The Complainant is TELUS Corporation of Edmonton, Alberta, Canada, represented by its legal department.
The Respondent is Christopher John or John Christopher of Philadelphia, Pennsylvania, United States of America (“USA”).
The disputed domain names <eztelus.com> and <eztelus.net> (the “Domain Names”) are registered with Melbourne IT trading as Internet Names Worldwide (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) in hard copy on August 25, 2008. The Center transmitted its request for registrar verification to the Registrar on August 27, 2008. The Registrar responded on August 29, 2008, confirming that the Domain Names were registered with it, that according to its records the registrant of the first Domain Name was John Christopher and the registrant of the second Domain Name was Christopher John, that the Respondent was Christopher John, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registration, that the Domain Names would be locked during this proceeding, and that the registration agreement was in English and stated that the Registrant submitted to the jurisdiction of the courts as provided in the Policy. The Registrar noted that it had not received a copy of the Complaint and provided the contact details in respect of the registrations held on its Whois database. In these details, the address of the registrant is identical for both Domain Names. It is reasonable to infer that the registrant is the same person, even though his names are reversed in the respective registrations.
Following requests from the Center, the Complainant filed an electronic copy of the Complaint and sent a copy to the Registrar on August 29, 2008, while maintaining that it had already sent a copy to the Registrar. In response to inquiries from the Center, the Registrar confirmed on September 1 and 12, 2008, respectively, that the Domain Names had each been renewed for a year.
The Center verified that the Complaint satisfied the formal requirements of 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 5, 2008. The notification appears to have been transmitted successfully to the email addresses of the Respondent on the Registrar's Whois database. In accordance with paragraph 5(a) of the Rules, the due date for Response was September 25, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 30, 2008.
The Center appointed Jonathan Turner as the sole panelist in this matter on October 8, 2008. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
The Complainant is a leading national telecommunications company in Canada with annual revenue of $8.5 billion and 10.5 million subscribers. It provides services in the USA as well as Canada under the name “TELUS” which it adopted in 1990. It has supplied VoIP services in Canada since 2003. It operates numerous retail stores under the name “TELUS” and a website at “www.telus.com”. It is listed on the Toronto and New York stock exchanges.
The Complainant has registered TELUS, TELUS.COM, TELUS.NET, MYTELUS, MYTELUS.COM and other signs containing “TELUS” as trademarks in Canada. It has also registered TELUS as a trademark in the USA.
The Respondent registered the Domain Names in 2006 and is using them to promote VoIP services provided by a business called Infinet Communications Group, based in Vancouver, British Columbia, Canada.
The Complainant contends that the Domain Names are confusingly similar to its registered trademark TELUS. It points out that “EZ” is an abbreviation or slang meaning “easy” and does not distinguish the Domain Names from its mark.
The Complainant further states that the Respondent has no rights or legitimate interests in respect of the Domain Names or any corresponding name. It notes that the Respondent has not been commonly known by the Domain Names. It submits that the Respondent is using the Domain Names to divert Internet users seeking the Complainant's website to the website of Infinet Communications Group, and that this does not give rise to rights or legitimate interests of the Respondent in the Domain Names.
Finally, the Complainant alleges that the Domain Names were registered and are being used in bad faith. According to the Complainant, the Respondent registered the Domain Names to prevent the Complainant from reflecting its mark in a corresponding domain name and is using them intentionally to attract Internet users for commercial gain to the Infinet Communications Group website by creating a likelihood of confusion with the Complainant's mark. The Complainant submits that the Respondent must have been aware of the Complainant's mark and that the name given for the Respondent in the Domain Name registrations is a pseudonym for Infinet Communications Group.
The Complainant requests a decision that the Domain Names be transferred to it.
As stated above, the Respondent did not reply to the Complainant's contentions.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Names are identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and (iii) that the Domain Names have been registered and are being used in bad faith. Each of these requirements will be considered in turn below.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent's default in submitting a response as it considers appropriate. This includes the acceptance of plausible allegations of the Complainant which have not been disputed.
It is clear that the Complainant has rights in the mark TELUS by virtue of its registrations in Canada and the USA. The Panel accepts the Complainant's contention that “EZ” is widely used to indicate “easy” and does not distinguish the Domain Names from the Complainant's mark, in that a significant number of Internet users would assume that the Domain Names promote an easy-to-use product or service of the Complainant. The Panel accordingly finds that the Domain Names are confusingly similar with this mark. The first requirement of the Policy is satisfied.
The Panel considers that the use of the Domain Names for a website promoting VoIP services supplied by a competitor of the Complainant does not constitute a bona fide offering of goods or services such as to give rise to rights or legitimate interests of the Respondent within the meaning of the Policy. On the contrary, it is a use of the Domain Names in bad faith taking unfair advantage of the reputation of the Complainant's mark and the confusing similarity of the Domain Names to that mark to promote a rival service.
It is clear that the Respondent is not commonly known by the Domain Names and that he is not making legitimate non-commercial or fair use of them. There does not appear to be any other basis on which the Respondent could claim to have rights or legitimate interests in respect of the Domain Names. The Panel accordingly finds that the Respondent does not have rights or legitimate interests in respect of the Domain Names. The second requirement of the Policy is satisfied.
The Panel finds that the Domain Names are being used intentionally to attract Internet users for commercial gain to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of that website or of the products and services promoted by it.
In accordance with paragraph 4(b)(iv) of the Policy, this constitutes evidence of registration and use of the Domain Names in bad faith. There is no evidence rebutting this presumption or any reason to doubt it. The Panel accordingly finds that the Domain Names were registered and are being used in bad faith. The third requirement of the Policy is satisfied.
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 Names, <eztelus.com> and <eztelus.net> be transferred to the Complainant.
Dated: October 22, 2008