WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telstra Corporation Limited v. Podvisockii Vladimir
Case No. D2018-1144
1. The Parties
The Complainant is Telstra Corporation Limited of Melbourne, Australia, internally represented.
The Respondent is Podvisockii Vladimir of Moscow, Russian Federation.
2. The Domain Names and Registrar
The disputed domain names:
<telstra-mobile.info> (“Disputed Domain Names”) are registered with Registrar of Domain Names REG.RU LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2018. On May 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On May 24, 2018, the Registrar REG.RU LLC transmitted by email to the Center its verification response for the Disputed Domain Names confirming that the Respondent is listed as the registrant and provided the contact detail and further indicating that the specific language of the registration agreement as used by the registrant for each Disputed Domain Name was Russian.
On May 25, 2018, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. On May 28, 2018 the Complainant confirmed to the Center that the language of the proceeding should be English. The Respondent did not comment on the language issue.
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 and 4, the Center formally notified the Respondent of the Complaint in both English and Russian, and the proceedings commenced on July 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default in English and Russian on August 2, 2018.
The Center appointed Mariya Koval as the sole panelist in this matter on August 7, 2018. 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 one of the largest telecommunication and technology companies of Australia. It offers a full range of communication services and competes in all telecommunication markets, having an international presence in more than 20 countries. In Australia the Complainant provides 17.6 million retail mobile services, 5.1 million retail fixed voice services and 3.5 million retail fixed broadband services. The Complainant spends considerable amounts for advertising and promoting its TELSTRA trademark at every possible way, including sponsoring a number of sports and cultural events.
The Complainant owns numerous registrations for the TELSTRA trademark around the world, including, but not limited to (“TELSTRA Trademark:):
- Australian trademark No. 579922, registered on June 5, 1992 in respect of goods in class 38;
- International registration No. 1176338, registered on February 1, 2013 in respect of goods in class 9 and services in classes 35, 37, 41, and 42:
- Russian Federation trademark No. 154193, registered on June 30, 1997.
The Complainant has a significant online presence. It operates the domain names <telstra.com> and <telstra.com.au> (both registered on September 14, 1995) through which the Complainant promotes its goods and services under the TELSTRA Trademark. The Complainant also has a TELSTRA Facebook page, a TELSTRA LinkedIn page and a Telstra Twitter page.
According to the current records, the dates of registration of the Disputed Domain Names are the following: <mobile-telstra.info> - November 29, 2017, <telstra-mobile.info> - November 24, 2017, <telstra-mobile.com> - November 13, 2017, <mobile-telstra.com> - November 16, 2017, <telstra-message.com> - October 22, 2017, <mms-telstra.com> - October 31, 2017.
On the date of this decision the websites under the Disputed Domain Names <mobile-telstra.info> and <telstra-mobile.info> are inactive, the Disputed Domain Name <telstra-mobile.com> resolves to a page with an indication: “Website contains malware”, the Disputed Domain Names <mobile-telstra.com>,
<telstra-message.com> and <mms-telstra.com> redirect to “default” websites.
5. Parties’ Contentions
The Complainant contends that the Disputed Domain Names are confusingly similar to the TELSTRA Trademark in view of the fact that they reproduce the Complainant’s Trademark in its entirety and the addition of the generic words does not have an impact on their distinction from the Complainant’s TELSTRA Trademark.
The Complainant further alleges that the Respondent lacks rights or legitimate interests in the Disputed Domain Names since it is not affiliated with the Complainant, it has not been authorized by the Complainant and it is not commonly known by the Disputed Domain Names.
The Complainant also notes that while the Disputed Domain Names are not currently displaying any content, there remains a risk that they are being surreptitiously used to facilitate illegal activity.
The Complainant asserts that the Respondent registered the Disputed Domain Names in bad faith and has used the Disputed Domain Names in bad faith in view of the fact that it is improbable that the Respondent was not aware of the Complainant and its well-known TELSTRA Trademark. The Complainant further asserts that WhoIs search reveals that the Respondent has registered a number of domain names containing well-known trademarks of the Complainant’s key competitors, such as Optus and Vodaphone.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant must demonstrate to the Panel that:
(i) the Disputed Domain Names are 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 Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
6.1. Language of Proceedings
In accordance with paragraph 11 of the Rules the language of the proceeding shall be the language of the Registration Agreement unless the Panel in its discretion determines otherwise. In fact the Panel has a power to determine the language of the proceeding which differs from the language of the Registration Agreement depending on the circumstances of the case.
The Registrar has confirmed that the language of the registration agreement for each Disputed Domain Name is Russian. The Complainant submitted the Complaint in English and also requested that English be the language of the administrative proceedings on the grounds that:
- English was the language of pre-Complaint correspondence between the Complainant and the Respondent that evidences the familiarity of the Respondent with the English language;
- the Complainant is an Australian company where English is the national language;
- the Complainant’s trademarks in issue in the Complaint relate to the Complainant’s business activities which are primarily conducted in the English language.
In accordance with paragraph 10(c) of the Rules “The Panel shall ensure that the administrative proceeding takes place with due expedition”.
In spite of the fact that the Respondent was properly notified of this proceeding by the Center’s English and Russian communications, and accordingly he has been given the opportunity to present any comments and/or objections in this case, including objection to the Complainant’s language request, he did not do it.
As it is seen from the evidence (Annex 3 of the Complaint) the Respondent was carrying on correspondence with the Complainant in English, perfectly understanding the content of the Complainant’s Notice and perfectly responding in English.
Moreover the Respondent has registered the Disputed Domain Names which contain not only the Complainant’s TELSTRA Trademark, which in its turn is also in Latin characters, but also the English words “mobile”, “message” and “mms” which have the precise meaning and refer to the Complainant’s business. Therefore it may be concluded that the Respondent is clearly familiar with the English language.
Since the Panel considers that translation of the Complaint into English would undoubtedly delay the proceeding and unfairly increase the Complainant’s expenses, the Panel concludes that English shall be the language of the proceeding.
A. Identical or Confusingly Similar
The Complainant has duly asserted its rights in the TELSTRA Trademark due to the long use and number of registrations over the world, including the Russian Federation. Moreover previous UDRP panels acknowledged the TELSTRA Trademark as well-known, see, e.g., Telstra Corporation Limited v. Mr. Andy Kang, WIPO Case No. D2002-0832 “the trademark TELSTRA, alone or in combination, is well-known in Australia and internationally and has been registered in at least 30 countries”; Telstra Corporation Limited v. Zhen Yang, WIPO Case No. D2016-1680 “the Complainant and its TELSTRA trade mark enjoy a worldwide reputation. It is obvious that over twenty years of use of the TELSTRA Trademark, the Complainant has made significant efforts for promoting the Trademark and its recognition all over the world.
The Disputed Domain Names consist of the reproduction of the TELSTRA Trademark in its entirety combining with hyphens, the words “mobile”, “message”, “mms” and the generic Top-Level Domains (“gTLDs”) “.info” and “.com”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 while each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
It is also obvious that addition of common terms to the well-known TELSTRA Trademark does not mitigate the confusing similarity between the Disputed Domain Names and the Complainant’s Trademark. In accordance with the WIPO Overview 3.0, section 1.8 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Also the addition of the gTLDs “.info” and “.com” to the Disputed Domain Names does not influence on determining confusing similarity under the Policy.
Also it is well accepted that a domain name that wholly incorporates a well-known trademark in a recognizable manner it will be deemed confusingly similar to that trademark, see e.g., Revlon Consumer Products Corporation v. IONE Inc., WIPO Case No. D2010-1000; Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.
In light of the above the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s TELSTRA Trademark. Accordingly the Panel considers that the first element of the UDRP has been satisfied.
B. Rights or Legitimate Interests
The Complainant alleges that the Respondent lacks rights or legitimate interests in the Disputed Domain Names pursuant to paragraph 4(a)(ii) of the Policy.
The Panel concludes that the Complainant has made a prima facie case. The Respondent registered the Disputed Domain Names more than twenty years after the TELSTRA Trademark had been registered and had obtained world notoriety. The Complainant contends that it did not authorize the Respondent to register or to use the Disputed Domain Names. The Respondent is not affiliated or connected by any means with the Complainant. According to the WIPO Overview 3.0, section 2.5.1, “UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.”
It is obvious that no connection exists between the Complainant’s business activity, its TELSTRA Trademark and the Respondent. The Respondent is a natural person, who is not commonly known by any of the Disputed Domain Names.
Moreover there is no evidence that the Respondent is using the Disputed Domain Names to offer bona fide goods and services or making a legitimate non-commercial or fair use of the Disputed Domain Names. According to the email correspondence between the Complainant and the Respondent (Annex 3 of the Complaint) the Respondent informed the Complainant that one of the Disputed Domain Names <mobile-telstra.info> is not used for any purpose.
At the date of this decision none of the Disputed Domain Names resolve to any active websites, moreover one of them <telstra-mobile.com> resolves to a page with an indication: “Website contains malware”.
The Respondent did not respond to the Complaint and did not participate in this proceedings, therefore the Respondent failed to present any evidence and/or explanation which may support demonstration of any rights or legitimate interests in the Disputed Domain Names.
Accordingly, the Panel considers that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied by the Complainant.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that indicate to bad faith conduct on the part of the respondent, namely:
“(i) circumstances indicating that the respondent has registered or has acquired the disputed 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.”
The Complainant contends that the Disputed Domain Names are not in use on the date of this decision; moreover, the Disputed Domain Names do not display any content. According to the WIPO Overview 3.0, section 3.3 while panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
Taking into consideration the global fame of the Complainant’s TELSTRA Trademark and the Complainant’s longstanding activity and also that the Disputed Domain Names are confusingly similar with the Complainant’s well-known TELSTRA Trademark which, in its turn, is reproduced in the Disputed Domain Names in its entirety, it may be concluded that the Respondent was well aware of the Complainant and its Trademark. It may also be assumed that the Respondent registered the Disputed Domain Names with the purpose to mislead Internet users into thinking they are some way connected, sponsored, endorsed by or affiliated with the Complainant’s services.
The Respondent’s bad faith in registration and use of the Disputed Domain Names is also supported by his registration of domain names with use of the trademarks of the Complainant’s main competitors (Annex 10 of the Complaint), among which there are similar corresponding domain names, namely <mms-optus.com>, <optus-mobile.com>, <optus-mobile.info>, <vodafone-mms.com>, <optus-message.com>, etc. These Respondent’s domain names registrations do not leave any doubts that the Respondent has not chosen all of them including the Disputed Domain Names accidentally, without being aware of the key operators of the world telecommunication market among which the Complainant is one.
Having considered all the above circumstances, the Panel finds that the Disputed Domain Names have been registered and are being used in bad faith. Accordingly the third element has been met by the Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names <mms-telstra.com>, <mobile-telstra.com>, <mobile-telstra.info>, <telstra-message.com>, <telstra-mobile.com>, and <telstra-mobile.info> be transferred to the Complainant.
Date: August 20, 2018