WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Telstra Corporation Limited v Unitel Media Group Limited, Cheree Cullen and Michael Norris

Case No. D2001-1422

 

1. The Parties

The Complainant in this administrative proceeding is Telstra Corporation Limited, an Australian body corporate, with its principal place of business at 38/242 Exhibition Street, Melbourne, Victoria, 3000, Australia, represented by Jenny Baker/ Warwick A. Rothnie of the Mallesons Stephen Jaques.

The Respondents are Unitel Media Group Limited, Cheree Cullen and Michael Norris.

 

2. The Domain Name and Registrar

The domain name in issue is <telstrashop.net> ("the Domain Name"), the Registrar of which is Register.Com, Inc. of 575 8th Avenue, New York, NY 10018 in the United States of America ("Register.Com").

 

3. Procedural History

The WIPO Arbitration and Mediation Center ("the Center") received an electronic version of the Complaint on December 4, 2001, and the Center received a hard copy of the Complaint on December 7, 2001, accompanied by all annexures. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the UDRP"), and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). The Complainant made the required payment to the Center.

On December 6, 2001, the Center transmitted to Register.Com by e-mail a request for registrar verification in connection with this case, and resent that request on December 13, 2001. On December 13, 2001, Register.Com transmitted via e-mail to the Center its Verification Response, which noted that the Complainant had failed to send to it a copy of the Complaint as required by the Supplemental Rules but confirming that the registrant is Michael Norris, one of the Respondents herein, stating that the Administrative Contact was, "Unitel Media Group/Norris Mike", of the same address as the Respondents and that the UDRP applies to the Domain Name.

On December 5, 2001, the Center copied its acknowledgement of receipt of the Complaint to the Respondents. On December 6, 2001, Cheree Cullen on behalf of the Respondents responded to the Center as follows:

"I have just received the below email. To my knowledge there has been no complaint made. I noticed that you sent this email to 2 other parties, is there some complaint over the ownership of telstrashop.net? All my records show that we are the owners of this name. Could you please contact me to bring me up to date with the nature of the complaint."

On December 6, 2001, the Center replied drawing to the Respondentsí attention the UDRP and its application to the Registration Agreement between the respondents and Register.Com, and at the same time required the Complainant to send the Complaint to the Respondents as required by the Rules. Not having received a response from the Complainant, the Center repeated that request by email of December 11, 2001. On December 13, 2001, the Complainant stated by email that the Complaint had been sent to each of the Respondents by email and by Registered Post on December 6, 2001.

On December 14, 2001, the Center formally notified the Respondents by fax and e-mail that this administrative proceeding had been commenced, and provided a copy of the Complaint with full information concerning the lodgment of the Complaint and information regarding the provision of a Response, making clear that the final date for lodging that Response was January 3, 2002. December 14, 2001, is the formal date of the commencement of this administrative proceeding.

The Center also sent notification of the Complaint to the Respondents by courier (with all accompanying exhibits). The courier was delivered and signed for at the reception/front desk of the Respondents.

By letter dated December 11, 2001, which was copied to the Center by e-mail of December 12, 2001, Cheree Cullen wrote to the solicitors for the Complainant confirming receipt of the Complaint by her. In that letter, she also states that she is not a proper Respondent, as she is neither an owner of the Domain Name nor a director of "Unitel Media Group". Ms Cullen states that she is a "personal assistant", apparently to Mr. Mike Norris, who she indicates is a "director".

No Response to the Complaint has otherwise been filed by the Respondents. Notification of Default was sent by e-mail to the parties on January 4, 2002.

On January 18, 2002, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision is scheduled to be forwarded to the Center by February 1, 2002.

 

4. Factual Background

The Domain Name was registered on February 25, 2000.

The Complaint asserts and provides supporting information that it is the owner of the trademarks "TELSTRA" and "TELSTRASHOP" in Australia, and "TELSTRA" alone in many other countries. In support of these assertions, the Complainant states inter alia that:

(a) the Complainant is one of the largest and best known public listed companies in Australia, with a market capitalisation of about A$35 billion, 50.1% of the issued shares in which are owned by the Australian Government and the balance held by over 2 million investors;

(b) the Complainant and its predecessors in title have traded since 1901, offering a wide range of telecommunications services, and related goods and services, with revenue exceeding A$23 billion in the financial year 2000 to 2001.

(c) the Complainant adopted its present name including the word "Telstra" in 1993, and indeed its numerous Australian registrations including this word date from 1992, and has continuously used the trade name and mark "TELSTRA" since July 1, 1995.

(d) the Complainant has also registered the trademark "TELSTRA SHOP" in Australia, which registration dates from 1994, for wholesaling and retailing services relating to telecommunications products and services, and since early 1994 has operated and franchised retail outlets in Australia under this name.

(e) the Complainant has also registered the trademark "TELSTRA" in countries outside Australia, and the Complaint asserts that the Complainant has international reputation in that trademark.

The Complaint includes substantial further evidence of the marketing activities of the Complainant, using its trademarks, as well as evidence of market research to demonstrate an extremely high level of consumer recognition of the "TELSTRA" brand.

The Complainant is the owner of several domain names containing the word "TELSTRA" namely:

<telstra.com>;
<telstra.org>;
<telstra.net>;
<telstra.com.au>;
<telstra-inc.com>;
<telstrainc.com>; and
<telstrashop.com>.

The Services Agreement between the Respondents and the Register.Com includes a section 14 which commences as follows:

"You represent that, to the best of your knowledge and belief, neither the registration of the domain name you have applied for nor the manner in which it is intended to be or is directly or indirectly used infringes the legal rights of a third party."

where the reference to "you" is to the Respondents.

The Domain Name is not being used in its own right, but presently points directly to a website operated by the Register.Com, which displays the words "COMING SOON! This domain name was recently registered at register.Com which is pleased to present the following additional services:" and proceeds, amongst other things, to advertise the services of Register.Com, including the provision of "Related Searches" such as "carrier", "telephone company", "phone company", "telephone services" and "telecommunication", which are not in any way associated with or licensed by the Complainant.

Prior to issuing the Complaint, the Complainant attempted to identify and contact the Respondents, using the details then current on Register.Comís registry, by letter dated September 12, 2001, and email of September 28, 2001, both of which were delivered and to neither of which was a reply received.

The Complainant also states in its evidence that:

(a) it caused a representative to visit the premises of Unitel Media Group Limited and found it occupied substantial premises prominently signed "Black Ink A Young & Rubicam Affiliate" and the receptionist identified the Respondentsí names as being involved in representing property and retail companies;

(b) an Internet search conducted on December 4, 2001, retrieved a "hit" announcing that Unitel Corporation Limited (Unitel Media Group Limitedís name before it changed to its current name on November 17, 1999) had sold a 50.1% interest in a commercial radio broadcasting business to Rural Press (a substantial Australian media company);

(c) at the time of that announcement, Michael Norris was a director of Unitel Media Group Limited (then known as Unitel Corporation Limited);

(d) the Whoís Who in Business in Australia 2001 Biographical Dictionary & Register lists Michael Norris stating that he is a director of Joint Venture Advertising & Marketing Consultants, Unitel Corporation Ltd (former name of Unitel Media Group Limited), Star Broadcasting Network Pty Ltd and Chairman of Unitel Media Group Limited, Unitel Technologies and Newton Container Trees Pty Ltd. Michael Norris is also Chairman of the Committee of Brisbane, Economic Development Committee Brisbane, Brisbane City Marketing, Brisbane Tourism and President of Ipswich Arts Foundation.

 

5. Partiesí Contentions

A. Complainant

In accordance with paragraph 4(a) of the UDRP, the Complainant asserts, inter alia, as follows:-

(a) that the Domain Name is confusingly similar to each of the trade marks "TELSTRA" and "TELSTRA SHOP";

(b) that the Respondents have no rights or legitimate interests in respect of the Domain Name;

(c) that the Domain has been registered and is being used in bad faith.

The Complainantís assertions in respect of (a) and (b) are supported, in short, by the facts of Telstraís reputation in Australia referred to above, and that fact the Respondents, as an Australian company and as Australian residents must be taken to have been aware of the Complainantís reputation as at the date of registration of the Domain Name.

In support of (c), the Complainant asserts that registration in bad faith is evidenced by the fact of the registration of the Domain Name in circumstances where the Respondents must be taken to have known full well that no possible use could be made of the Domain Name in the face of the Complainantís overwhelming legal rights to the name and the use of the name, and indeed a misrepresentation to Register.Com that the Respondents were entitled to use the Domain Name, which they must have known to be false. The Complainant alleges that the continuing non-use of the Domain Name by the Respondents, and allowing the Domain Name to point to Register.Comís "COMING SOON" page amounts to use in bad faith. The Complainant does not rely upon the examples of bad faith given in paragraph 4(b) of the UDRP.

B. Respondents

As noted above, no attempt has been made by the Respondents to explain the registration of the Domain Name nor has a Response been filed. The only response has been the correspondence from Cheree Cullen referred to above, which:

(a) admits "we are the owners of the [Domain Name]", but complains of a lack of notification of the Complaint;

(b) asserts that Ms. Cullen is merely a "personal assistant" to Mr. Norris and an employee in the group of companies of which Unitel Media Group Limited is a member, and hence she is not an owner of the Domain Name nor responsible in any way for the conduct of the other Respondents.

 

6. Discussion

Procedural Issues

Since the only matter raised by the Respondents relates to the failure of proper communication by the Complainant in accordance with paragraph 2(h) of the Rules, and it appears from the case file that the Complainantís solicitors may have failed initially to have provided a copy of the Complaint to the Register.Com in accordance with Rule 4(b) of the Centerís Supplemental Rules, it is appropriate to deal with this question here.

Having regard to:

(a) the efforts made by the Complainant to fully inform the Respondents prior to submitting the Complaint of the nature of the Complainantís claims and grievance;

(b) the adherence by the Center to the Rules and the Supplemental Rules of the Center regarding notification of the Complaint to the Respondents;

(c) the fact that the Complainantís solicitors have corrected any oversight in that regard; and

(d) the very nature of Ms. Cullenís correspondence from which the Panel is able to conclude that the Respondents have been fully informed of the Complaint and have been given ample information for them to understand what steps they could have taken to dispute anything in the Complaint;

the Panel finds that, if there was any procedural oversight on the part of the Complainantís solicitors, it was minor and did not result in any unfairness to the Respondents.

Onus of Proof

The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the UDRP.

However, the Respondents have had ample opportunity to respond to the allegations of the Complainant and have not done so. The Respondents cannot be in a better position by failing to respond than if they had chosen to take advantage of the opportunities afforded to them, expressly, by paragraph 4(c) of the UDRP.

Paragraph 15(a) of the Rules instructs the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the UDRP, the Rules and any rules and principles of law that it deems applicable. In the absence of any response from the Respondents, the onus upon the Complainant will be satisfied if a conclusion which is capable of being drawn from the evidence provided by the Complainant is not contradicted by the Respondents; see Alcoholics Anonymous World Services, Inc. v. Lauren Raymond WIPO Case No. D2000-0007; Ronson Plc v Unimetal Sanayi ve Tic A.S. WIPO Case No. D2000-0011 among numerous other decisions.

The Complainantís Rights in Respect of "TELSTRASHOP"

Paragraph 4(a)(i) of the UDRP directs that the Complainant must establish that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Panel finds that the Complainant has, at least in Australia, overwhelming rights, by virtue of trading as well as by virtue of registration of its trademarks, in the names "TELSTRA" and "TELSTRA SHOP", and no doubt could establish its rights in many other countries as well.

The Domain Name containing <telstrashop> is self evidently identical to the trademark "TELSTRA SHOP", and confusingly similar to all of the Complainantís "TELSTRA" marks. There could be absolutely no doubt that, at least in Australia, any person seeing the use of the Domain Name, in the course of trade, would immediately conclude that the user had some connection with the Complainant.

Respondents have No Legitimate Interests in Domain Name

Paragraph 4(a)(ii) of the UDRP directs that the Complainant must establish that the Respondents have no rights or legitimate interests in respect of the Domain Name.

The trademark "TELSTRA" is so famous in Australia that it is difficult to conceive of a use of the Domain Name by an Australian entity not having prior permission from the Complainant to do so which could be legitimate.

The Respondents were entitled, and given every opportunity, to demonstrate that they had some legitimate intentions with respect to the Domain Name, and paragraph 4(c) gives good examples of how the Respondents could thereby demonstrate a legitimate interest. The respondents have conspicuously failed to do so.

In any event, it seems inherently unlikely that a substantial and respected commercial entity in the advertising industry such as Unitel Media Group Limited and Mr. Norris, both of whom appear to be well connected in business affairs in Brisbane, would have any involvement in any form of non-commercial use of the Domain Name.

Registration and use in bad faith

Paragraph 4(a)(iii) of the UDRP directs that the Complainant must establish that the Domain Name has been registered and used in bad faith.

This issue, particularly where there has been no use made of the domain name in dispute, has been dealt with significantly in earlier decisions under the UDRP, notably Telstra Corporation Ltd v Nuclear Marshmallows WIPO Case No. D2000-0003, Telstra Corporation Limited v Barry Cheng Kwok Chu, WIPO Case No. D2000-0423, the reasoning of the learned Panel in each of which this Panel respectfully adopts. Many of the same issues have also been dealt with more recently in Red Nacional De Los Ferrocarriles Espanoles v Ox90 WIPO Case No. D2001-0981, with the majority of the Panel in which this Panel also respectfully agrees.

It is important in considering this requirement, and the nature of this proceeding, that the Panel does not take the view that a determination of "bad faith" in this context requires an accusation or finding of opprobrium or wickedness. This is not a question of morality. It is a matter which concerns solely the way in which a domain name has been obtained and subsequently used, in this case whether it can be established by the Complainant that the Respondents have obtained and used the Domain Name in a manner inconsistent with a legitimate use for a valuable information technology resource. On the other hand, it would not be right to take away from a person a right to use a domain name unless there were found some disentitling conduct. In the Panelís view, therefore, "bad faith" in this context requires the Complainant to establish at least a lack of justification for the registration and use made (or failure to make use) of the Domain Name, in conjunction with some disentitling behaviour.

This is an administrative determination, furthermore, in which it must be decided who, if anyone, is the proper registrant of the Domain Name. This is not a judicial pronouncement of any kind.

It may in other cases be decisive that a respondent has behaved in a morally reprehensible way. There is little, if any, evidence of that here.

Indeed, it is a particularly difficult issue, even given the nature of this proceeding, how the requirement of paragraph 4(a)(iii) of registration and use in bad faith can be established when there has been no use of the Domain Name at all.

So far as concerns the first limb of this requirement, registration in bad faith, since this is a case in which:

(a) Australian respondents registered the Domain Name in circumstances where it is inconceivable that they were unaware of the pre-existing rights of the Complainant;

(b) there is virtually no commercial use which could be made of the Domain Name which would not infringe the legal rights of the Complainant and be misleading and deceptive upon the public; and

(c) in seeking registration of the Domain Name, if the Respondents had any intention to make a commercial use of the Domain Name Ė and they have had ample opportunity to either do otherwise or otherwise explain their conduct, and they have done neither Ė then they gave a transparently false representation to Register.Com in the Services Agreement entered into with Register.Com;

this Panel concludes that the Respondents registered the Domain Name with bad faith, in the sense required by the UDRP.

Turning now to the second limb of this requirement, "use in bad faith", in the Nuclear Marshmallows decision referred to above, the learned Panel stated (at paragraph 7.6):

"the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith."

In that decision, the Panel found the required bad faith in:

"(i) the Complainantís trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,

(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,

(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and

(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainantís rights under trademark law."

There are important distinguishing facts here from those before this Panel. In this matter, the Respondents have never concealed their true identities, and have provided substantially correct details regarding themselves to Register.Com.

However, it was not suggested in that decision that these facts were exclusive or exhaustive.

In the decision in Telstra Corporation Limited v Barry Cheng Kwok Chu referred to above, the Panel observed:

"To date, the Respondent does not have a website, but the Panel holds that for the purpose of clause (iv) it is legitimate to consider hypothetically the effect of use in the manner foreshadowed by the Respondent. The critical issue is whether the attraction to a website of the Respondent would be attraction by creating a likelihood of confusion with the Complainantís mark.

In the present case, it is well established that the Complainantís mark TELSTRA is famous and must be judged as extremely well-known in Australia. It is beyond the scope of this matter to determine whether the use of the Domain Name <telstrashop.com> to an Australian resident would be a registered trademark infringement and what would be the burden of proof of a trademark owner in showing relevant activity in the Australian jurisdiction to establish infringement. However, it is noteworthy that the Australian Trade Marks Act 1995 Section 120 provides for trademark infringement firstly where a mark is used without authority and is substantially identical with or deceptively similar to the registered trademark in respect of the goods or services for which the trademark is registered. Secondly, infringement arises in respect of use, shortly stated, on closely related goods or services unless the Respondent can show that the use was not likely to deceive or cause confusion. Thirdly, infringement of a trademark well-known in Australia arises where a substantially identical or deceptively similar mark is used without authority on unrelated goods or services to those which the mark is registered when use of the mark would be likely to be taken as indicating a connection with the unrelated goods or services and the registered trademark owner and the interests of the registered trademark owner are likely to be adversely affected.

Had the Respondent been using or proposing to use the Domain Name in the Australian jurisdiction for the services of an advertising consultancy, then it is difficult to see how use by the Respondent would be other than indicating prima facie a connection with the present Complainant and, as a consequence, the interests of the Complainant plainly would be adversely affected, at least due to dilution or its famous, coined or invented trademark."

The reference to an advertising consultancy in this decision is a fortuitous example, because here we know that advertising consultancy is exactly the profession of the Respondents. Indeed, we know somewhat more about the Respondents in this matter than the Panel in Nuclear Marshmallows knew of the respondent in those proceedings. We know who the Respondents are, we know they are indeed Australian, and we know what profession they are in. From this we can be certain that they would be very much aware of the Complainant and its very famous trademarks, and we can reasonably hypothesize that the Respondents would be interested in using the Domain Name for some related business, and such use would unquestionably be a breach of Australian law having regard to the extraordinary reputation of the Complainant.

Furthermore, in this matter, the respondents have allowed the Domain Name to be used by Register.Com to promote itself, and thereby direct any person using the Domain Name to providers of goods and services, including those of Register.Com itself, which compete with the Complainant.

The majority of the Panel in Red Nacional De Los Ferrocarriles Espanoles v Ox90, referred to above, observed:

"Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances, which, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith. Those circumstances involve the Respondent registering the Domain Name with intent to damage the Complainant in some way or to take unfair advantage of the Complainant or the Complainantís goodwill. We believe that in this situation Respondent deliberately registered the Domain Name knowing, or at least strongly suspecting, that the Domain Name was a trademark of another, which is not good faith under the UDRP. Whether Respondent actually offered to sell the Domain Name, or was just waiting for an offer to buy it back, is not relevant under the unique facts of this case.

The Panel holds that where there is an intentional registration of a domain name by one with obvious reason to believe that it might be the trademarked name of another, combined with an intentional or reckless failure to verify whether that is the case and without making even the most basic inquiry, constitutes registration of that domain name in bad faith."

This Panel comes to the same conclusion with respect to the conduct of the Respondents in this matter.

The Panel therefore concludes that the Respondents registered and have been using the Domain Name in bad faith.

 

7. Decision

In the light of the findings in paragraph 6 above, the Panel concludes that: -

- the Domain Name <telstrashop.net> is confusingly similar to the trademark "TELSTRA" and identical to the mark "TELSTRASHOP", both of the Complainant; and

- the Respondents have no rights or legitimate interests in the Domain Name; and

- the Domain Name has been registered and is being used in bad faith.

Accordingly, the Panel determines in accordance with paragraph 15 of the Rules that the Domain Name <telstrashop.net> be transferred to the Complainant, Telstra Corporation Limited, in accordance with paragraph 4(i) of the UDRP.

 


 

William Peter Knight
Sole Panelist

Dated: January 31, 2001