WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telstra Corporation Limited v. Liu Chenghui
Case No. D2016-2018
1. The Parties
The Complainant is Telstra Corporation Limited of Melbourne, Victoria, Australia, represented by Crowell & Moring, LLP, Belgium.
The Respondent is Liu Chenghui of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <telstra.site> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on October 4, 2016. On October 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 12, 2016, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on October 12, 2016. The Respondent did not comment on the language of the proceeding by the specified due date.
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 English and Chinese, and the proceedings commenced on October 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 9, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on November 14, 2016. 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 a leading telecommunications and technology company offering a wide range of services globally, with a focus on the Asia-Pacific region. It is Australia's leading provider of mobile phones, mobile devices, broadband Internet and home phones. The Complainant's employee count across the world stands at about 3,000. In China, the Complainant has been active since 1989, employing more than 150 people and providing Internet access in nine provinces.
The Complainant owns the TELSTRA word mark. The mark is registered in, inter alia, Australia under Registration No. 579922 (registration date: June 5, 1992); by way of an International Registration (No. 1176338; registration date: February 1, 2013); and in the European Union (Registration No. 000194845; registration date: April 23, 1999). The Complainant has used its TELSTRA mark since June 5, 1992.
The Complainant's domain name registrations include <telstra.com> and <telstra.com.au>.
The disputed domain name was registered on March 24, 2016. It does not resolve to any active website.
5. Parties' Contentions
1. The Complainant states its TELSTRA trade mark is well known all over the world. The TELSTRA mark is rated as one of the top 100 telecommunications provider brands. The disputed domain name incorporates the Complainant's TELSTRA trade mark in its entirety. It is well established that the addition of generic Top-Level Domains ("gTLDs") can be disregarded when comparing the similarity between a domain name and a trade mark. Hence, the disputed domain name is identical to the Complainant's trade mark.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name; its name per the WhoIs records is "liu chenghui". The Respondent has not acquired trade mark or service mark rights and the Respondent's use and registration of the disputed domain name was not authorized by the Complainant. Further, no actual or contemplated bona fide or legitimate use of the disputed domain name can be claimed by the Respondent.
3. The disputed domain name was registered and is being used in bad faith. At the time the Respondent registered the disputed domain name, the Respondent must have known of the Complainant and its TELSTRA trade mark. This is because the Complainant's TELSTRA trade mark is well known, especially in the Asia-Pacific region where the Respondent is resident. The TELSTRA mark has no generic or descriptive meaning. A simple trade mark search at the time of registration of the disputed domain name would have revealed the Complainant's trade mark registrations. A simple search on the Internet would also have revealed the existence of the Complainant and its trade marks. The fact that the Respondent knew or should have known of the Complainant's trade mark rights but, nevertheless, registered the disputed domain name, in circumstances where the Respondent had no rights or legitimate interests in the trade mark, is evidence of bad faith registration.
By registering the disputed domain name, the Respondent prevented the Complainant, as the holder of trade mark rights in TELSTRA, in reflecting its mark in a corresponding domain name. The effect of the domain name registration affects the business of the Complainant by diverting away visitors looking for the Complainant and information on its TELSTRA mark.
The passive holding of a domain name can amount to bad faith registration and use as in this case where it is difficult to imagine any plausible future active use of the disputed domain name by the Respondent that would be legitimate and not infringing the Complainant's well-known mark.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 Preliminary Issue: Language of the Proceeding
The Registration Agreement in this case is Chinese but the Complaint was filed in English and the Complainant requested that English be determined to be the language of the proceeding. The reasons given were, firstly, that the Respondent has a sufficient understanding of the English language. The disputed domain name was registered under the ".site" gTLD which is an English word. The targeted trade mark in this instance originates from the Complainant's company which is located in Australia where the national language is English. Secondly, the Complainant would be greatly disadvantaged if it were forced to translate the Complaint into Chinese. The Complainant argued that if the Respondent were not able to respond in English, the Panel may agree to receive and consider all writs, information and documents submitted in other languages other than the language of the proceeding.
Paragraph 11(a) of the Rules states that "unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding".
The Panel therefore has discretion to determine that a language other than that of the Registration Agreement will apply as the language of the proceeding, having regard to the circumstances of the case. The Panel has an obligation to ensure that administrative proceeding takes place with due expedition (paragraph 11 of the Rules), whilst bearing in mind the need to consider the interests of the respective Parties.
The Panel is persuaded, in this case, that the Respondent would not be prejudiced by English being the language of the proceeding. The Panel has taken into consideration the fact that the disputed domain name does not comprise Chinese words but, rather, an English invented, fanciful word in combination with a gTLD in English, ".site". Further, it appears to be the case that the intention of the Respondent in registering the disputed domain name was to target those of the Internet community who are familiar with and comfortable with the English language. By the same token, it can reasonably be assumed that the Respondent itself has a requisite level of the command of English. To require the Complainant to translate the Complaint and supporting evidence into Chinese would cause a significant delay in the proceeding. The communications from the Center to the Respondent have all been sent in Chinese and English, which allows the Respondent a fair opportunity to respond in the proceeding and on the issue of the language to be applied. The Respondent, however, did not file any response.
On a balance of the respective Parties' interests, the Panel concludes that it is fair and appropriate for English to apply as the language of the proceeding.
6.2 Substantive Matters
A. Identical or Confusingly Similar
The Complainant has shown that it has rights in the trade mark TELSTRA. The entire mark has been incorporated in the disputed domain name. Since the gTLD ".site" has no particular bearing on the issue of whether the disputed domain name is identical or confusingly similar to the Complainant's trade mark, the gTLD being a technical requirement of all domain names, the Panel therefore finds the disputed domain name is identical to the Complainant's mark.
The requirement of paragraph 4(a)(i) of the Policy has been met.
B. Rights or Legitimate Interests
The Panel finds that a prima facie case has been established by the Complainant, that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant did not authorize the Respondent to use the TELSTRA trade mark or to register the disputed domain name. There is no evidence that the Respondent has been known by the name "telstra", or that there has been demonstrable preparations by the Respondent to use the disputed domain name in connection with a bona fide offering of goods or services.
Having done so, the burden shifts to the Respondent to establish, with evidence, circumstances showing that it has rights or legitimate interests in the disputed domain name. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1.) The Respondent failed to do so. In the circumstances, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
The requirement of paragraph 4(a)(ii) of the Policy has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, are considered to be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that a respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trade 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) the respondent has registered the domain name in order to prevent the owner of the trade 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the 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 a 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.
An important element in the Panel's determination of whether there has been bad faith registration and use in this case lies in the fame of the TELSTRA mark. In the light of the fame of the Complainant's mark, even in China, where the Respondent is located, and the fact that the Complainant has already secured the <telstra.com> domain name, the ".com" gTLD being typically the first (or one of the first) gTLD an applicant would consider when registering a brand as a domain name, it is highly unlikely that the Respondent was not aware of the Complainant and its TELSTRA trade mark at the time it registered the disputed domain name. In this day and age of the Internet, with quick and easy access to information, simple searches on the Internet would have surfaced links to the Complainant and its TELSTRA mark.
Against this backdrop, it was of particular importance for the Respondent to have provided a response, explaining its choice of adopting the "telstra" word in the disputed domain name, failing which the Panel can only surmise that the disputed domain name was registered in bad faith with an intent to ride off the Complainant's fame and the fame of its TELSTRA mark and thereby to "attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with a 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". See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 ("<veuveclicquot.org> is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith").
The Respondent did not file any response and the Panel has not been provided any basis to find otherwise than that the registration and use of the disputed domain name have been in bad faith.
The requirement of paragraph 4(a)(iii) of the Policy has been met.
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 name <telstra.site> be transferred to the Complainant.
Date: November 15, 2016