WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telus Corporation v. Brenda McLeod
Case No. D2011-2085
1. The Parties
The Complainant is Telus Corporation of Edmonton, Alberta, Canada, internally represented.
The Respondent is Brenda McLeod of Courtenay, British Columbia, Canada, represented pro se.
2. The Domain Names and Registrar
The disputed domain names <optikinternet.net>, <optiktv.net>, <telusoptikinternet.net>, <telusoptikinternet.tel>, <telusoptik.net>, <telusoptik.tel>, <telusoptiktv.net>, <telusoptiktv.tel> are registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2011. On November 29, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 2, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 December 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2011. The Response was filed with the Center on December 14, 2011.
The Center appointed J. Nelson Landry as the sole panelist in this matter on January 5, 2012. 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
The Complainant has developed its trade-mark TELUS for Telus Corporation in or about 1990 and its activities are predominantly telecommunications.
The Complainant owns several trade-mark registrations, namely TELUS, TELUS.COM, TELUS.NET, TELUS CORPORATION and Design, TELUS Design in Canada as well as two registrations for the trade-mark TELUS in the United States (herein the “TELUS Trade-marks”). In addition to Canada and the United States, the TELUS Trade-mark is registered in Europe and elsewhere, although other countries are not particularized.
The TELUS Corporation Trade-mark was filed on November 23, 1990, based on use and the TELUS registration in Canada, which document is in evidence, discloses 1991 as a date of first use. The Complainant has applied for the trade-marks My Telus and My Telus.com in association with Internet services in August 2000.
The Complainant is listed on both the New York Stock Exchange and the Toronto Stock Exchange. The Complainant has an USD 8.5 billion of annual revenue, 10.5 million customer connections including 4.9 million wireless subscribers, 4.6 million wireline network access lines and 1.1 million Internet subscribers to which a wide range of communication products and services are offered and are available.
The Complainant has adopted the name or trade-mark Optik for use in association with its IPTV service, namely Internet Protocol Television which is a system to which television services are delivered using the architecture and networking methods of the Internet rather than satellite or cable formats. In this context, the Complainant filed a trade-mark application for Optik on May 13, 2010, and the adoption of this new brand was announced on June 8, 2010. The Complainant subsequently filed applications for some at least nine trade-marks to protect the Optik brand in Canada, namely Optik TV, Telus Optik TV, Optik TV Design (stacked), Optik TV Design (vertical), Internet Optik, Tele Optik, Optik Highspeed, Optik Internet and Optik TV, which, although the Complainant did not provide details of the services in association with which the several applications were filed, it did provide the address of the website of the Canadian Property Office where details could be viewed online (herein the “unregistered Optik trade-marks”).1
Seven of the eight disputed domain names were registered on March 18, 2012, and one of the eight disputed domain names was registered on March 19, 2011 and said domain names are to expire respectively on March 17 and 18, 2012.2
The Complainant contacted the Respondent by email on November 23, 2011 and the Respondent and the Complainant exchanged several emails within a matter of a few days. In her Response to the first email communication, the Respondent stated: “I did mistakenly register those domains and I will delete them back onto the Web. All except <optikinternet.net> and <optiktv.net>; they are not trade-marks and if you want them, Telus would have to purchase it from me”.
5. Parties’ Contentions
The Complainant contends that the eight disputed domain names are confusingly similar to its TELUS Trade-marks and Optik unregistered trade-marks, which TELUS Trade-marks are part of about 200 trade-marks containing the term “telus” registered in Canada and in the United States.
According to the Complainant, the dominant portion of the disputed domain name, “telus” is identical to many TELUS Trade-marks of the Complainant and the similarity is clearly apparent and such confusing similarity is also present in respect of the Optik disputed domain names containing the terms “optiktv” and “optikinternet” which are also claimed to be confusingly similar to several unregistered Canadian trade-mark applications including the said “optik” term.
The Complainant represents that it is a leading national telecommunications company in Canada with USD 8.5 billion of annual revenue, 10.5 million customer connections including 4.9 million wireless subscribers, 4.6 million wireline network access lines and 1.1 million Internet subscribers for which a wide range of communication products and services, including telecommunications, Internet and IPTV services are available.
Considering its extensive corporate activities and the adoption of its new brand OPTIK publicly announced on June 10, 2010, followed by 11 Canadian trade-mark applications to protect the term “optik” for its new services, the Complainant contends that the Respondent was very likely aware of the Complainant and its brands and services when the Respondent registered the disputed domain names, a knowledge of the Complainant confirmed by the email address of the Respondent which indicates that she is a customer of the Complainant.
The Complainant further represents that the Respondent has never been commonly known by the disputed domain names and has no rights or legitimate interests in respect of the disputed domain names.
The Complainant further contends that the Respondent’s use of the disputed domain names is an intentional use of its Trade-marks to direct traffic to the Respondent’s site although the Complainant also states in its Complaint that the Respondent owned the disputed domain names only for a short time and has not developed a website.
The Complainant claims that the disputed domain names were registered and are used in bad faith in that the registrations of the disputed domain names were made for the purpose of preventing the Complainant to reflect its trade-marks in a corresponding domain name and furthermore, that the Respondent’s actions show an intentional attempt to take advantage of the Trade-marks of the Complainant for commercial gain by reason of the Respondent’s offer of two of the said domain names which may be purchased by the Complainant.
Considering that the Respondent resides in British Columbia (Canada) and has an email address at
“[…]@telus.net” which identifies her as a customer of the Complainant, the later reiterates that it is improbable to conclude that the Respondent was unaware of the Complainant at the time of the registrations and that said domain name registrations were to take advantage of the confusion between the disputed domain names, the well-known Trade-marks and any potential Complainant’s rights. See ExecuJet Holdings Ltd. v. Air Alpha America, Inc. WIPO Case No. D2002-0669; Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598; and General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Center Online, WIPO Case No. D2003-0845. See also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; and Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435.
In her Response, the Respondent referred to her email response to the Complainant representative where she agreed to let go of the six disputed domain names which incorporate the term “telus” and declined to abandon the <optiktv.net> and <optikinternet.net> domain names contending that the Complainant has no rights in said trade-marks and, that, pursuant to her own WhoIs search, <optiktv.com> is owned by Alan Adi Sahibi Gizli and <optiktv.co> is owned by REM Domains and are currently for sale and concluded in expressing her belief that the TELUS employee in contact with her had “tried to bury these facts”.
The Respondent in another subsequent email indicated her openness in the purchase of the said two disputed domain names, <optiktv.net> and <optikinternet.net>, by the Complainant if it wanted them, yet without specifying a price.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements in order for the disputed domain name to be cancelled or transferred:
(i) The disputed domain names registered by the Respondent are identical or confusingly similar to a trade-mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and is being used in bad faith.
A. Identical or Confusingly Similar to a trade-mark in which the Complainant has rights.
The first criterion in these proceedings is to determine whether the disputed domain names are identical or confusingly similar to a trade-mark or service mark in which the Complainant has rights as enunciated in paragraph 4(a)(i) of the Policy.
Once more, this proceeding is one where the two elements of the first criterion have to be taken into consideration, firstly: are there one or more trade-marks in which the Complainant has rights? and secondly: is the disputed domain name (each of the eight disputed domain names in this case) confusingly similar or identical to said Trade-mark of the Complainant?
As acknowledged by the Respondent, there is no dispute about the Complainant’s contentions in respect of the six disputed domain names which incorporate the Trade-mark TELUS.3 While the evidence adduced by the Complainant in respect of the TELUS Trade-marks is limited to five registrations of Trade-marks consisting or incorporating the term “telus”, it is clear, under Canadian Trade-mark Law, that a registration is granted to a party only in respect of trade-marks that have been in use in Canada, as it appears from the registration documents that can be examined on the OPIC website where a date of first use is indicated. The Panel accepts and finds that the Complainant has rights in the following registered trade-marks, namely TELUS, TELUS.COM, TELUS.NET, TELUS CORPORATION and Design and TELUS (design).
It is clear that TELUS is the dominant portion of the six disputed domain names which incorporate said TELUS Trade-marks and the Panel finds that the said TELUS disputed domain names are confusingly similar to the TELUS Trade-mark which is incorporated therein and in which Trade-marks the Complainant has rights. The addition of descriptive terms such as “internet”, “tv” or the term “optik” phonetically equivalent to “optic”, along with the addition of gTLD suffix “.net” or “.tel” do not in any way diminish the confusing similarity with the TELUS Trade-marks. This has been acknowledged by panels in numerous earlier UDRP decisions.
Under Canadian Trade-mark Law and Jurisprudence, it is the use of a trade-mark by a party that creates rights in a given trade-mark not by application nor by registration.4 A trade-mark registration simply acknowledges the rights that a party has obtained by its use of the said trade-mark and extends the exclusive use of this trade-mark throughout Canada. When an applicant, as the Complainant in respect of the applications for a trade-mark consisting predominantly of the term “optik”, files an application based on proposed use, the registration will not be granted until a declaration of use of the said trade-mark has been filed with the Trade-mark Registrar.5
In the present proceedings the Complainant has simply represented that it had applied to register the trade-marks Mytelus, Mytelus.com, optik, optik tv, telus optik tv, optik tv design (stacked), optik tv design (vertical), internet optik, tele optik, optik high speed, optik internet and another optik tv applications. As the Panel noted from a visit to the website of the Canadian Intellectual Property Office, many of these applications are based on proposed use.
The Complainant has solely stated that these applications were all filed prior to the date the registrant acquired the disputed domain names referred to above. There is not even a statement in the Complaint that the Complainant has commenced the use of any of the trade-marks in the said applications.
It is clearly established in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0) under question 1.7, that what needs to be shown for a complainant to successfully assert common law or unregistered trade-mark rights, which is the situation of the Complainant in the present proceeding, in respect of its alleged unregistered trade-marks is that it has used the trade-mark.
In Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, WIPO Case No. D2007-0123, the panel, in considering the evidence to determine whether the Complainant had unregistered trade-mark rights sufficient to satisfy the degree of trade-mark or service mark ownership required under paragraph 4(a)(i) of the Policy, referred to the general consensus among panels which has evolved in evaluating unregistered rights to a given trade-mark. The panel stated: “for descriptive marks, panels have considered factors such as longevity of use, amount of sales, nature and extent of advertising, consumer surveys and media recognition in determining whether secondary meaning exists.” While in that case the Complainant offered no sales totals, the panel noted the portfolio value stated, the about 35,000 mortgage brokers affiliated with the complainant and the sum of USD 200,000 spent on advertising and promotion of its mark through mailings, the Internet and trade publications and found this to be satisfactory evidence in the context of the case under consideration.
The situation in the decision of The Carphone Warehouse Limited and The Phone House B.V. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2008-0483, is somewhat similar to the present one; in said case, there were 18 disputed domain names and there were registered trade-marks in the name of the complainant and which were found present in 17 of the disputed domain names. However, the complainant did not have a registration for a trade-mark on which it relied. The panel, in the absence of any compelling evidence, did not find any rights thereon for the benefit of the complainant and consequently found no confusion of any trade-mark. The 17 disputed domain names which were confusingly similar to the trade-mark were transferred and the complaint in respect of the domain names for which there were no registered or common law trade-mark rights was denied.
In other proceedings, unregistered rights in respect of an unregistered trade-mark were acknowledged upon considering the evidence adduced by the complainant. See La Mafafa, Inc. dba Cultura Profética v. Domains Real Estate, WIPO Case No. D2009-0534 and S.N.C. Jesta Fontainebleau v. Po Ser, WIPO Case No. D2009-1394.
The Panel has visited and searched for the alleged Optik trade-marks in the trade-mark database of the Canadian Intellectual Property Office at the address provided by the Complainant and has found therein 30 different trade-mark applications incorporating the term “optik” of which four were applications of the Complainant namely Optik Internet, No. 1495938, Optik TV, No. 1511927 and Optik TV, No. 1495935 (proposed use), Optik, No. 1481085 (proposed use) were filed and furthermore each of these is the subject of opposition proceedings by Shaw Telecommunications Inc. of Canada.
In the email exchanges with the Respondent, the Complainant’s representative simply stated “both optik internet and optik tv are in fact marks owned by TELUS” which was answered by the Respondent that the only Optik trade-mark that the Complainant has is when the term optik is joined with the term “telus” and reiterated her refusal to delete the two Optik disputed domain names. In a subsequent email the Complainant’s representative disagreed and reiterated that the Complainant owns both Optik TV and Optik Internet trade-marks and stated that “TELUS has invested considerable time and money in the promotion and marketing and the TELUS and Optik Trade-marks”. In view of the lack of evidence and some findings made in the website of the Canadian Intellectual Property Office at the time of the Decision, mentioned herein, the Panel has, to say the least, serious difficulties in agreeing with such statement by the Complainant’s representative.
The Panel has carefully considered the Complaint, the Response and the evidence adduced by the Complainant and the statement of the Complainant’s representative in an email, on November 23, 2011, to the Respondent where she said “Both Optik Internet and Optic TV are in fact marks owned by Telus” and cannot find in this proceeding any evidence supporting the Complainant’s allegations that it has used the alleged Optik trade-marks (Optik TV, Optik Internet, Telus Optik TV, etc.) and consequently, the Panel finds that the Complainant has not established that it has rights in the said alleged trade-marks in respect of which it claims confusing similarity with the domain names <optikinternet.net> and <optiktv.net> at the time of this decision.
The Panel finds that the disputed domain names <telusoptik.tel>, <telusinternet.net>, <telusoptikinternet.tel>, <telusoptiktv.tel>, <telusoptiktv.net> and <telusoptik.net> are confusingly similar to the Trade-mark TELUS in which the Complainant has rights.
The Panel finds that the first criterion has been met in respect of these six TELUS disputed domain names.
The Panel finds that the Complainant has not established that it has rights in either the trade-marks Optik, Optik Internet or Optik TV.
The first criterion has not been met in respect on these two Optik disputed domain names, namely <optiktv.net> and <opticinternet.net>.
B. Rights or Legitimate Interests
The Respondent has filed a short response limited to the rights of the Complainant in respect of the trade-marks Optik Internet and Optik TV in this proceeding. Therefore the Panel may accept many reasonable inferences and allegations of facts pertaining to other issues included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the six TELUS disputed domain names incorporating the Trade-mark TELUS by stating that the Respondent has never been known by the said disputed domain names and is not making any legitimate noncommercial or fair use of the said TELUS disputed domain names.
The Respondent did not challenge these representations. Even prior to the Complaint in her email exchanges with the Complainant’s representative, she agreed to delete these six disputed domain names, implicitly acknowledging the absence of any rights or legitimate interests in these said domain names which incorporate the Trade-mark TELUS.
In view of the Panel finding that the Complainant has not established any trade-mark rights in respect of the trade-marks Optik, Optik Internet and Optik TV, the Panel does not see the need to consider the second criterion in respect of the disputed domain names <optikinternet.net> and <optiktv.net>.
The Panel finds that the second criterion has been met in respect of these six TELUS disputed domain names.
The second criterion has not been met in respect on these two Optik disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the disputed domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade-mark or service mark or to a competitor of the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trade-mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s trade-mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
It should be noted that the circumstances of bad faith are not limited to the above.
Again, the Panel finds appropriate to reiterate the fact that the Respondent had offered in her email communications to delete the six TELUS disputed domain names. The registration of these six TELUS disputed domain names was preventing the owner of the TELUS Trade-mark from reflecting its TELUS Trade-mark in a corresponding domain name, namely the six disputed domain names which do incorporate the TELUS Trade-mark and in this Panel’s view, the registration of six domain names constitute an engagement in a pattern of such conduct as contemplated in paragraph 4(b)(ii).
The Panel finds that the six disputed domain names which incorporate the TELUS Trade-mark were registered and used in bad faith.
The third criterion has been met in respect of the said six disputed domain names.
In view of the Panel finding that the Complainant has not established any trade-mark rights in respect of the trade-marks Optik, Optik Internet and OptikTV, the Panel does not see the need to consider the third criterion in respect of these disputed domain names <optikinternet.net> and <optiktv.net>.
The Panel concludes that:
(a) the disputed domain names <telusoptikinternet.net>, <telusoptikinternet.tel>, <telusoptik.net>, <telusoptik.tel>, <telusoptiktv.net>, <telusoptiktv.tel> are each confusingly similar to the Complainant’s TELUS Trade-mark;
(b) the Respondent has no rights or legitimate interests in the said six TELUS disputed domain names;
(c) the said TELUS six disputed domain names have been registered and are being used in bad faith.
Therefore, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <telusoptikinternet.net>, <telusoptikinternet.tel>, <telusoptik.net>, <telusoptik.tel>, <telusoptiktv.net>, <telusoptiktv.tel> be transferred to the Complainant.
For all the foregoing reasons, the Complaint is denied in respect of <optikinternet.net>, <optiktv.net> disputed domain names, without prejudice of a new complaint (e.g., based on relevant registered trademark rights) being refiled.
J. Nelson Landry
Dated: January 16, 2012
CANADIAN TRADE-MARKS ACT
(a) a mark that is used by a person for the purpose on distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed from by him from those manufactured, sold, leased, hired or performed by others,
(d) a proposed trade-mark
When deemed to be used
4. (1) A trade-mark is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares, in the normal courses of trade, it is marked on the wares themselves or on the packages in which they are distributed or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred.
Contents of application
30. An Applicant for the registration of a trade-mark shall file with the Registrar an application containing
(b) in the case of a trade-mark that has been used in Canada the date from which the applicant or his named predecessors in title, if any, have so used the trade-mark in association with each of the general classes of wares or services described in the application;
(e) in the case of a proposed trade-mark, a statement that the applicant, by itself or through a licensee, or by itself and through a licensee, intends to use the trade-mark in Canada.
Registration of trade-marks
40. (1) When an application for registration of a trade-mark, other than a proposed trade-mark, is allowed, the Registrar shall register the trade-mark and issue a certificate of its registration.
(2) When an application for registration of a proposed trade-mark is allowed, the Registrar shall give notice to the applicant accordingly and shall register the trade-mark and issue a certificate of registration on receipt of a declaration that the use of the trade-mark in Canada, in association with the wares or services specified I the application, has been commenced by
(a) the applicant;
(b) the applicant’s successor in title; or
(c) an entity that is licensed by or with the authority of the applicant to use the trade-mark, if the applicant has direct or indirect control of the character or quality of the wares or services.
45. (1) The Registrar may at any time and, at the written request made after three years from the date of the registration of a trade-mark by any person who pays the prescribed fee shall, unless the Registrar sees good reason to the contrary, give notice to the registered owner of the trade-mark requiring the registered owner to furnish within three months an affidavit or a statutory declaration showing, with respect to each of the wares or services specified in the registration, whether the trade-mark was in use in Canada at any time during the three year period immediately preceding the date of the notice and, if not, the date when it was last so in use and the reason for the absence of such use since that date.
1 For ease of reference in the present decision, the Panel has found advisable to regroup the trade-marks referred to by the Complainant in two groups. A first group is identified as “TELUS Trade-marks” for the numerous TELUS Trade-marks which are registered in Canada and in the United States and a second group identified as the “Optik trade-marks” for the numerous trade-mark applications for trade-marks which included the term “optik” or alternatively identified as the “unregistered Optik trade-marks” as it will appear from the decision such reference does not necessarily mean that these are in fact trade-marks or trade-marks in which the Complainant has rights.
2 The eight disputed domain names are also segregated in two groups on the basis of the Trade-mark TELUS or the term “optik” present in the said domain names, first the “TELUS disputed domain names” for the six disputed domain names which incorporate the term “telus” namely <telusoptikinternet.net>, <telusoptikinternet.tel>, <telusoptik.net>, <telusoptik.tel>, <telusoptiktv.net>, <telusoptiktv.tel>, second, the “Optik disputed domain names” for the disputed domain names which incorporate the term “optik” and not TELUS, namely <optikinternet.net>, <optiktv.net>.
3 The Respondent acknowledged in her email dated November 23, 2011, that the six TELUS disputed domain names were registered by mistake and expressed her willingness to delete same.
4 The Trade-mark Act, R.S.C. 1985, c. T-13 as amended by statute in 1990, 1992, 1993, 1994, 1995, 1996, 1999, 2001 and 2002. See Annex A to the decision for the text relevant section 2 and relevant definitions and section 4.