bad faith.

Respondentís domain name resolves to a commercial site relating to the business of domain name registrations. According to the evidence submitted by Complainant, when an Internet user types the disputed domain name, she is taken to Respondentís website; when she attempts to exit said site, she is "mouse-trapped" and linked to a pornographic website, where she will be offered pornographic material for free first, and some other pornographic materials for a fee later on. This conduct falls within Paragraph 4b)(iv) of the Policy, which states the following:

"(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 complainant's 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."

In this sense, National Association of Stock Car Auto Racing, Inc. v. RMG Inc - BUY or LEASE by E-MAIL, (see point 5 A.3 supra) is applicable to this case, in that, mutatis mutandis, "[Ö] it is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other on-line marketing techniques."

This Panel therefore concludes that Respondent has registered the disputed domain name and that such name is being used in bad faith. Complainant has met its third burden of proof under the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <telsra.com> be transferred to Complainant.

 


 

Kiyoshi I. Tsuru
Sole Panelist

Dated: July 21, 2003