WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telstra Corporation Limited v. MM, M Morgan
Case No. D2008-0415
1. The Parties
The Complainant is Telstra Corporation Limited, Melbourne, Victoria, Australia represented by Davies Collison Cave, Australia.
The Respondent is MM, M Morgan, Newfoundland, Canada.
2. The Domain Name and Registrar
The disputed domain name <bigpon.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2008. On March 19, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On March 19, 2008, eNom transmitted by email to the Center its verification of 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”), 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 March 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 16, 2008.
The Center appointed Stefan Abel as the sole panelist in this matter on April 30, 2008. 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 is an Australian company providing telecommunications, information services and multi-media entertainment. The Complainant provides Internet access services and other services since 1996 under its domain name <bigpond.com>. This website counts many millions visits a months. The Complainant further owns numerous additional domain names containing the element “Bigpond”. The Complainant is the reported owner of the Australian trademark 719143 “Bigpond” filed in October 1996 for computer equipment, apparatus and systems and services providing access to and leasing access to computer databases and other products and services. It owns or has filed further trademarks BIGPOND in numerous countries for similar or identical goods and services.
The Respondent has registered the <bigpon.com> domain name in October 2006. The Respondent’s site at the disputed domain name contains a number of links to several commercial websites including websites providing Internet services.
The Registrant has been involved as the Respondent in several previous administrative proceedings which all resulted in the Respondent’s domain name being transferred to the respective Complainant.
5. Parties’ Contentions
In summary, the Complainant contentions are as follows:
The Complainant is Australia’s leading telecommunication, information services and multimedia entertainment company. It generates from Internet services provided under or by reference to the BIGPOND trademark a revenue of over 1 million US$ in the financial year 2007. Its IP services provided under and by reference to its “Bigpond” sign have won numerous international awards and its trademark is promoted through advertising and sponsorship in Australia and overseas.
The disputed domain name is confusingly similar to the Complainant’s BIGPOND trademarks. It contains only one letter less than the Complainant’s trademark and therefore represents a typical case of “typo-squatting”.
The Respondent has no rights and legitimate interests in respect of the domain name since the Complainant’s use and registration of its BIGPOND trademarks predate registration of the disputed domain name by several years. The Respondent does not have any connection or association with the Complainant and the Respondent is not commonly known as “Bigpon”. The Respondent has registered the domain name to use it for a commercial pay-per-click website and attempts to derive benefit from the close resemblance between the disputed domain name and the Complainant’s BIGPOND trademark.
The Respondent has registered the disputed domain name to intentionally attract Internet users to its website who, once on this website, are led into visiting sponsored links, from which it may be inferred that the Respondent derives profit. The Respondent has engaged in a pattern of such conduct since he has been the unsuccessful Respondent in previous domain name disputes. These circumstances show that the domain name was registered and is being used in bad faith.
The Complainant requested the domain name be transferred from the Respondent to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy provides for transfer of the domain name if the Complainant establishes each of the following elements set out in paragraph 4(a)(i) to (iii) of the Policy.
(i) The Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out these circumstances which, in particular but without limitation, shall be evidence of registration and use of the domain name in bad faith.
A. Identical or Confusingly Similar
The domain name is confusingly similar to the BIGPOND trademarks. The disputed domain name is identical with the first six letters of the Complainant’s trademarks BIGPOND. The missing “d” at the very end of the Complainant’s trademarks does not change the same phonetically impression when pronounced. Also visually, the contested domain name is confusingly similar to the Complainant’s trademark, since the disputed domain name is identical with the first six letters of the Complainants trademark and lacks only the last letter.
B. Rights or Legitimate Interests
There is no indication that the Respondent is licensed or otherwise authorized by the Complainant to use its trademarks or to register the disputed domain name.
The disputed domain name does not have any apparent generic or descriptive meaning in English or French (the languages of the Respondent’s country and the language of the website the disputed domain name presently provides links to).
The term “Bigpon” is not used as a designation for a person, company, services or products on the website of the disputed domain name.
By producing evidence on these circumstances, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the domain name. The burden of submitting evidence therefore shifts to the Respondent. The Respondent must then demonstrate its rights or legitimate interests in that domain name in order to refute the prima farcie case. The Respondent has made no such showing.
The Panel finds that the Respondent’s default in refuting the prima facie case made by the Complainant is sufficient to establish this element of the Policy. It is an often impossible task for the Complainant to prove a negative that it is primarily within the knowledge of the Respondent such as lack of rights or legitimate interests in the domain name. Producing evidence that the Respondent prima facie has no rights or legitimate interests in the domain name must therefore be regarded as sufficient to establish the requirement of paragraph 4(a)(ii) if the Respondent fails to rebut the prima facie case. This finding is consistent with the consensus in previous WIPO decisions (see e.g. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
C. Registered and Used in Bad Faith
The Complainant has established this element in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:
The Panel finds that, by using the domain name for a set of links to Internet providers and Internet services, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s BIGPOND trademarks as to source, sponsorship and affiliation of the website for the following reasons: the domain name represents an abbreviated and misspelled version of the Complainant’s trademarks sounding and spelled nearly identical to the Complainant’s trademarks. In addition to that, the Respondent’s website provides links to other websites providing Internet services. Internet users are therefore likely to get the idea that the Respondent’s site at the disputed domain name is an official site of the Complainant sponsored by the Complainant or affiliated with the Complainant. Such likelihood of confusion would in all attract more customers to the site of the disputed domain name resulting in commercial gain as the Respondent’s site provides links to numerous commercial websites.
The Panel finds that the Respondent acted intentionally. It is not conceivable to the Panel that the Respondent could have registered the disputed domain name without having the Complainant’s “Bigpond” trademark in mind. The Respondent’s intention to use the disputed domain name as a reference to the Complainant and its trademarks is obvious considering that no rights or legitimate interests in using the domain name are apparent and considering that the Complainant registered its trademarks years before the registration of the disputed domain name. The Complainant also apparently registered its corresponding domain names years before the registration of the disputed domain name and had been using for years intensively the term “Bigpond” as designation for its Internet service providing activities.
In addition, the Panel notes that the Respondent has apparently been found in several administrative proceedings to have registered and used domain names in bad faith.
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 <bigpon.com> be transferred to the Complainant.
Dated: May 22, 2008