World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Macquarie Telecom pty Ltd v. Trent Macdonald

Case No. DCO2010-0035

1. The Parties

The Complainant is Macquarie Telecom Pty Ltd of Sydney, Australia, represented internally.

The Respondent is Trent Macdonald of Queensland, Australia.

2. The Domain Name and Registrar

The disputed domain name <macquarietelecom.co> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2010. On October 27, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 27, 2010, GoDaddy.com, Inc. 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” or “UDRP”), 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 November 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2010. The Response was filed with the Center on November 22, 2010.

The Center appointed Nicholas Weston as the sole panelist in this matter on December 7, 2010. 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.

The language of the proceeding is English.

4. Factual Background

The Complainant is the owner of eight Australian trademarks registrations as follows:

MARK

DATE REGISTERED

REG. NO

INT’L CLASS

GOODS AND/OR SERVICES

MACQUARIE TELECOM

2004-11-05

1028514

38

Telecommunications services; provision of telecommunications access to databases; provision, management and monitoring of telecommunications networks; telecommunications services relating to the design of telecommunications networks in this class; voice over Internet Protocol (voice over IP) services; hire, leasing and rental of telecommunications apparatus; transmission, communication and reception of data by telecommunications and by satellite; automatic telephone answering services; personal numbering services; provision of telecommunications services relating to a global computer network in this class; telecommunication of information, computer programs and any other data; electronic mail services; provision of location-based services for telecommunications apparatus; provision of wireless application protocol services; provision of information relating to or identifying telephone and telecommunications apparatus and instruments; data interchange services; transfer of data by telecommunications; video text, teletext and viewdata services; messaging services, including, sending, receiving and forwarding messages in the form of text, audio, graphic images or video or a combination of these formats; unified messaging services; voicemail services; providing data network services; video conferencing services and video telephone services; operation of search engines; computer aided transmission of messages, data and images; computer communication services; and consultancy services relating to the aforementioned services but in any case excluding all of broadcasting services (including radio broadcasting services), news agency services and transmission of news, and Internet radio services

MACQUARIE TELECOM

logo

2004-11-05

1028515

38

Telecommunications services; provision of telecommunications access to databases; provision, management and monitoring of telecommunications networks; telecommunications services relating to the design of telecommunications networks in this class; voice over Internet Protocol (voice over IP) services; hire, leasing and rental of telecommunications apparatus; transmission, communication and reception of data by telecommunications and by satellite; automatic telephone answering services; personal numbering services; provision of telecommunications services relating to a global computer network in this class; telecommunication of information, computer programs and any other data; electronic mail services; provision of location-based services for telecommunications apparatus; provision of wireless application protocol services; provision of information relating to or identifying telephone and telecommunications apparatus and instruments; data interchange services; transfer of data by telecommunications; video text, teletext and viewdata services; messaging services, including, sending, receiving and forwarding messages in the form of text, audio, graphic images or video or a combination of these formats; unified messaging services; voicemail services; providing data network services; video conferencing services and video telephone services; operation of search engines; computer aided transmission of messages, data and images; computer communication services; and consultancy services relating to the aforementioned services but in any case excluding all of broadcasting services (including radio broadcasting services), news agency services and transmission of news, and Internet radio services

MACQUARIE TELECOM

logo

2004-11-05

1028516

9

Apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; data processing equipment; computer hardware, firmware and software; telecommunications, telephonic, communications, electrical and electronic apparatus and instruments; apparatus, and instruments for telecommunications and broadcasting; apparatus and instruments for the processing, transmission, reproduction, storage, logging, reception and retrieval of data being in the form of encoded data, text, audio, graphic images or video or a combination of these formats; encoded cards; smart cards; satellite receiving and transmission apparatus and instruments; parts and fittings for the aforementioned goods

MACQUARIE TELECOM

logo

2004-11-05

1028517

35

Compilation of information into computer databases; wholesale and retail services relating to the sales of telecommunications and communications equipment and services; information services in relation to office functions; database and data processing services; data management services; compilation of statistical information including statistical information regarding the performance of telecommunications networks; retail of computer software; provision and management of sales and promotional incentive schemes in respect of telecommunications and communications equipment and services; information and consultancy services relating to the aforementioned services

MACQUARIE TELECOM MEANS BUSINESS

logo

2005-08-09

1069197

38

Telecommunications services; provision of telecommunications access to databases; provision, management and monitoring of telecommunications networks; telecommunications services relating to the design of telecommunications networks in this class; voice over Internet protocol (voice over IP) services; hire, leasing and rental of telecommunications apparatus; transmission, communication and reception of data by telecommunications and by satellite; automatic telephone answering services; personal numbering services; provision of telecommunications services relating to a global computer network in this class; telecommunication of information, computer programs and any other data; electronic mail services; provision of location-based services for telecommunications apparatus; provision of wireless application protocol services; provision of information relating to or identifying telephone and telecommunications apparatus and instruments; data interchange services; transfer of data by telecommunications; video text, teletext and viewdata services; messaging services including sending, receiving and forwarding messages in the form of text, audio, graphic images or video or a combination of these formats; unified messaging services; voicemail services; providing data network services; video conferencing services and video telephone services; operation of search engines; computer aided transmission of messages, data and images; computer communication services; consultancy services relating to the aforementioned services but in any case excluding all of broadcasting services (including radio broadcasting services), news agency services and transmission of news, and internet radio services Promoting the goods of others by preparing, placing and disseminating advertising in periodic publications, namely, magazines.

MACQUARIE TELECOM MEANS BUSINESS

2005-08-09

1069198

38

Telecommunications services; provision of telecommunications access to databases; provision, management and monitoring of telecommunications networks; telecommunications services relating to the design of telecommunications networks in this class; voice over Internet protocol (voice over IP) services; hire, leasing and rental of telecommunications apparatus; transmission, communication and reception of data by telecommunications and by satellite; automatic telephone answering services; personal numbering services; provision of telecommunications services relating to a global computer network in this class; telecommunication of information, computer programs and any other data; electronic mail services; provision of location-based services for telecommunications apparatus; provision of wireless application protocol services; provision of information relating to or identifying telephone and telecommunications apparatus and instruments; data interchange services; transfer of data by telecommunications; video text, teletext and viewdata services; messaging services including sending, receiving and forwarding messages in the form of text, audio, graphic images or video or a combination of these formats; unified messaging services; voicemail services; providing data network services; video conferencing services and video telephone services; operation of search engines; computer aided transmission of messages, data and images; computer communication services; consultancy services relating to the aforementioned services but in any case excluding all of broadcasting services (including radio broadcasting services), news agency services and transmission of news, and Internet radio services

MACQUARIE TELECOM GCLOUD

2010-02-01

1343057

38

Telecommunications services; provision of telecommunications access to databases; provision, management and monitoring of telecommunications networks; telecommunications services relating to the design of telecommunications networks in this class; voice over Internet protocol (voice over IP) services; hire, leasing and rental of telecommunications apparatus; transmission, communication and reception of data by telecommunications and by satellite; automatic telephone answering services; personal numbering services; provision of telecommunications services relating to a global computer network in this class; telecommunication of information, computer programs and any other data; electronic mail services; provision of location-based services for telecommunications apparatus; provision of wireless application protocol services; provision of information relating to or identifying telephone and telecommunications apparatus and instruments; data interchange services; transfer of data by telecommunications; video text, teletext and viewdata services; messaging services, including, sending, receiving and forwarding messages in the form of text, audio, graphic images or video or a combination of these formats; unified messaging services; voicemail services; providing data network services; video conferencing services and video telephone services; operation of search engines; computer aided transmission of messages, data and images; computer communication services; and consultancy services relating to the aforementioned services but in any case excluding all of broadcasting services (including radio broadcasting services), news agency services and transmission of news, and internet radio services

MACQUARIE TELECOM

2010-04-09

1355346

42

Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; installation and maintenance of software; design and hosting of databases; design and hosting of websites; hosting of software as a service; designing and hosting web portal services; electronic data storage; computerised business information storage; online provision of web-based applications and software; information and consultancy services relating to the aforementioned services

The Complainant or its parent company Macquarie Telecom Group Limited, operates a website located at “www.macquarietelecom.com” for telecommunications services including voice, mobile, data and hosting services for business and government customers.

The Respondent registered the domain name <macquarietelecom.co> (the “Disputed Domain Name”) on July 27, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant cites its registrations of the trademarks MACQUARIE TELECOM in Australia, and related trademarks consisting of, or including these words, as prima facie evidence of ownership.

The Complainant submits that each of its trademarks is distinctive and well-known and that its rights in these marks predate the Respondent’s registration of the Disputed Domain Name <macquarietelecom.co>. It submits that the Disputed Domain Name is confusingly similar to its trademarks, because the Disputed Domain Name incorporates in its entirety the trademark MACQUARIE TELECOM (presumably alluding to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903) and that the similarity is not removed by the addition of the top level domain suffix “.co”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because there is no evidence of a bona fide offering of goods or services.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3). On the issue of registration, the Complainant contends that the name was registered for the purpose of selling it, citing as evidence a note purporting to contain the Respondent’s offer to sell the Disputed Domain Name for more than its out of pocket costs and some written third party evidence of “the pattern of cybersquatting” engaged in by the Respondent. On the issue of use, the Complainant contends that the Respondent used the Disputed Domain Name for directing traffic to a page containing sponsored links or sponsored advertisements and that such use “trades off our valuable brand for a pay per click website” (alluding to the kind of “opportunistic bad faith” referred to in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028).

B. Respondent

The Respondent’s Response, being short, warrants publication in full:

“It is speculation with our any proof saying that the owner is owns the domain name in bad faith. Macquarie Telecom have based this case with no proof and are accusing the owner of bad faith and are trying to claim a domain name they do not rightfully have the right to. The domain name was purchase to provide an information site along with other websites I am wanting to build to provide information as a wiki like website that have been trying to create on a local host using Wamp to support the creation of it for now. Once I completed the website it would be FTP to a hosting account as most website developers would. I have not had the chance to complete this website yet as I have been held up with work not giving me much personal time to do it and the costs of building the website. Macquarie Telecom believe they have the right to own the domain because they have a trademark, this is incorrect that they have ownership rights because their trademark is only for Australia and New Zealand. The website is an information website and it also provides information about Macquarie Island and important island in Australia that would like to educate people in Columbian region about hence the reason I purchase the .co domain name. This website does not have any advertisement and does not make revenue it is purely an information website. Macquarie Telecom believes they should own the domain name which is incorrect this website I for people in the Columbian region hence the .co their trademark information they have supplied me with is not for those regions and there for they have no right to the domain. There would be no point for people to ever have to pay for trademarks to be setup outside of their country if it covers them worldwide this is why you have to pay to be trademarked in different regions which they are not. As well their trademark is for goods and services since we are not selling anything and we do not have commercial benefit from the website the owner has not breached any trademark rules even though they are not trademarked for that region. The owner has been accused of bad faith which is clearly incorrect as the owner has not breached any trademark rules and as well the website is being created for Columbian region which Macquarie Telecom is not trademarked in. The sunrise period provide by the Columbian .co register was provided for any companies that have trademark rights to domains that are similar to their trademark they have in the Columbian region. It is not expected for people to be held accountable to trademark infringement of a trademark that is not for the region where the registry is held. This is a clear sign of Macquarie Telecom attempt to make the owner look doubtable which is what the owner believes is corporate bulling and is there attempt to obtain something that is not rightfully theirs. Macquarie Telecom have also have not followed correct proceedings by providing an email […]@rtoconnect.com which is not a part of whois information which the director of the company I work for had read. This is incorrect behaviour for Macquarie Telecom to follow as this information was not provided to them and they have provided that email in bad faith. This case is very straight forward Macquarie Telecom does not have trademark rights in the country where I have purchased my domain the owner has not infringement on their trademark for goods and services but this is not even relevant as they do not have a trademark for the Colombian region. Macquarie Telecom has built a case of speculation with no proof or evidence and have used what the owner believes corporate bullying tactics against the owner and are attempting to use WIPO to assist them in obtaining something that is no theirs.

- Macquarie Telecom believes that the amount of $4400 is out of proportion of out of pocket expenses that a company that made 244.9 Million dollars in 2008. I believe that this is deception of the truth as Macquarie Telecom does not have the right to the domain in the first place and I have not asked for $4400.00 for out of pocket expenses for the domain I have asked that as a friendly compromise because that is the amount for my time so far building the website and my dream and idea. They are not purchasing something they believe is there they are wanting to purchase something that is rightfully mine and I have put allot of hard work into and the price would have been more as my time is very expensive but I was trying to have a peaceful out come to this.

- Macquarie Telecom accused that the owner has been engaged in cybersquatting of other domains. This is a false representation of the truth because it is based on speculation without any proof and is incorrect. The owner administers many websites and has built many communities and has never been accused of such a thing since recently due to Macquarie Telecom attempt to use corporate bulling tactics in order to obtain something that is not theirs.

- Macquarie Telecom accuses that the owner has been making revenue from pay per click website, once again this just another attempt by Macquarie Telecom to base a case against the owner which is a lie. The webpage that shows is a parked webpage done by Godaddy which the owner has made no money from which can be verified with a simple call to Godaddy.

- Macquarie Telecom also accuses the owner of having no relevance to the name but it is very relevant to the website being an information website and as well providing information about hobbies, an important Australian island call Macquarie, information about telecom and much more. Once again this website does not have advertisement or have a commercial income of anytime it is the right of the owner to purchase and build a website if they choose to specially since it is just a information website.”

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules requires the panel to:

“decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.

If a respondent does not submit a response, paragraph 5(e) of the Rules requires the panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the panel considers appropriate.

A. Identical or Confusingly Similar

The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark MACQUARIE TELECOM in the Australia. The Panel finds that the Complainant has rights in the mark MACQUARIE TELECOM that date back, based on the register, to November 2004. This Panel finds that the trademark MACQUARIE TELECOM is well-known for telecommunications services. On the Respondent’s own evidence, Macquarie Telecom is “a company that made 244.9 Million dollars in 2008.” The Respondent puts some weight on the location of the Complainant’s trademark registrations being Australia and New Zealand only, and not Colombia, the relevant top level domain of the “.co” Disputed Domain Name. It is well established that the location of the registered trademark and the goods and/or services it is registered for are irrelevant when finding rights in a mark (see: Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.1).

Turning to whether the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademarks, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s trademark MACQUARIE TELECOM (b) followed by the top level domain name suffix “.co” all in one continuous domain name.

It is well-established that the top-level designation used as part of a domain name should be disregarded. The relevant comparison to be made is with the second-level portion of the Disputed Domain Name: “MACQUARIE TELECOM”.

It is also well-established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark (see e.g. Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja Kil, WIPO Case No. D2000-1409; America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184.

In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the Panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The Disputed Domain Name is therefore confusingly similar to the Complainant’s trademarks.

The Respondent submits that the word MACQUARIE has a geographical secondary meaning denoting Macquarie Island in Australia. However, noting that this possibly descriptive element can nonetheless have trademark significance as previously shown, this Panel observes additionally that the Respondent does not appear to be connected to Macquarie Island in any way (though of course the Respondent’s use typically has little influence on an analysis under the first element). To the extent that the Panel examined the evidence of the website screenshot provided by the Complainant, it does not contain any information about the Respondent or information that could in some way link the Respondent to Macquarie Island.

Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name:

(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Policy places the burden on the Complainant to establish the absence of Respondent’s rights or legitimate interest in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1).

It is well established that a respondent may have a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). However, this business model is generally recognized under the Policy as legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that website is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (see: National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph § 2.2).

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “there is no evidence of a bona fide offering of goods or services”. This Panel finds that submission is an uninformative conclusion and so has reviewed the accompanying evidence submitted by the Complainant to determine whether that conclusion is supported by the evidence provided. A screen capture of the webpage that the Disputed Domain Name resolves to and evidences a page composed of advertisements and links in connection with the same industry sector as the Complainant’s trademarks and thereby attempts illegitimately, as the Complainant submits elsewhere, to trade “off our valuable brand for a pay-per-click website”. The Complainant also makes it plain that it has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. In Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 the Panel stated that “use which intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods or services”.

The Response does not appear to allege the existence of any rights or legitimate interests as per paragraphs 4(c)(i), (ii) or (iii) of the Policy. The Respondent neither contends that he has used the Disputed Domain Name in connection with a bona fide offering of goods and services before notice of the dispute or, alternatively, that he is commonly known by the Disputed Domain Name, or alternatively, that he is making a legitimate noncommercial use of the Disputed Domain Name.

The Respondent does not advance any coherent reason for conjoining the words “macquarie" and “telecom”. In an unsigned note with no header or footer, purporting to be from the Respondent to the Complainant (undated, but apparently before service of the Complaint), the Respondent is alleged to have advanced the position that “I will lose my dream of building my website about birthstones and Macquarie Island”. That evidence can receive little weight. Relevant to the issue of noncommercial use, the Respondent submits: “The webpage that shows is a parked webpage done by Godaddy which the owner has made no money from which can be verified with a simple call to Godaddy.” This Panel finds that the Respondent is referring to a pay-per-click (PPC) parking page to which the Disputed Domain name resolves.

In the absence of a substantive Response that can be given any weight, the Panel finds for the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.

“b. Evidence of Registration and Use in Bad Faith.

For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):

(i) circumstances indicating that the Respondent has registered or 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 the Respondent’s documented out of pocket costs directly related to the domain name; or

(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or

(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line locations, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or locations or of a product.”

The evidence supports the Complainant’s contention that the Respondent registered and has used the Disputed Domain Name in bad faith. The trademark MACQUARIE TELECOM is so well-known for telecommunications services that it would be inconceivable that Respondent might have registered the Disputed Domain Name without knowing of the mark. In any event, the onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see, Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited, WIPO Case No. D2008-0072; Bouygues v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc .v. Rarenames, Webreg, WIPO Case No. D2006-0964; mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).

The Complainant contends that the Respondent registered the Disputed Domain Name for the purpose of selling it for a price that exceeds the costs paid in connection with its registration. In support of this submission, the Complainant has produced as evidence the previously mentioned unsigned typewritten note on a blank page with no header or footer or covering email, purporting to be from the Respondent, containing a proposal to transfer the Disputed Domain name to the Complainant for US$4,400, an amount that the Complainant states exceeds the reasonable costs that the Respondent could have incurred in connection with the registration and maintenance of the Disputed Domain Name. This Panel finds that the Complainant has not discharged its burden of proof as to the provenance of the note containing the offer. It is not at all clear that the Respondent wrote the note containing the offer. However, the Respondent’s response contains an admission that “I have not asked for $4,400.00 for out of pocket expenses for the domain I have asked that as a friendly compromise”. It follows, based on that evidence, that the Panel finds that the Respondent contacted the Complainant to offer the Disputed Domain Name for sale or rent. However, in light of the below, the Panel finds it unnecessary to determine whether there is sufficient evidence of the Respondent’s “documented out of pocket costs directly related to the domain name” such that the Complainant has discharged its burden of proof to support a finding of bad faith based on paragraph 4(b)(i) of the Policy.

This Panel has also considered whether the allegation by the Complainant — and attendant evidence in support of that allegation — of involvement by the Respondent in two other cases being brought under the Policy by one or more third parties is sufficient to establish a “pattern of conduct” for the purpose of paragraph 4(b)(ii) (see, Lancôme Parfums et Beauté et Compagnie, Laboratoire Garnier et Compagnie, L’Oreal SA, L’Oreal USA Creative v. Therese Kerr, WIPO Case No. D2008-1748). The Panel finds that a “pattern” is not evident having regard to the absence of any other decided cases as against the Repondent. The making of a bald allegation and bringing of a Complaint is insufficient to support a finding of bad faith on this particular basis.

The Complainant has alleged that the Respondent uses the Disputed Domain Names for “click-through” or PPC landing pages. PPC advertisements display a link when a keyword query with a search engine matches an advertiser’s keyword list. PPC advertising is a search engine marketing technique for directing traffic to a landing page containing sponsored links or sponsored advertisements. Based on the evidence in this case including a screen capture of the website to which the Disputed Domain Name resolves, when <macquarietelecom.co> is typed in, it redirects traffic to a PPC landing page for various services, some of which contain the name “Macquarie” and some of which include the words “telecoms services”.

The Respondent’s Response states: “Macquarie Telecom accuses that the owner has been making revenue from pay per click website, once again this just another attempt by Macquarie Telecom to base a case against the owner which is a lie. The webpage that shows is a parked webpage done by Godaddy which the owner has made no money from which can be verified with a simple call to Godaddy.”

Two conclusions can therefore be drawn about the Respondent from its use of the Disputed Domain Name resolving to a GoDaddy PPC landing page. First, its conduct is classic domain monetization unconnected with any bona fide supply of goods or services. Second, in this Panel’s view, it is also in breach of the “Universal Terms of Service for Go Daddy Software and Services” for breach of clause 4(iv): “You will not use this site or the services found at this site in a manner (as determined by GoDaddy in its sole and absolute discretion) that: Infringes on the intellectual property rights of another User or another person or entity.”

The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. (See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).

In Accor v. This Domain May be for Sale or Lease, WIPO Case No. D2008-0420 the panel stated: “The case file contains printouts of pages from the websites associated with the domain names at issue here. These so-called ‘parked’ domain name sites contained as of the date of these printouts May 9, 2008 listings and links to hotels competing with those of the Complainant. This amounts to ‘steering’ unsuspecting Internet visitors to competing services taking advantage of the confusion created by the similarity of the domain names to Complainant’s trademarks the very essence of bad faith use under the UDRP.”

This Panel finds that –- profitably or not –- the Respondent is in the PPC landing page business, and must have been aware of the relevant trademarks. This Panel finds that the Respondent has taken the well-known trademark MACQUARIE TELECOM and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to PPC landing pages hosted by GoDaddy.com for commercial gain.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

D. Reverse Domain Name Hijacking (“RDNH”)

The Respondent alleges that the Complainant brought this proceeding in an attempt to “claim a domain name they do not rightfully have the right to” and are engaging in “corporate bullying”. The term “corporate bullying” appears to imply that the Complainant is engaging in harassment and attempting to engage in Reverse Domain Name Hijacking, contrary to paragraph 15 of the Policy. The key element in paragraph 15(e) of the Rules is bad faith: (David Robinson v. Brendan, Hight / MDNH Inc., WIPO Case No. D2008-1313).

Both bad faith and harassment are required to be present to determine the existence of reverse domain name hijacking. In support of that proposition, Sydney Opera House Trust v. Trilynx Pty. Limited, WIPO Case No. D2000-1224) states:

“To establish reverse domain name hijacking, the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge (citing Plan Express Inc. v. Plan Express, WIPO Case No. D2000-0565)”.

Because the Respondent has failed to demonstrate with evidence, or evidence of any weight, any conduct that would be regarded in other contexts, as well as UDRP proceedings, as constituting harassment or bad faith or similar conduct, the Panel declines to find that the Complainant has engaged in harassment or bad faith by bringing this proceeding.

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 <macquarietelecom.co> be transferred to the Complainant.

Nicholas Weston
Sole Panelist
Dated: December 21, 2010

 

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