WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Telstra Corporation Limited v. Zhen Yang

Case No. D2016-1680

1. The Parties

The Complainant is Telstra Corporation Limited of Melbourne, Victoria, Australia, represented by Crowell & Moring, LLP, Belgium.

The Respondent is Zhen Yang of Qing Dao, Shan Dong, China.

2. The Domain Name and Registrar

The disputed domain name <telstra.store> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the "Registrar").

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on August 18, 2016. On August 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 19, 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 August 22, 2016, the Center informed the Parties that the Registration Agreement is in Chinese and requested them to comment on the language of the proceeding. The Complainant submitted a request for English to be the language of the proceeding on August 22, 2016. The Respondent submitted a request for Chinese to be the language of the proceeding on September 7, 2016.

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 Chinese, and the proceeding commenced on August 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 18, 2016. The Respondent submitted a request to transfer the disputed domain name to the Complainant on September 2, 2016. On the same day, the Center informed the Parties that if they wish to explore settlement options, the Complainant should submit a request for suspension by September 9, 2016. The Complainant did not submit any suspension request by the specific due date. Accordingly, the Center notified the Commencement of Panel Appointment Process on September 19, 2016.

The Center appointed Sok Ling MOI as the sole panelist in this matter on September 21, 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 telecommunications and technology company and one of Australia's leading providers of mobile phones, mobile devices, home phones and broadband Internet. It employs around 3,000 people based in 22 countries outside of Australia, including China.

The Complainant owns numerous trade mark registrations for the TELSTRA mark throughout the world, covering various goods and services used in relation to the Complainant's business, including:

- Australian Registration No. 579922 - registered on June 5, 1992;

- International Registration No. 1176338 - registered on February 1, 2013;

- European Union Trade Mark Registration No. 000194845 - registered on April 23, 1999; and

- European Union Trade Mark Registration No. 001335934 - registered on January 25, 2002.

The Complainant has used the TELSTRA trade mark ever since June 5, 1992. The Complainant promotes its business under the TELSTRA trade mark through its websites linked to the domain names <telstra.com> and <telstra.com.au>.

The disputed domain name was registered by the Respondent on June 14, 2016, long after the Complainant used and registered its TELSTRA mark. The disputed domain name does not resolve to any active website and appears never to have been so directed.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to its trade mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.

B. Respondent

Apart from four emails sent to the Center on September 2, 2016 and September 7, 2016 offering to unconditionally transfer the disputed domain name to the Complainant and requesting that Chinese be the language of the proceeding, the Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, 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.

Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated fairly and given a fair opportunity to present their respective case.

The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.

On the record, the Respondent appears to be a Chinese individual and is thus presumably not a native English speaker. The Panel also notes that the Respondent has sent four emails (three dated September 2, 2016 and one dated September 7, 2016) to the Center with contents entirely in Chinese and requesting that Chinese be the language of the proceeding. This notwithstanding, the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain name is registered in Latin characters, rather than Chinese script; and

(b) based on a reverse WhoIs search on the Respondent's email independently conducted by the Panel ¹,the Respondent owns other domain name registrations consisting entirely of Latin characters, such as <blackmores.online>, <swisse.online>, <kogan.top>, <guardianpharmacies.vip>, <sheridan.vip>, <discountdrugstores.vip>, <woolmark.vip>, <australianmade.vip>, <chemistking.vip> and <chemistwarehouse.vip>.

Additionally, the Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both Chinese and English;

(b) the Center informed the Respondent that it would accept a Response in either English or Chinese; and

Considering the above circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case. To require the Complaint to be translated into Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and unfairly disadvantage the Complainant. The proceeding would be unnecessarily delayed.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; and (ii) English shall be the language of the proceeding and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be transferred:

(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

On the basis of the evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the TELSTRA mark acquired through use and registration.

The disputed domain name incorporates the Complainant's TELSTRA trade mark in its entirety. The addition of the generic Top-Level Domain ("gTLD") ".store" does not impact on the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant's trade mark. On the contrary, given the generic meaning of the word "store" and the Complainant's online presence, the addition of the gTLD ".store" adds confusion as the Internet user may mistakenly believe the website linked to the disputed domain name to be operated by the Complainant as its online store.

Consequently, the Panel finds that the disputed domain name is identical to the Complainant's trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii), the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd, WIPO Case No. D2013-0974.

The Complainant has clearly established that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the TELSTRA mark or register the disputed domain name containing the Complainant's trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the name "telstra".

The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name.

As at the date of the decision, the disputed domain name does not resolve to any active website and appears never to have been so directed. Other than the Respondent's four informal emails, the Respondent did not reply to the Complainant's contentions and has thus failed to provide any evidence to establish its rights or legitimate interests in the disputed domain name. As such, the prima facie case has not been rebutted.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or 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 trade mark or service 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 disputed domain name; or

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark 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 Panel notes that, as of the date of this decision, the disputed domain name does not resolve to any active website and appears never to have been so directed. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (see WIPO Overview 2.0, paragraph 3.2).

The Complainant and its TELSTRA trade mark enjoy a worldwide reputation. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. A cursory Internet search would have disclosed the TELSTRA trade mark and its extensive use by the Complainant. Given the long-established use and reputation of the TELSTRA trade mark, a presumption arises that the Respondent was aware of the Complainant's TELSTRA trade mark when it registered the disputed domain name. Registration of a domain name that incorporates a complainant's long-established and well-known trade mark suggests opportunistic bad faith.

The Panel notes, from a reverse WhoIs search independently conducted on the Respondent's email address, that the Respondent has registered several other domain names such as <blackmores.online>, <swisse.online>, <kogan.top>, <guardianpharmacies.vip> and <sheridan.vip> each of which incorporates a third party trade mark. This suggests that the Respondent is engaged in a pattern of cybersquatting and has registered the disputed domain name in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name.

The Respondent has not denied the Complainant's allegations of bad faith. In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain name, and given that the disputed domain name is identical to the Complainant's domain name, the Panel determines that the Respondent has registered and used the disputed domain name in bad faith.

The Panel also notes that efforts to contact the Respondent at the physical address provided by the Registrar failed which suggests that the Respondent had provided false contact details when registering the disputed domain name.

Taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy.

7. Decision

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.store> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: October 6, 2016

¹ A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.5.