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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telstra Corporation Limited v. Geonill Cha
Case No. D2001-0301
1. The Parties
The Complainant is Telstra Corporation Limited ("Telstra"). It is a public company incorporated in Australia. Its principal place of business is in Melbourne, Victoria. It operates extensively throughout Australia. It is represented by Ms Helen Mason and Mr Warwick Rothnie of Mallesons Stephen Jaques, Solicitors, of Melbourne, Victoria, Australia.
The Respondent is identified as Geonill Cha whose details are given according to Network Solutions Whois database as Hyundai APT 450-1, Songnae-Dong, Sosa-gu, Bucheon, Kyunggido 422-040, Republic of Korea.
2. The Domain Name and Registrar
The domain name the subject of the dispute is <telstraonair.com>.
The Registrar with whom the domain name is registered is Network Solutions Inc of 505 Huntmar Park Drive, Herndon, VA 20170, United States.
The disputed domain name was registered by the Respondent on October 16, 2000. It is apparently inactive and resolves to what is described as a free parking website advertising the services of Network Solutions Inc.
3. Procedural History
On March 1, 2001 the Complaint by Telstra was received by email.
On March 7, 2001 the Complaint was received in hard copy.
On March 7, 2001 Registrar Verification was requested.
On March 8, 2001 the Registrar responded to the request.
On March 13, 2001 a Formal Notification of Complaint and Commencement of Administrative Proceeding was notified.
On March 30, 2001 a Respondent Default Notification was issued.
On April 12, 2001 a Notification of Appointment of Administrative Panel and projected decision date was notified.
The Panel having accepted the appointment and having considered the papers delivers the following Administrative Panel Decision.
4. Factual Background
Telstra is a company incorporated in Australia. It is majority owned by the Commonwealth Government of Australia with the balance of the shareholding owned by shareholders and instalment receipt holders.
Telstra is the successor in title to the telecommunications businesses operated for some 75 years by the Commonwealth Postmaster-General and since 1975 under the name "Telecom Australia" and "Overseas Telecommunications Corporation" or "OTC". Telstra was formed in 1992 by the merger of Telecom Australia and OTC and adopted its legal name Telstra Corporation Limited. Since July 1995 the domestic trading name has been Telstra which has been used ever since.
Telstra has a number of registered trade marks and pending applications including various in class 38 relating to telecommunications services. The trade marks however are extensive and cover 17 of the 42 Nice classes.
The Annexure H to the Complaint lists a substantial number of registrations or pending applications in a variety of jurisdictions world-wide.
Telstra also owns a number of websites and over 50 domain names containing the word Telstra, some details of which are given in para 32 of the Complaint.
Little is known of the Respondent. It is assumed that the Respondent is an individual residing in Republic of Korea.
The Respondent does not appear to use the disputed domain name which is parked at a website advertising the services of the Respondent’s ISP, Network Solutions. Although the site appears to be inactive, it is extant and operates so as to block any like registration in favour of Telstra. The Respondent has been in electronic communication with Telstra following cease and desist letters.
5. The Parties’ Contentions
Telstra claims as Complainant that it is the owner of various rights to the mark TELSTRA. It claims to be known under or by reference to the TELSTRA mark in connection with a broad range of telecommunications services. These include not only conventional telecommunications services but electronic services such as data, internet and online services.
Telstra has obtained an extensive range of trade mark registrations and has a number of registrations pending in a variety of jurisdictions. Annexures G and H to the Complaint provide evidence of the Australian registrations and pending applications as well as those registered or pending overseas.
Telstra claims to be one of the best known brands in Australia and accordingly claims to have a substantial reputation in Australia. It also claims to have a substantial reputation overseas almost to the extent of world-wide reputation as a result of its marketing, advertising, sponsorship and joint venture arrangements. These rights are protected in part by the trade mark registrations obtained in numerous overseas jurisdictions.
Telstra also indulges in considerable sponsorship as well as general advertising. In fiscal year 2001 the advertising spend is stated to be A$181,000,000. The advertising spend in the 5 years down to end fiscal 2001 is comparable. It appears that this advertising spend is what is commonly known in the industry as including above the line and below the line advertising expenditure. It is considerable.
The Complainant Telstra claims that it has registered the mark Telstra as a trade mark in Korea (Annexure H to the Complaint). It is the 100% owner of Telstra Korea Limited which began operations in August 1999. Telstra’s activities in Korea have been publicised in local media in that jurisdiction.
Telstra claims that the Respondent was sent a cease and desist letter to which the Respondent replied threatening to transfer the disputed domain name to a friend in a foreign country. That would involve the institution of dual legal proceedings and the reputation of Telstra would be lost. It appears thereafter as if the disputed domain name was "deactivated" in the sense that it resolved to a parking website provided by the ISP.
The Respondent has defaulted and has not provided a response to the Complaint. Nevertheless, following a cease and desist letter from the Complainant the Respondent replied electronically and the email traffic is in evidence. ( Annexures J, K and L to the Complaint).
Notwithstanding the default by the Respondent it remains incumbent on the Complainant to make out its case. The Respondent must establish a breach of Rule 4(a) of the Policy.
6. Discussion and Findings
The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abusive domain name registrations.
As part of the process the Complainant must provide evidence and submissions in support of its Complaint. The Respondent is given full opportunity to respond. In this case the Respondent has elected to place no evidence nor any submissions before the Panel. There is however its email response to the cease and desist letter.
Rule 4(a) of the Policy sets out three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) The Respondent’s domain name is identical or confusingly similar to a trade mark 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 Respondent’s domain name has been registered and is being used in bad faith.
Each of the three elements must be proved by a Complainant to warrant relief.
As to the first ground, the Complainant Telstra alleges that the Respondent’s domain name is confusingly similar to a trade mark in which the Complainant has rights. It claims that the Telstra trade marks, both registered and unregistered and pending applications including those used on an extensive scale internationally including in Korea have created sufficient of a reputation and goodwill owned by Telstra that the use by the Respondent of <telstraonair.com> is confusingly similar.
The Complainant submits that TELSTRA and ON AIR are invented or coined words. Telstra has also applied for trade mark registration for ON AIR and ONAIR in both class 9 and class 38. These applications (set out in Annexure F to the Complaint) are pending in Australia. Telstra claims however that ON AIR has been used extensively by it to identify its mobile and wireless networks both within Australia and offshore.
There can be no doubt whatever but that the name TELSTRA is well known to anybody familiar with the telecommunications industry in Australasia.
Such reputation would no doubt spread throughout the southern and south-western Pacific and reach as far as south-east Asia. In Australasia at least Telstra as a mark on its own would no doubt now be regarded as a famous mark.
It is not unreasonable to assume that in the case of the telecommunications industry the fame or notoriety of the Telstra mark would have extended beyond these territories to include most countries world-wide and certainly the south-western Pacific and south-east Asia.
The evidence is not quite so clear with respect to the ON AIR trade marks. The Panelist does not necessarily agree that ON AIR is an invented or coined word as, in certain circumstances, it could be regarded as descriptive. Nevertheless, having regard to the extensive reputation of Telstra, the combination of TELSTRA and ON AIR and the fact that both have been used by Telstra is sufficient to establish rights to those marks either individually or in combination in favour of the Complainant.
Even if the mark ON AIR is to be regarded as descriptive, its combination with TELSTRA and the enormous reputation that that mark has acquired is sufficient to satisfy the Panelist that the combination of the two marks would clearly signify to any interested person that the combination mark TELSTRA ON AIR (with or without breaks) is a mark belonging to or associated with the Complainant.
Accordingly ground (i) is made out.
The second ground requires the Complainant to establish that the Respondent has no rights or legitimate interests in respect of the domain name.
As the Respondent has defaulted it has provided no evidence nor any submissions in justification of any claim that it has rights to or legitimate interests in the disputed domain.
It is apparent however from the extensive material provided by the Complainant that it has a reputation and is well known throughout the Asia Pacific region. Its exposure in Korea precedes the registration of the disputed domain. It would not be unreasonable to assume that the Respondent was aware or was likely aware of the Complainant’s reputation. The publicity in local media in Korea and the extensive exposure that the Complainant would have achieved through the broadcasting of the Sydney 2000 Olympics of which Telstra was a sponsor would have been such that the Respondent is unlikely not to have been aware of the Complainant, its identity and its use of its various trade marks, whether registered or unregistered.
The Complainant claims that Telstra is an invented or coined word and is a word unlikely to be chosen by a Respondent innocently as having any connection with the Respondent or a business with which the Respondent has a legitimate interest.
The Complainant has been assiduous in its protection of its trade marks and its rights to various domain names. The submissions in the Complaint refer to a number of earlier Panelist’s decisions involving the Complainant. The seminal case which the Panelist follows is Telstra Corporation Ltd v Nuclear Marshmallows WIPO Case No.D2000-0003. That involved the disputed domain name <telstra.org>.
Of the various circumstances which could be raised by the Respondent in defence of its registration none are applicable and all have been dealt with satisfactorily by the Complainant in its submissions. None of the matters could be established on the available evidence in favour of the Respondent. Accordingly, ground (ii) is made out.
The third ground requires the Complainant to establish that the domain name has been registered and is being used by the Respondent in bad faith. In respect of ground (iii) both of these heads under (iii) must be made out – see WIPO Case No.D2000-0003 Telstra Corporation Ltd v Nuclear Marshmallows.
The Complainant alleges that the Respondent has both registered and is using the disputed domain in bad faith. Of the latter point, the Complainant acknowledges that the site appears to be inactive as it resolves to a parking bay with the ISP. The Complainant however relies upon the WIPO Case No.D2000-0003 Telstra Corporation Ltd v Nuclear Marshmallows decision as well as others to the effect that an inactive website may still amount to use of the disputed domain name in bad faith. Clearly, as the Panelist’s decision in WIPO Case No.D2000-0003 Nuclear Marshmallows indicates, it depends on the facts of each particular case.
In the instant case, the most telling evidence is that provided by the Respondent itself in its response to the cease and desist letter from the Complainant.
The disputed domain was registered in October 2000, just after the Sydney 2000 Olympic Games, with which Telstra was very closely associated both as a sponsor and broadcaster.
Within less than two months the Complainant contacted the Respondent electronically and required it to cease its use of the disputed name. To this communication the Respondent replied electronically on December 13, 2000. It is informative to set out part of the response. The Respondent stated:
"If you talk of legal dispute demanding return of the domain, I will transfer domain to my friend in a foreign country. Then you will have to institute dual legal proceedings and the reputation of your company will be lost. This is not a threat."
This response was sent electronically in Korean and has been translated by Telstra – (Annexure L to the Complaint).
Having regard to the timing of the registration, the Respondent’s response to the cease and desist letter and the extensive reputation that has clearly been established by the Complainant, the inference is ineluctable that the Respondent registered the disputed name for wrongful purposes. Whilst there is no evidence that the Respondent has sought to extract any payment from the Complainant over and above the Respondent’s reasonable costs of registration, the fact that the Respondent was prepared to transfer the domain to a third party which would involve the institution of two sets of legal proceedings is in itself evidence of bad faith. Moreover, the Respondent having then stated that "the reputation of your company will be lost" is in itself a threat with very real consequences for the Complainant.
It is important however to bear in mind what the Respondent said in full in the email to the Complainant’s solicitors. The translation of the response (Annexure L to the complaint) appears to seek information regarding the rights claimed by Telstra and in particular to the disputed domain <telstraonair.com>. The Respondent also appears to have claimed ownership of the disputed domain name due to an earlier domain registration by the Respondent. That claim to earlier domain registration presumably is in respect of the registration with Network Solutions as of October 2000. On that assumption it is only earlier in that it precedes the Complaint but on the basis of the available evidence is clearly after the Respondent would have been well aware of the Complainant’s reputation and goodwill. It is unlikely in the extreme that the Respondent registered the disputed domain unaware of the Complainant’s reputation and goodwill.
The email response from the Respondent also appears to have requested the legal basis and proof that the disputed domain belonged to the Complainant and evidence that the Complainant exercised its rights with respect to other countries throughout the world. That evidence is clearly supplied in the Complaint itself and the attachment thereto.
The email response further goes on to seek the legal basis upon which the Complainant could exercise rights to the disputed domain against a resident of a foreign country. Those rights are clearly apparent under the ICANN Policy and Rules as adopted by the Registrar and which bind the Respondent. It is noted in particular that the Network Solutions Service Agreement Terms require the Respondent to abide by the Domain Name Dispute Policy procedures. The Network Solutions Rules incorporate the UDRP Policy and the Rules included amongst which are Rules relating to transfers to a third party during a dispute (see Annexure C to Complaint).
Before departing this section however it is important to note that of the various matters set out in the Policy, clause 4(b) is relevant. Under this clause the Policy provides that evidence of registration and use in bad faith may, but without limitation, be provided in circumstances listed in the subclauses. These include that evidence of bad faith may be provided by the Complainant establishing that the Respondent has registered or acquired the domain name primarily for the purpose of selling or transferring it to the Complainant as the owner of the trade mark for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name.
In the Respondent’s email response (Annexure L to the complaint) the Respondent also stated:
"Finally, since I dislike legal dispute, if you pay the Court costs to me instead and ask me to transfer the domain to you I think there will be no legal action and it will be better. I suggest this as an idea."
No evidence has been provided by the Complainant as to any response by the Complainant to this email and this suggestion from the Respondent. Whether or not the reference to "pay the Court costs to me" is to be regarded as a requirement for payment to the Respondent of an amount no more than the Respondent’s documented out-of-pocket costs directly related to the domain name is unclear. What is clear is that the Respondent has sought to extract a payment from the Complainant with a view to transferral of the domain name.
The Panelist also notes that clause 4(b) does not so much as provide a defence but rather set out circumstances which, if established, may amount to evidence of bad faith. That does not mean to say that an offer to transfer the disputed domain name for the documented out-of-pocket costs related to the domain name is of itself a defence that negatives bad faith.
The response from the Respondent in Annexure L to the complaint is equivocal. Further there is no evidence from the Respondent of the documented out-of-pocket costs. Reading the response as a whole the only reasonable inference to draw is that the Respondent sought to extract a payment from the Complainant yet in circumstances where the Respondent knew or must have known that it had no rights to the disputed domain at the time it achieved its registration.
The Panelist, guiding himself by what has been said in previous Panelist’s decisions, and recognising that the concept of registration and use in bad faith requires a relatively high threshold to be crossed, concludes that the Respondent very clearly has registered and is using the disputed domain in bad faith. None of the available defences that are set out in clause 4(c) of the Policy can apply in the circumstances of this case. Applying the warning of the Panelist in the WIPO Case No.D2000-0003 Telstra Corporation Ltd v Nuclear Marshmallows case, on the particular facts of this case it is clear that the registration of the disputed domain has been in part at least for the purposes of blocking access to it by the Complainant. Adopting a broad interpretation to "use", this Panelist finds that use can include employment for a particular purpose which in the circumstances of this case can include blocking. Extended definitions of "use" include "exploit", "misuse", "take advantage of".
In accordance with modern principles of interpretation, applying the extended definitions of "use" and a purposive construction to the Policy and Rules, the Panel finds as a fact that the Respondent’s actions in this case amount to use in bad faith. As the registration was in October 2000 and post-dated the activities of the Complainant of which this Panel finds the Respondent must have been aware, registration in bad faith is also made out.
Accordingly it follows that both heads of ground (iii) are made out. The disputed domain has been registered and is being used in bad faith.
For the reasons set out above the Panel finds:
(a) The domain name <telstraonair.com> registered by the Respondent is confusingly similar to trade marks to which the Complainant has rights;
(b) The Respondent has no rights or legitimate interests in respect of the domain name;
(c) The Respondent’s domain name was registered and is being used in bad faith.
Accordingly, pursuant to clause 4(i) of the Policy, the Panel requires that the registration of the domain name <telstraonair.com> be transferred to the Complainant.
John Katz QC
Dated: April 19, 2001