WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telstra Corporation Limited v. Totto Cutugno
Case No. D2007-1908
1. The Parties
The Complainant is Telstra Corporation Limited of Melbourne, Australia, represented by Davies Collison Cave of Melbourne, Australia.
The Respondent is Totto Cutugno of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <telstraprepaid.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2007. On December 21, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On December 21, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 January 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2008.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on February 4, 2008. 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
4.1 The Complainant is Australia’s leading telecommunication, information services and multi-media entertainment company offering a wide range of telecommunication, information services and multimedia services which include:
(a) the provision of telephone exchange lines to most homes and businesses in Australia;
(b) the provision of local long distance, domestic and international telephone call services;
(c) the provision and maintenance and lease of approximately 50,000 public pay phones in Australia;
(d) mobile telecommunication services;
(e) broadband access;
(f) comprehensive range of data and Internet services;
(g) management of business customers IT and/or telecommunications services;
(h) wholesale services to other carriers, carriage service providers and Internet Service Providers;
(i) advertising, search and information services including the publication and distribution of directories;
(j) cable distribution services;
(k) operation of “Telstra” retail outlets throughout Australia.
4.2 The Complainant’s shares are quoted on the Australian stock exchange and the New Zealand stock exchange. It is also one of the largest publicly listed company in Australia with a market capitalization of AUD$58 billion (as at December 13, 2007). Its full time employees number approximately 43,411 (as at June 30, 2007) and its revenue for the financial year 2007 was approximately AUD$24 billion.
4.3 The Complainant’s operations extend beyond the geographical boundaries of Australia. It operates a substantial array of business in a number of Asia-Pacific, North American and European countries, either alone or in partnership. Many of these involve extensive wholesale activities and retail activities.
4.4 In China, the Complainant provides a range of telecommunication services. Its activities in China include:
(a) its Global Business Service Group which provides global data services including lease line and international wholesale voice services;
(b) providing technical consulting services for the Technical Department of Beijing Olympic Committee for the 2008 Olympic Games;
(c) conducting advertising arrangements for celebrating the 35th anniversary of diplomatic relationships between Australia and the People’s Republic of China;
(d) purchasing a 51% stake in Chinese Online Real Estate and Home Improvement Group SouFun Holdings for approximately AUD$254 million during 2006;
(e) signing a co-operation agreement with China NetCom for the transmission of telecommunication services between China and Australia for the 2008 Beijing Olympic Games; and
(f) operating 3 offices located in Beijing, Shanghai and Guongzhou.
4.5 The Complainant has traded under the name Telstra Corporation Limited and has been using the trademark TELSTRA in its local and international ventures since July 1995:
(a) during November 2004, the TELSTRA mark was listed as Australia’s most valuable brand, valued at AUD$9.3 billion by a global valuation company, Interbrand;
(b) the Complainant’s TELSTRA brand is heavily promoted through advertising and sponsorships in Australia and overseas. These include the 2000 Olympic and Paralympic Games and the Rugby World Cup 2003;
(c) the Complainant owns approximately 263 generic and country code top-level domain names containing the word “Telstra” as well as domain names which contain the words “Telstra Prepaid”. These include <telstra.com>, <telstra.net>, <telstra.org>, <telstraprepaid.com.au>, <telstraprepaidplus.com> and <telstraprepaid.com.au>;
(d) when launched in December 1999, the leading Australian newspaper, The Australian, described the Complainant’s website “www.telstra.com” as “the mother of all websites” for its rich array of services and features;
(e) during November 2007, the Complainant’s “www.telstra.com” website received over 16 million page views, approximately 3,400,000 page hits and over 1.6 million unique visitors.
4.6 The Complainant also provides “prepaid subscription” telecommunication services under the TELSTRA PRE-PAID or TELSTRA PRE-PAID FRIENDS or TELSTRA PRE-PAID PLUS trademarks. Consumers of the Complainant’s “prepaid” services purchase a service in advance of using them. By purchasing credit to use the service, consumers can access the telecommunication service without ongoing bills.
4.7 The Complainant has registered or applied for the registration of trademarks containing the word “Telstra” which includes the following registrations and applications:
(a) approximately 136 trademark registrations or applications in Australia containing the word “Telstra”. The Complainant is also the registered owner of the trademark TELSTRA PRE-PAID FRIENDS;
(b) approximately 36 registrations or applications in China containing the word “Telstra”;
(c) registrations and applications featuring the word “Telstra” in Argentina, Bangladesh, Brunei, Cambodia, Canada, Chile, France, Germany, Hong Kong (Sar of China), India, Indonesia, Israel, Ireland, Japan, Kazakhstan, Kiribati, Laos, Malaysia, New Zealand, Pakistan, Papua New Guinea, Republic of Korea, (South), Republic of South Africa, Russian Federation, Samoa, Saudi Arabia, Singapore, Solomon Islands, Sri Lanka, Taiwan (Province of China), The Philippines, Tonga, Tuvalu, United Kingdom, United States of America, Vanuatu and Vietnam.
4.8 The Complainant has also successfully used the UDRP services to obtain orders for the transfer of numerous domain names including <telstraa.com>, <telstra.org>, <telstrashop.com>, <thetelstrashop.com>, <telstramobilenet.com>, <telstramobilenet.net>, <telstramobilenet.org>, <telstra-freeonline.com>, <telstrafreeonline.com>, <telstrafreeonline.net>, <telstraprimebuy.com>, <telstraprimebuy.net>, <telstra-pccw.com>, <telstra.com>, <telstraaustralia.net>, <telstracommunications.com>, <telstradigital.com>, <telstradomains.com>, <telstra-ecommerce.com>, <telstrainternet.com>, <telstramboiles.com>, <telstranetwork.com>, <telstraphones.com>, <telstrasatellite.com>, <telstratechnical.com>, <telstraurls.com>, telstraustralia.com>, <telstraweb.com>, <telstraonair.com>, <imt2000telstra.com>, <telstra-pccw.net>, <telstrapccw.com>, <teslstrashop.net>, <telstrainternational.net>, <telstrainterntional.com>, <etelstra.com>, <e-telstra.org>, <1212telstra.com>, <telstramobile.com>, <telstrabigpond.com>, <telsra.com>, <te1stra.org>.
4.9 The domain name <telstraprepaid.com> was registered on January 14, 2006. However, it was during April 2007 that an employee of the Complainant detected registration of the domain name. At this point in time, the domain name was registered to Chen Bao Shui of Shanghai, China. Upon detection, a letter of demand was issued to Chen Bao Shui on April 19, 2007 to transfer the domain name in issue. The Complainant did not receive a response to the letter of demand nor the follow up email to the said letter. Instead, the Complainant found on 16 May 2007 that the email address of the Respondent had changed from “moniker.com.IsMostIgnorantCompanyEver@startseek.com” to “email@example.com”. Letters sent by the Complainant to the new email address also went unanswered.
4.10 On May 23, 2007, an employee of the Complainant, Sally Foreman, telephoned Chen Bao Shui and during the conversation, Mr. Shui confirmed he had received the letters of demand and said that he had no intention of responding. Mr. Shui said that the Complainant had the option of buying the domain name from him or lodging a Complaint. Mr. Shui said he was under no obligation to check whether domain names he registered incorporated trade marks and that he could easily transfer the domain name into another company based in another country. Mr. Shui also stated he did not care if a Complaint was lodged against him and that at least he would be able to generate profit from the domain name up until a Decision was issued cancelling the domain name. Mr. Shui offered to transfer the domain name to the Complainant for US$2,000.
4.11 On September 29, 2007, a Whois search revealed that the registrant details of the domain name had changed and that the registrant was now Yu Xiaojie of Shanghai, China. The domain name also resolved to a website featuring “pay-per-click” advertising for telecommunication goods and services, including pre-paid telecommunications goods and services provided by the Complainant.
4.12 On October 23, 2007, a Whois search revealed that the registrant details of the domain name had changed again and that the registrant was now Chen Xiangshang of Shanghai, China. The Complainant sent a letter of demand to the new registrant on October 24, 2007 requesting the transfer of the domain name to which no response was received.
4.13 A further search of the Whois database conducted on November 28, 2007 disclosed that the registrant of the domain name had changed to the name of the Respondent. As of November 28, 2007, the domain resolved to a “pay-per-click” website. A letter of demand sent by the Complainant to the address of the Respondent was returned with the remark “Insufficient Address”.
5. Parties’ Contentions
5.1 The Respondent’s <telstraprepaid.com> domain name is confusingly similar to the Complainant’s extensive portfolio of TELSTRA trademarks and TELSTRA PRE-PAID FRIENDS, TELSTRA PRE-PAID and TELSTRA PRE-PAID PLUS trademarks. The Complainant contends that:
(a) the addition of the generic top level domain name “.com” does not affect the confusing similarity between the domain names and the trademark in issue;
(b) the trademark TELSTRA is an invented or coined word and not one which traders would legitimately choose;
(c) prepaid is a method of billing used by the Complainant for its telecommunication goods and services. The addition of the descriptive word “Prepaid” therefore does not detract from its confusing similarity with the TELSTRA trademark but adds to its confusing similarity;
(d) there is nothing in the word “Prepaid” which alters the fundamental character of the domain name, as referring to some aspect of the Complainant and its trademark;
(e) the domain name is identical to the Complainant’s registered trademark TELSTRA PRE-PAID FRIENDS except that it does not feature the word “friends”; and
(f) other WIPO domain name decisions involving the Complainant have found domain names featuring the Complainant’s trademark TELSTRA together with a generic or descriptive word as being confusingly similar to the Complainant’s registered TELSTRA trademark including <telstramobile.com>, <etelstra.net>, <e-telstra.org>, <etelstra.com>, <telstraonline.com> and <telstrainternational.com>.
5.2 The Respondent has no rights or legitimate interests in respect of the domain name. In support thereof, the Complainant relies on the following factors:
(a) The use and registration of the TELSTRA trademark predates registration of the domain name by several years.
(b) There is no connection or association between the Complainant and the Respondent giving rise to any licence, permission, or other right to the Respondent to apply for or use any domain name incorporating the Complainant’s trademarks.
(c) The Respondent is not commonly known by the domain name.
(d) The Respondent has not, before any notice to it of the dispute, used or made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
(e) The domain name was registered to misleadingly divert consumers or tarnish the Complainant’s trademarks and is not being used for legitimate non-commercial gain or fair use.
5.3 The domain name was registered and is being used in bad faith. In this regard, the Complainant relies on the following circumstances:
(a) The Respondent is using the domain name in bad faith for commercial gain from the resulting consumer confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website.
(b) The domain name incorporates the Complainant’s well-known TELSTRA trademark to intentionally attract Internet users to its website, who, once on this website, are lured into visiting sponsored links, from which it may be inferred the Respondent derives profit.
(c) The Respondent had registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket expenses related to the domain name.
(d) The Complainant suspects that the Respondent and the registrant since April 2004 are the same or are related. The Respondent registered the domain name in order to prevent the Complainant from reflecting its trademarks in a corresponding domain name and the Respondent has engaged in a pattern of such conduct. Chen Bao Shui is the previous unsuccessful named respondent in three previous WIPO cases: Weyerhaeuser Company v. Chen Bao Shui, WIPO Case No. D2007-0969; The Ford Foundation v. Chen Bao Shui, WIPO Case No. D2007-0862; Dillard’s, Inc., Dillard’s International, Inc v. Chen Bao Shui, WIPO Case No. D2007-0520.
(e) The Respondent is engaged in the act of ‘cyberflying’ which is an attempt to avoid or delay UDRP proceedings by changing domain name registration details. The Respondent has changed the registrant details on the domain name at least four times since the date of registration of the domain name. The commonalities of the addresses of the previous registrants Chen Bao Shui, Yu Ziaojie and Chen Xiangshiang support the conclusion that these names refer to the same registrant. The current registration details for the Respondent lists an address of Shanghai, which is the same as the previous registrants. Moreover, the website presently hosted at the <telstraprepaid.com> domain name is the same website as was hosted when the domain name was registered under the names of the previous registrants. In addition, during the telephone conversation with the Complainant’s representative on May 25, 2007, Chen Bao Shui stated words to the effect that “he could easily transfer the domain name into the name of another company based in another country”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:
(a) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate interest in respect of the domain name; and
(c) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the registered owner of numerous trademark registrations and applications throughout the world comprising the word “Telstra”. The Complainant is also the registered owner of the TELSTRA PRE-PAID FRIENDS trademark in Australia pursuant to Australian Trade Mark No. 1171354. The Complainant has also used the TELSTRA PRE-PAID FRIENDS, TELSTRA PRE-PAID and TELSTRA PRE-PAID PLUS trademarks in connection with goods and services. The evidence adduced by the Complainant amply signifies the Complainant’s rights to the same.
The domain name at issue wholly comprises the Complainant’s TELSTRA and TELSTRA PRE-PAID trademarks and is, therefore, identical and/or confusingly similar to the Complainant’s trademarks. The addition of the “.com” suffix does not serve to distinguish the domain name from the mark (see Morgan Freeman v. Mighty LLC, WIPO Case No. D2005-0263; Telstra Corporation Limited v Ozurls, Case No D2001-0046).
Based on the fact that the Respondent’s domain name is identical and/or confusingly similar to the Complainant’s trademarks, the Panel is satisfied that the first element of paragraph 4(a) of the Policy has been proven by the Complainant.
B. Rights or Legitimate Interests
The Complainant has been using the name Telstra Corporation Limited and the TELSTRA trademark since July 1995, long before the first use of the domain name in issue. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interest in the domain name. This, therefore, shifts the burden to establish rights or legitimate interests in the domain name on the Respondent. The Respondent, however, did not file a Response to the Complaint.
Notwithstanding the absence of a Response, it remains the duty of the Panel to consider whether there are circumstances which exist to warrant rights or legitimate interests on the part of the Respondent to the domain name in issue.
However, after considering the arguments and the evidence put forward by the Complainant, this Panel finds it difficult to arrive at a finding that the Respondent has any rights or legitimate interests in the domain name in issue.
The Complainant’s TELSTRA trademark is a well known mark and being a coined word, is neither generic nor descriptive. In circumstances where a mark is well known, the Respondent is obliged to provide convincing evidence to disprove the Complainant’s contentions. In Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397, it was held that where a mark “is distinctive and famous to the point where it may not be used by other persons even in fields or industries unrelated to the Complainant’s activities, one would be hard pressed to find a person who may show a right or legitimate interest in a domain name containing Complainant’s trademark”.
This Panel accepts the contention that there is no relationship between the Complainant and the Respondent giving rise to any licence, permission or other right by which the Respondent could own or use any domain name incorporating the Complainant’s trademarks. This Panel also accepts the contention that the Respondent is not commonly known by the domain name at issue.
The Complainant has also adduced evidence that the domain name is being used for commercial gain and not for legitimate non-commercial gain or fair use. Based on the evidence, it appears that the Respondent uses the domain name to host a website which generates a list of third party website domain names including the Complainant’s website and websites of direct competitors of the Complainant. Such use reveals an attempt to derive a commercial benefit from the close resemblance between the domain name <telstraprepaid.com> and the Complainant’s trademark and goodwill.
The Panel could not find any justification, rights or legitimate interests on the part of the Respondent to the words comprising the domain name.
Based on the above circumstances, the Panel is satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.
C. Registered and Used in Bad Faith
The unrebutted evidence adduced by the Complainant is convincing in proving that the Respondent’s intent in registering and using the Complainant’s TELSTRA trademark was in bad faith. It is apparent that the Respondent wishes to seek an unfair commercial advantage against the Complainant or to otherwise tarnish the Complainant’s trademarks. The use of the internationally well-known trademark TELSTRA as part of the domain name is to intentionally attract Internet users to the Respondent’s website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website. Once on the website, the users are lured into visiting sponsored links, from which it may be inferred the Respondent derives profit. These circumstances constitute evidence of bad faith registration and use in contravention of 4(b)(iv) of the Policy (See Shangri-La International Hotel Management Limited v NetIncome Ventures Inc., WIPO Case No. D2006-1315; McDonald’s Corporation v ZusCom, WIPO Case No. D2007-1353)
This Panel cannot determine conclusively whether the Respondent is the same person as the previous registrants of the domain name in issue. However, the unrebutted evidence adduced by the Complainant suggests that this may be the case. In such circumstances where the Respondent is the same person as the previous registrants, then it would become readily apparent that the domain name was registered and used in bad faith based primarily on the telephone conversation between the Complainant’s representative and Mr. Shui (the previous registrant) on May 25, 2007. During the conversation, Mr. Shui indicated, inter alia, that he would offer to transfer the domain name to the Complainant for USD2,000, which is well in excess of the costs incurred for its registration. This, by itself, is sufficient evidence of bad faith registration and use. Moreover, evidence has also been led to prove that Mr. Shui had engaged in a pattern of registering domain names to prevent trademark owners from reflecting their trademarks in corresponding domain names. Such conduct also constitutes evidence of bad faith registration and use.
Assuming that the Respondent is the same person as the previous registrants, then it would be open for this Panel to also conclude that the Respondent is also engaged in “cyberflying” to avoid or delay the UDRP proceedings. The multiple changes to the registration details for this specific purpose is itself an indication of bad faith registration and use (See PREPADOM v. Doman Drop S.A. (PREPADOM-COM-DOM), WIPO Case No. D2006-0917; Kirkbi AG v. Company Require/Karlina Konggidinata and Pool.com Inc., WIPO Case No. D2004-0359; British Broadcasting Corporation v. Data Art Corporation/Stoneybrook, WIPO Case No. D2000-0683).
Accordingly, the Panel is also satisfied that the third element of paragraph 4(a) of the Policy has been satisfactorily proven by the Complainant.
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, <telstraprepaid.com> be transferred to the Complainant.
Syed Naqiz Shahabuddin
Dated: February 18, 2008