WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telstra Corporation Limited v. Frank Rattay
Case No. D2003-0604
1. The Parties
The Complainant is Telstra Corporation Limited, Melbourne, Australia, represented by Mallesons Stephen Jaques, Australia.
The Respondent is Frank Rattay, Kansas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <te1stra.org> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 1, 2003. On August 4, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On August 4, 2003, Go Daddy Software 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 August 7, 2003. On August 7, 2003, and August 11-12, 2003, there were email communications between the Complainant, Respondent and the Center. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2003. There were also email communications from Respondent to the Center on August 28, 2003. The Respondent stated in an email dated August 28, 2003, that he had not received the Complaint. The Panel finds this unlikely. The Complaint had been sent to the Respondent by email to the address listed in the whois database on August 7, 2003. The Complaint had also been sent by registered mail both to the address listed in the whois database on August 7, 2003, and to another address which the Respondent explicitly asked the Center to send the Complaint to on August 12, 2003. On this basis the Panel finds that the Complaint was forwarded to Respondent in accordance with the Rules paragraph 2.
The Center appointed Peter G. Nitter as the Sole Panelist in this matter on September 2, 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.
4. Factual Background
Telstra is one of the largest publicly listed companies in Australia. The 49,9% publicly issued stock has a market capitalization of about AUD$36 billion. Telstra is Australia’s leading telecommunications and information services company, offering a wide range of telecommunications and information services. Its revenue in the financial year 2001-2002 exceeded AUD$20,8 billion. Telstra is one of Australia’s largest employers, its full-time employees June 30, 2003 numbered 40,427.
Telstra operates businesses in a number of Asia-Pacific, North American and European countries, either alone or in partnership. Countries where Telstra is active include: UK, New Zealand, USA, China, Germany, Singapore, South Korea, Vietnam, Cambodia, Indonesia, Japan, Kazakhstan, Kiribati, Laos, Malaysia and Sri Lanka.
In 1999, The Wall Street Journal ranked Telstra in the top 50 of "The World’s 100 largest Public Companies" and Telstra ranked 62nd in Business Week’s 1999 Global 1000 of the world’s most valuable companies by market value.
Telstra has a considerable business presence in USA. Telstra has been operating in USA since 1992, and is providing a range of telecommunication services to customers in USA.
Telstra has been using the Telstra brand in USA since at least 1993, and continues to use this brand in connection with all its telecommunications products and services.
Telstra has registered, or has filed applications with registrations pending for, 80 trademarks comprising or containing the word Telstra in Australia.
Telstra has also registered, or has filed applications with registrations pending for, 17 trademarks for the word Telstra in USA.
Telstra has also registered, or has filed applications with registrations pending for, a large number of Telstra marks in several overseas countries. Telstra has also obtained a registered Community Trademark.
The Telstra trademarks are heavily promoted through advertising and sponsorship in Australia and overseas. As a consequence, Telstra is well on its way to being a famous, globally recognized brand. Telstra regularly advertises its services and products in all forms of media. Telstra is a major sponsor, and key sponsorships include: Sports, business, arts & community, disability services portfolio and award programs.
Many of the events and programs in which Telstra has been involved as a sponsor have been televised internationally.
Telstra is the owner of many domain names containing the word Telstra including the following:
Telstra rigorously protects its intellectual property and makes strenuous efforts to monitor the activities of potential infringers both in Australia and overseas. This is evident as a number of previous panel decisions have dealt with domain names containing the word Telstra.
The disputed domain name was registered by the Respondent April 1, 2003. Telstra first became aware of the domain name in April 2003.
On June 13, 2003, Telstra sent a letter to the Respondent notifying him of Telstra’s interests in the domain name and asking him to transfer registration of the domain name to Telstra.
On June 17 2003, Telstra received, by email, a short response containing the following text:
"FJRCONSULTING Does not own Te1stra.org Thanks for playing."
On June 17, 2003, the home page of the disputed domain showed the following statement:
"domain is up for sale + got a few offers."
On June 19, 2003, Telstra received, by email, a second response to its letter of demand including the following statement regarding the domain name:
"Well it is up for sale and anyone has the right to buy it if they want it."
5. Parties’ Contentions
Telstra submits that the domain name is confusingly similar to its registered Telstra trademarks.
The question of confusingly similarity should be determined by a visual comparison between the domain name and the trademark. In this case the domain name only differs by one letter from the Telstra trademark. The domain name contains all the letters of the trademark except the letter "l" which is instead represented as number "1." Therefore, when viewed together, the domain name and the Telstra mark look almost identical. On this basis Telstra contends that a large number of Internet users would be confused into thinking that the domain name was in someway associated with or endorsed by Telstra.
The "confusingly similarity" is enhanced when one considers that Internet users commonly misspell domain names when typing on their computer keyboards. Telstra refers to previous panel decisions relating to "typo squatting," i.e. the practice of misappropriating domain names which differ by only one or two letters from well known trademarks.
Telstra submits that the Respondent has no rights or legitimate interests in respect of the domain name.
The registration and use of the Telstra trademark in USA predates the registration of the domain name by at least 6 years. The Respondent does not have any association with Telstra. Telstra has not licensed or otherwise permitted the Respondent to apply for or use any domain names incorporating Telstra’s Telstra trademarks. The Telstra trademark is an invented, coined word. Given this, no one could legitimately choose it unless trying to trade off Telstra’s rights to and reputation in its Telstra trademarks. The name of the Respondent does not include any parts of the disputed domain name. The Respondent is not using nor preparing to use the domain name for any legitimate, non-commercial purpose, but for the purpose of offering the domain name for sale.
Telstra submits that the Respondent both registered the domain name and is using the domain name in bad faith.
Telstra believes that the Respondent knew, or should have known, of Telstra’s reputation in and/or registration of its Telstra trademarks before registering the domain name. Telstra has a significant business presence in USA and has also registered its Telstra trademark in the USA. Telstra believes that its Telstra name and trademark have become well known in the US market. Telstra therefore submits that the Respondent’s registration of the domain name was in bad faith.
Even if the Respondent was not aware of Telstra’s reputation in the Telstra brand by reason of advertising and business, Telstra contends that the Respondent must have become aware of this reputation through his dealings with the original registrant of the domain name, Mr. Tat Greaves. Mr. Greaves used the domain name to host a website containing a large representation of Telstra’s logo trademark. Shortly after Telstra approached Mr. Greaves to ask him to transfer the domain name to Telstra, the domain name registration was transferred to the Respondent. Telstra believes that Respondent must have learnt about the Telstra mark from viewing Mr. Greaves website or through his discussions with him.
Respondent is now seeking to sell the domain name "for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name." As mentioned the website which the domain name led to contained a statement offering the domain name for sale. Further, in the second email sent to Telstra by the Respondent on June 19, 2003, the Respondent expressly stated that the domain name was "up for sale" and that "anyone has the right to buy it if they want it." The Respondent’s offer to sell the domain name only appeared after the date on which Telstra contacted the Respondent.
Telstra also submits that the Respondent by registering and using the domain name is seeking for commercial gain to misdirect Internet users away from legitimate "Telstra" sites.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Because the Respondent has defaulted in providing a response to the allegations of Complainants, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, paragraph 14(a)), and the Panel may draw such inferences from the Respondent’s default as the Panel finds appropriate (Rules, paragraph 14(b)).
A. Identical or Confusingly Similar
The disputed domain name is <te1stra.org>.
The Complainant is the owner of the registered trademark "Telstra." The trademark has been used in USA since 1993, and numerous registrations are made of the trademark in various countries throughout the world. The Panel determines that the Complainant’s rights in the trademark arose prior to the Respondent’s registration of the disputed domain name, on April 1, 2003.
The only difference between the relevant part of the domain name and the trademark is using the number 1 instead of the letter l. Visually the domain name and trademark are quite similar. If the domain name was used as a hyperlink, many internet users could be mislead into thinking that by clicking onto the word they would be reaching a Telstra site. The panel refers to Telstra Corporation Limited v. Norman Fry, WIPO Case No. D2001-0757 regarding the domain name <te1stra.net>.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
There is no evidence before the Panel that indicates that the Respondent is commonly known by the domain name or that there has been legitimate non-commercial or fair use of the domain name, on the contrary the Respondent used the domain name, by its website, as a way to try to sell the domain name.
Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating any such mark.
The use of the domain name by the Respondent is not done in connection with a bona fide offering of goods or services.
There is no evidence before this Panel in this case that the Respondent has any legitimate interest in the domain name <te1stra.org> for the purposes of paragraph (c) of the Policy.
The panel draws the inference from the Respondent’s failure to respond to this administrative proceeding, that the Complainant is correct in its assertion that the Respondent has no rights or legitimate interests in the domain name.
On this basis it is the Panel’s view that the Respondent has no rights or legitimate interests to the disputed domain name.
C. Registered and Used in Bad Faith
Given the distinctiveness and reputation of the Complainant’s trademark, the fact that it has no specific meaning and the improbability of the Respondent coming up with the name independently there is no obvious explanation other than the registration was made in bad faith with the intent to attract business to his site, disrupt the business of Complainant and/or profit from the eventual sale of the domain name. Reference is made to Telstra Corporation Limited v. Norman Fry, WIPO Case No. D2001-0757 regarding the domain name <te1stra.net>.
The Respondent has offered to sell the domain name, both to the public by the website and to the Complainant through the email which was sent from the Respondent June 19, 2003. There is no direct evidence that the Respondent offered to sell the domain name for a price that would exceed the registration costs, but this may be inferred from the circumstances, including the facts that the domain name is widely known and is confusingly similar to the Complainant’s mark, and the manner in which the domain name has been advertised for sale. Reference is made to Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments Inc., WIPO Case No. D2002-0787 regarding the domain name <bmwdealer.com>.
The Panel finds that the Complainant has established that the Respondent registered and is using the disputed domain name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <te1stra.org>, be transferred to the Complainant.
Peter G. Nitter
Dated: September 16, 2003