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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telstra Corporation Limited v David John Singh
Case No. D2002-0260
1. The Parties
The Complainant in this administrative proceeding is Telstra Corporation Limited (ACN 051 775 555), an Australian body corporate, with its principal place of business at 38/242 Exhibition Street, Melbourne, Victoria, 3000, Australia, represented by Mr. Marcus Crachi/Mr. Cheng Lim of the Mallesons Stephen Jaques.
The Respondent is Mr. David John Singh.
2. The Domain Names and Registrars
The domain names in issue are:
(a) <etelstra.com>, the Registrar of which is Core Internet Council of Registrars ("Core") of World Trade Center II, 29, route de Pré-Bois, CH-1215 Geneva, Switzerland; and
(b) <telstraonline.com>, the Registrar of which is Stargate Communications, Inc. ("Stargate") of 2805 Butterfield Rd. Suite 100, Oak Brook, Illinois, U.S.A. 60523.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received an electronic version of the Complaint on March 19, 2002, and received a hard copy of the Complaint on March 22, 2002, accompanied by all annexures. On March 26, 2002, the Complainant amended the Complaint to correct a misidentification of the Registrar of <etelstra.com>. The Center verified that the Complaint as amended satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the UDRP"), and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). The Complainant has made the required payment to the Center.
On March 21, 2002, the Center transmitted to Stargate by e-mail a request for registrar verification in connection with <telstraonline.com>, and on the same day transmitted to Core by e-mail on a request for registrar verification in connection with <etelstra.com>. Each of the Registrars has transmitted via e-mail to the Center its Verification Response, confirming that the registrant is the Respondent herein and that the UDRP applies in respect of the subject domain name registered with it.
On April 5, 2002, the Center attempted to formally notify the Respondent, to the fax numbers and e-mail address provided in each registration, that this administrative proceeding had been commenced, providing a copy of the Complaint with full information concerning the lodgment of the Complaint and information regarding the provision of a Response, making clear that the final date for lodging that Response was April 25, 2002. April 5, 2002, is the formal date of the commencement of this administrative proceeding.
The Center also sent such notification of the Complaint to the Respondent by courier (with all accompanying exhibits). The Complaint was delivered at the address of the Respondent and signed for by a person with the same surname as the Respondent.
No Response to the Complaint has been filed by the Respondent. Notification of Default was sent by e-mail to the parties on April 26, 2002.
On May 14, 2002, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision is scheduled to be forwarded to the Center by May 28, 2002.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") and that all formal requirements have been met for this determination, including proper notification of the Respondent in accordance with paragraph 2(a) of the Rules.
4. Factual Background
The Respondent is a resident of Australia.
The <etelstra.com> domain name was registered by the Respondent on June 5, 2000, and the <telstraonline.com> domain name was registered by the Respondent on September 24, 1999.
The Complaint asserts and provides supporting information that it is the owner of the trademarks "TELSTRA" and "TELSTRASHOP" in Australia, and "TELSTRA" alone in many other countries. In support of these assertions, the Complainant states inter alia that:
(a) the Complainant is one of the largest and best known publicly listed corporations in Australia, providing telecommunications and information services, with a market capitalisation of about A$70 billion, 50.1% of the issued shares in which are owned by the Australian Federal Government;
(b) in the financial year 2000-2001 the Complainant’s revenue exceeded A$23 billion.
(c) the Complainant has numerous Australian registrations including the invented word "TELSTRA" dating from 1992.
(d) the Complainant has also registered the trademark "TELSTRA" in countries outside Australia, and the Complaint asserts that the Complainant has international reputation in that trademark.
The Complaint includes substantial further evidence of the its advertising and marketing activities, using its trademarks.
The Complainant has registered in its name a number of domain names containing the word "TELSTRA", including the following:
and principally uses <tesltra.com>, to which <telstra.com.au> is also directed.
The Respondent’s <etelstra.com> domain name is not being used at all, but his <telstraonline.com> domain name shows a single page of publicly available, out of date information regarding the Complainant, and includes several disclaimers of any connection with the Complainant, whilst not providing any information at all regarding the operator of the site or its purpose.
Prior to issuing the Complaint, the Complainant states that it contacted the Respondent, specifically in request of the <etelstra.com> domain name. The Complainant alleges that the Respondent stated that he was prepared to sell the domain name to the Complainant for a fee equal to the filing fee in respect of domain name dispute proceedings to a body appointed by ICANN for the purposes of administering the UDRP. It is alleged that he stated that he would accept US$1,500 in this regard.
In addition, it is noted that the Respondent has a history of registering domain names including famous Australian trademarks, with the owners of which he has no apparent connection whatsoever, including:
each of which consists of a very famous Australian trade mark, which all Australians would instantly recognise, with the addition of an "online" suffix. At each address, the Respondent maintains the same sort of outdated information (in respect of <ansettonline.com>, for example, the information does not include the fact of the collapse of Ansett Australia Limited at the end of 2001, and its present administration, and each of the disclaimers refers to "Air New Zealand Limited", a reference to the parent company of Ansett Australia Limited).
The Respondent was the respondent to administrative proceeding WIPO D2001-0763; Myer Stores Limited v Mr. David John Singh in which it was found that he had engaged in bad faith registration and use of the <myeronline.com> domain name, "Myer" being another famous Australian trade mark. The Respondent’s domain name <telstraonline.com> was referred to in that proceeding, in which it is noted the Respondent filed a response. The administrative determination against the Respondent was dated July 10, 2001.
5. Parties’ Contentions
In accordance with paragraph 4(a) of the UDRP, the Complainant asserts, inter alia, as follows:
(a) that each of the subject domain names is confusingly similar to the Complainant’s name and registered trade marks including the word "TELSTRA";
(b) that the Respondent has no rights or legitimate interests in respect of either of the subject domain names;
(c) that the subject domain names have been registered and is being used in bad faith.
The Complainant’s assertions in respect of (a) and (b) are supported, in short, by the obvious similarity between the only distinctive element in each of the subject domain names "telstra" and the facts of the Complainant’s reputation in Australia referred to above and its registered trade marks, and the fact that the Respondent, as an Australian resident, must be taken to have been aware of the Complainant’s reputation as at the date of registration of the subject domain names.
In support of (c), the Complainant asserts that registration in bad faith is evidenced by the fact of the registration of the subject domain names in circumstances where the Respondent must be taken to have known full well that no possible use could be made of the subject domain names in the face of the Complainant’s overwhelming legal rights to the name "TELSTRA" and the use of that name, and the nature of his use (or non-use) of the domain names, in the context of his pattern of past conduct. In respect of <etelstra.com> specifically, the Complainant refers as well to the offer by the Respondent to sell the domain name. In each case, the Complainant relies upon the examples of bad faith given in paragraph 4(b)(i) and (ii) of the UDRP.
As noted above, no Response has been filed in this proceeding.
Onus of Proof
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the UDRP.
However, the Respondent has had ample opportunity to respond to the allegations of the Complainant and has not done so. The Respondent cannot be in a better position by failing to respond than if he had chosen to take advantage of the opportunities afforded to him, expressly, by paragraph 4(c) of the UDRP.
Paragraph 15(a) of the Rules instructs the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the UDRP, the Rules and any rules and principles of law that it deems applicable. In the absence of any response from the Respondent, the onus upon the Complainant will be satisfied if a conclusion which is capable of being drawn from the evidence provided by the Complainant is not contradicted by the Respondent; see Alcoholics Anonymous World Services, Inc. v. Lauren Raymond WIPO Case No. D2000-0007; Ronson Plc v Unimetal Sanayi ve Tic. A.S. WIPO Case No. D2000-0011 among numerous other decisions.
The Complainant’s rights in respect of "TELSTRA"
Paragraph 4(a)(i) of the UDRP directs that the Complainant must establish that the subject domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Panel finds that the Complainant has, at least in Australia, overwhelming rights, by virtue of trading as well as by virtue of registration of its trademarks, in the trademark "TELSTRA", and no doubt could establish its rights in many other countries as well.
The subject domain names <etelstra.com> and <telstraonline.com> are obviously confusingly similar to the Complainant’s trademark, in each case merely adding a non-distinctive internet-related element, in the one case the prefix "e" and in the other the suffix "online". There could be absolutely no doubt that, at least in Australia, any person seeing the use of the subject domain names, in the course of trade, would immediately conclude that the user had some connection with the Complainant.
Respondent has no legitimate interests in subject domain names
Paragraph 4(a)(ii) of the UDRP directs that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the subject domain names.
The trademark "TELSTRA" is so famous in Australia that it is difficult to conceive of a use of the subject domain names by an Australian entity not having prior permission from the Complainant to do so which could be legitimate.
The Respondent was entitled, and given every opportunity, to demonstrate that he had some legitimate intentions with respect to the subject domain names, and paragraph 4(c) gives good examples of how the Respondent could thereby demonstrate a legitimate interest. The Respondent has conspicuously failed to do so.
In respect of the present use being made of the <telstraonline.com> domain name, even if the Respondent had argued, as he argued in the earlier administrative proceeding in which he was involved regarding <myeronline.com>, WIPO Case No.D2001-0763; Myer Stores Limited v Mr. David John Singh, that this is a noncommercial site genuinely setting out to inform the public at large and potential and current investors interested in the affairs of the Complainant, the Panelist would reject such an argument.
As was observed by the learned panelist in Monty & Pat Roberts Inc. v J. Bartell, WIPO Case No. D2000-0300, at pages 16 and 17:
"… the right to express one’s views is not the same as the right to use another’s name to identify one’s self as the source of those views. One may be perfectly free to express his or her views about the quality or characteristics of the reporting of the New York Times or Time Magazine. That does not, however, translate into a right to identify one’s self as the New York Times or Time Magazine."
In any event, the information on the <telstraonline.com> website, as well as being trivial, is plainly out of date. No effort has been made to keep this information current, as transparently inadequate as it was even in when it was posted some time in or soon after July, 2000, to such a degree that it may well be found to be misleading, as it certainly is with the other "online" websites the Respondent has in use. The Respondent’s conduct makes it obvious that his use of the <telstraonline.com> domain name is not being used genuinely for the purpose of informing the public. He exhibits no public interest – he does not even identify himself as the source of the information on the site, which is mostly filled with disclaimers.
The Panel, therefore, agrees with the Complainant’s submission that the Respondent has no rights or legitimate interests in respect of either of the domain names <etelstra.com> or <telstraonline.com>.
Registration and use in bad faith
Paragraph 4(a)(iii) of the UDRP directs that the Complainant must establish that the subject domain names have been registered and are being used in bad faith.
Paragraph 4(b) of the UDRP gives examples of registration and use of a domain name in bad faith, including (modified for the purpose of this determination):
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of his 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 Complainant from reflecting its trade mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct.
These facts of this case in which:
(a) an Australian Respondent registered the subject domain names in circumstances where it is inconceivable that he was unaware of the pre-existing rights of the Complainant;
(b) the Respondent has a history of registrations of "online" domain names including other famous trademarks, in respect of at least <myeronline.com> and <telstraonline.com> he clearly had no legitimate interest whatsoever; and
(c) the Respondent offered to sell the <etelstra.com> domain name to the Complainant for US$1,500
leave this Panel in no doubt that both the abovementioned examples of registration and use in bad faith in paragraph 4(b) of the UDRP have been established by the Complainant in respect of each of the subject domain names.
In the light of the findings in paragraph 6 above, the Panel concludes that:
- each of the subject domain names <etelstra.com> and <telstraonline.com> is confusingly similar to the trademark "TELSTRA" belonging to the Complainant; and
- the Respondent has no rights or legitimate interests in either of the subject domain names; and
- each of the subject domain names has been registered and is being used in bad faith.
Accordingly, the Panel determines in accordance with paragraph 15 of the Rules that the subject domain names <etelstra.com> and <telstraonline.com> be transferred to the Complainant, Telstra Corporation Limited, in accordance with paragraph 4(i) of the UDRP.
William Peter Knight
Dated: May 28, 2002