WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telstra Corporation Limited v. Adult Web Development and Telstraexposed
Case No. D2002-0952
1. The Parties
The Complainant is Telstra Corporation Limited, Melbourne, 3000, Australia.
The Respondents are Adult Web Development, Valley Queensland, 4006, Australia, and Telstraexposed, Melbourne, Victoria, 3000, Australia.
2. The Domain Name and Registrar
The domain name in issue is <telstramobile.com> (hereafter the "domain name").
The domain name was registered with Intercosmos Media Group, Inc. dba DirectNIC.com, on September 26, 2002.
3. Procedural History
(1) The Complaint in this case was filed in email form on October 15, 2002, and in hardcopy on October 24, 2002. The Complaint was against the first-named Respondent, as the entity registered in the WHOIS record for the domain name at the time of the Complaint. The WIPO Arbitration and Mediation Center (the "Center") then conducted a formal requirements compliance review, and noted that the WHOIS record for the domain name now indicated the second-named Respondent as registrant of the domain name. As a result an Amended Complaint was filed against both Respondents. No Response was filed by either Respondent.
(2) The Center has found that:
- The Complaint was filed in accordance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules");
- Payment for filing was properly made;
- The Complaint initially failed to comply with the formal requirements in minor respects, but the Amended Complaint complies with the formal requirements;
- The Complaint was properly notified in accordance with the Rules, paragraph 2(a);
- No Response to the Complaint was filed;
- The Administrative Panel was properly constituted.
As Panelist, I accept these findings.
(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(4) The language of the proceedings is English.
4. Factual Background
A. The Complainant and its Mark
The Complainant, Telstra Corporation Ltd, is one of the largest publicly listed companies in Australia. It is Australiaís leading telecommunications and information services company. The Complainant adopted "Telstra Corporation Limited" as its legal name in April 1993. It has traded internationally as "Telstra" from that time, and has traded domestically (within Australia) from July 1995, under that name.
The Complainant operates a vast telecommunications network and service, including the provision of telephone exchange lines to residences and businesses; the provision of local, long distance domestic and international telephone call services to over 8 million residential and business customers in Australia; the provision and maintenance of approximately 36,000 public payphones in Australia; the operation of mobile telecommunications services; and so forth.
Other background details of the Complainant (not directly relevant to this decision) may be found in section 4 of the following WIPO decisions: Telstra Corporation Ltd v Nuclear Marshmallows, <telstra.org>, WIPO Case No. D2000-0003; Telstra Corporation Ltd v Barry Cheng Kwok Chu, <telstrashop.com>, WIPO Case No. D2000-0423; Telstra Corporation Ltd v Brett Micallef, <telstramobilenet.com> <telstramobilenet.net> <telstramobilenet.org>, WIPO Case No. D2000-0919; Telstra Corporation Ltd v Kandasamy Mahalingam, <telstraa.com>, WIPO Case No. D2000-0999.
The Complainant has registered, or has filed applications with registrations pending for, 69 trade marks comprising or containing the word "TELSTRA" in Australia including a number in class 38 in respect of telecommunications services. The trade marks cover an extensive range of goods and services and span 17 of the 42 trade mark classes. The Complainant has also registered, or has filed applications with registrations pending for, a large number of "TELSTRA" trade marks outside of Australia in countries including Brunei, Cambodia, France, Germany, Hong Kong, Indonesia, Ireland, Japan, Kazakhstan, Kiribati, Korea, Laos, Malaysia, Mauritius, New Zealand, Papua New Guinea, Peopleís Republic of China, South Africa, Russian Federation, Saudi Arabia, Singapore, Taiwan, the Philippines, Tonga, the United Kingdom, the United States of America, Vanuatu, Vietnam and Western Samoa. It has also obtained a registered Community Trade Mark. (Hereafter all of these trademarks shall be termed the "Telstra" marks).
The "Telstra" marks are heavily promoted through advertising and sponsorship in Australia and overseas, the amount spent numbering in the hundreds of millions of Australian dollars per annum.
B. The Respondent
No Response was filed. From the nature of the domain name delegations, the first-named Respondent appears to be an Internet pornography operator. The second-named Respondent is the proprietor of an Internet criticism site aimed at the Complainant.
C. The Use of the Domain Name
At the time of the Complaint the domain name resolved to a pornographic website. At the time of the Amended Complaint, the domain name resolved to the main website of the Complainant at "www.telstra.com".
5. Partiesí Contentions
A. The Complainantís Assertions
The Complainant asserts that the Respondentsí domain name is identical or confusingly similar to the Complainantís mark. Specifically, the Complainant asserts:
(1) The word TELSTRA is an invented or coined word. The domain name clearly incorporates Telstra's TELSTRA trade mark, and the domain name <telstramobile.com> has no sensible meaning but for its association with Telstra and it's Telstra Mobiles business. The word TELSTRA is not one that traders would legitimately choose unless they were trying to create a false association with Telstra.
(2) The word "mobile" although commonly used in other contexts, when used in combination with the term "Telstra" is not one which a trader would legitimately choose to use unless they were trying to create a false association with Telstra and the business unit of the same name.
(3) The domain name consists of the principal elements of Telstra's registered trademarks "Telstra" and "Mobile Net".
The Complainant asserts that the Respondents have no legitimate interest or rights in the domain name. Specifically, the Complainant asserts:
(1) Neither Respondent has any connection with Complainant, and neither has been licensed or authorised by Complainant to use the Complainant's TELSTRA or TELSTRA MOBILE trade marks as part of the domain name or in any other way.
(2) Neither Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert customers, or to tarnish Complainant's trade mark. To the contrary, it is clear that first-named Respondent registered and used the domain name for the purpose of diverting Internet users to a commercial website, which offers pornographic material for a fee. The clear result of such conduct will be consumer confusion and the tarnishing of the Complainant's trade mark and the Complainant's reputation. Likewise second-named Respondent is not making any such legitimate or fair use.
(3) The domain name is not the name of either Respondent nor is it similar to, or in any way connected with, the name under which either Respondent holds the domain name registration.
(4) The use which has been made of the domain name by the first-named Respondent cannot be characterised as use in connection with the bona fide offering of goods or services. The Respondent's conduct in using the domain name to misleadingly divert Internet users to a pornographic website which is operated under another domain name, does not amount to offering of the goods or services under the domain name, nor could such offering be regarded as bona fide, having regard to the lack of bona fides in the Respondent's unauthorized adoption and misleading use of the domain name.
(5) The domain name currently points to Complainant's website. The second-named Respondent has no connection with Complainant and has not been requested or authorized by Complainant to register the domain name or to point it to Complainant's website.
The Complainant asserts that the Respondents registered the domain name and are using it in bad faith. Specifically, the Complainant asserts:
(1) Each of the Co-Respondents has an Australian address and each appears to be an Australian resident. Each of them must therefore be aware of Telstra and its reputation in the TELSTRA marks (including Telstra Mobile and Mobile Net). In this regard, we refer the Panelist to the conclusions of the Administrative Panel in the <telstra.org> decision Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003.
(2) Prior to receiving the Complainant's cease and desist letter, the domain name resolved to a pornographic website.
(3) It is apparent that the first-named Respondent has provided a false name. These facts support the conclusion that notwithstanding the removal of the link to the pornographic sites the first-named Respondent is continuing to use the domain name by passive holding of the type referred to in the Nuclear Marshmallows case. In the alternative, it appears that the Respondent may have attempted to sell the domain name for profit to second-named Respondent.
(4) The Complainant submits that the first-named Respondent's use of the domain name was clearly an attempt to attract Internet users to the Respondent's and other on-line pornographic websites for commercial gain by creating a likelihood of confusion with Telstra's name and trade marks within the meaning of paragraph 4(b)(iv) of the policy. The fact that the domain name has reverted to a number of different pornographic websites is clear evidence that the Respondent registered the <telstramobile.com> domain name for the purpose of attracting users to the site for commercial gain.
(5) In the hands of second-named Respondent the domain name was directed to Complainant's website. Complainant has not given any authorization, consent or request to either Respondent to register the domain name or to direct it to Complainant's website. This direction appears to have been made as a diversionary tactic or a holding manoeuvre in the light of Complainant's letter of demand. Neither Respondent can have any legitimate reason for such conduct and it is apparent that in both cases their use and registration is in bad faith.
(6) Although the domain name currently points to Complainant's own website, Complainant has credible reason to fear that the domain name will be used for a different purpose in the future. The second-named Respondent is known to Complainant as the operator of a parody and criticism site at "www.telstraexposed.com". Complainant therefore has a reasonable apprehension that this Respondent will use the domain name to point to its criticism site or to some other site derogatory of, and damaging to, Complainant. Should the Respondent do so, such use would clearly amount to bad faith use of the domain name. It is one thing to subject a person or organization to criticism. It is another thing altogether to usurp its trade mark of the target for the purpose of so doing. Under no circumstances could Internet users entering the domain name, think otherwise than that it would lead to Complainant's website or one associated with it. Selection of the domain name for this purpose would indicate a clear intention on the part of the Registrant to take advantage of the reputation of Complainant's trademark to mislead Internet users into entry to the site.
Accordingly, the Complainant submits that the Panel should order that the domain names be transferred to the Complainant.
B. The Respondentsí Assertions
No Response was filed.
6. Discussion and Findings
The Policy, adopted by the Internet Corporation for Assigned Names and Numbers on August 26, 1999, applies to domain name registrations made in the <.com> namespace. Paragraph 4.a. of the Policy requires the Complainant to make out three elements to succeed in an administrative proceeding initiated under the Policy:
1. The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar (Paragraph 4.a.(i)); and
2. The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4.a.(ii)); and
3. The Respondent registered and is using the domain name in bad faith (Paragraph 4.a.(iii)).
1. The Complainant has Rights in a Trade or Service Mark, with which Respondentís Domain Name is Identical or Confusingly Similar
There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain names are identical or confusingly similar to the marks.
The Complainant has provided the registration documents for its "TELSTRA" marks registered in the Australia, and elsewhere, in multiple classes and in respect of multiple products and services. I conclude that the Complainant, as registered proprietor of those marks, has established rights in a trademark, sufficient for the purposes of paragraph 4.a.(i).
The second requirement is that the domain names be identical or confusingly similar to the mark. The domain name is the concatenation of the Complainantís invented word mark, together with the commonly-used word for the cellular or "mobile" telecommunications service which is offers. Since, as has been held elsewhere, the Complainant is the predominant operator of telecommunications services in Australia, and its mark is exceedingly well-known, there is no question that the ordinary Australian consumer would assume that the domain name was referring to part of the Complainantís telecommunications business. I conclude therefore that the domain name is, for the purposes of the Policy, confusingly similar to the Complainantís marks. The Complainant has shown that it has rights in a trademark, and that the domain names are confusingly similar to this mark. I conclude therefore that the Complainant has satisfied the requirements of paragraph 4.a.(i) of the Policy.
2. The Respondent has no Rights or Legitimate Interest in Respect of the Domain Name
The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4.a.(ii) of the Policy. It makes a number of assertions as to this point, including that the domain name initially resolved to a pornographic website, and so forth. The strongest argument against any interest of the Respondents is the notoriety of the TELSTRA marks, and the efforts made by the Complainant to protect its marks from any parallel registrations. It is therefore unlikely that anyone might have rights in the name simpliciter.
However, I consider it both necessary and instructive to analyse whether any of the defences provided in Paragraph 4.c. of the Policy might apply. Paragraph 4.c. provides the following examples to the Respondent:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
There is no evidence that any of the scenarios of Paragraph 4.c apply here to the first-named Respondent. The first-named Respondentís initial use of the domain name appears to be calculated to attract mistaken users who type the domain name into the address bar of web browsers, in a way that is, by now, a familiar cybersquatting practice of Internet pornographers. This use is clearly not a bona fide offering of services under the domain name. Nor is there any evidence of the first-named Respondent being commonly known by the name, or making any other fair use of the domain name.
As to the second-named Respondent, it seems that the transfer of the domain name and re-delegation of the name is a tactic intended to provide the illusion that the name might be used for a potentially-legitimate "gripe site" usage. However the domain name is very different from the name of the second-named Respondent, and there is no evidence that they are actually using the name for any legitimate purposes. I hold that in respect of the second-named Respondent there has been no legitimate non-commercial or fair use of the domain name.
As a result I conclude that, even having considered the possible application of Paragraph 4.c., the Respondents have no rights or legitimate interest in the domain name. I conclude that the Complainant has satisfied the requirements of paragraph 4.a.(ii) of the Policy.
3. The Respondent Registered and is using the Domain Name in Bad Faith
The final issue is that of bad faith registration and use by the Respondents. For paragraph 4.a.(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and has used it in bad faith. The Complainant makes numerous submissions in relation to this point (see section 5, above) the strongest of which is the claim that the Respondents are using the domain name to attract visitors to its site, as a result of consumer confusion. This claim is based on the bad faith exemplar scenario outlined in paragraph 4.b.(iv), which reads:
"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:
(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 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."
This paragraph applies to this case. The Respondentsí sites are pornographic or satirical, and their use of the domain name was obviously intended to attract confused users to their sites. This activity falls clearly into the exemplar of Paragraph 4.b.(iv), and as a result is deemed to fulfil the bad faith use and registration requirements of paragraph 4.a.(iii).
I therefore conclude that the Complainant has satisfied paragraph 4.a.(iii) of the Policy.
The Complainant has made out all of the elements of paragraph 4.a. of the Policy.
Pursuant to Paragraph 4.i. of the Policy and Rule 15 of the Rules, the requested remedy is granted.
I hereby order that the domain name <telstramobile.com>be transferred to the Complainant.
Dated: December 25, 2002