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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telstra Corporation Limited v. Peter Yellowlees
Case No. D2002-0638
1. The Parties
The Complainant is Telstra Corporation Limited, Level 38, 242 Exhibition Street, Melbourne, Victoria. 3000, Australia.
The Respondent is Peter Yellowlees, Globalhealthsharing, 22/260 Vulture Street, South Brisbane, Queensland 4101, Australia.
2. The Domain Names and Registrar
The Domain Names are <e-telstra.org> and <e-telstra.net> and the Registrar is Blueberry Hill Communications, Inc. in California, United States of America.
3. Procedural History
The Complainant submitted an e-mail copy of its complaint about the disputed domain names to the WIPO Arbitration and Mediation Center (the "Center") on July 10, 2002, and a hardcopy on July 15, 2002. The Center acknowledged the Complainant's submission on July 11, 2002. The complaint was filed in accordance with the approved 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"), October 24, 1999.
The Center sought verification of the disputed domain names from Blueberry Hill Communications, Inc. on July 11, 2002. Blueberry Hill Communications, Inc.'s response was received on July 26, 2002, identifying Peter Yellowlees as the registrant of the disputed domain names and confirming that the Uniform Domain Name Dispute Resolution Policy (the "Policy") applies to the disputed domain names. Also, the Registrar confirmed that both domain names have been locked during the pending administrative proceeding.
The Center sent the complaint to the Respondent on July 29, 2002, by hard copy and e-mail. The Center’s communication informed the Respondent of a "Notification of Complaint and Commencement of Administrative Proceeding" and that the last day for a response was August 18, 2002.
The Respondent defaulted by not sending a response by the due date and on August 21, 2002, the Center sent a "Notification of Respondent Default" to the Respondent and the Complainant.
Following an invitation from the Center to serve as a panelist, the Panel member submitted his "Statement of Acceptance and Declaration of Impartiality and Independence" to the Center on August 30, 2002, and was formally appointed on the same day.
The Panel has not received any additional submissions. The Panel agrees with the Center’s assessment concerning the complaint’s compliance with the formal requirements including proper notification to the Respondent and the payment by the Complainant of the appropriate fee for a decision by a single panelist.
The proceedings were conducted in English and the Panel's decision is scheduled to issue on September 13, 2002.
4. Factual Background
Telstra Corporation Limited is one of the largest publicly listed companies in Australia. The 49.9% publicly issued stock (Telstra is 50.1% owned by the Australian Federal Government) has a market capitalization of about $A70 billion. It is Australia’s largest telecommunications and information services company, offering a wide range of telecommunications and information services. Through its predecessors it has a background of 100 years in those services. Its revenue in the financial year 2000-2001, exceeded $A23 billion. Telstra is one of Australia’s largest employers. Its full-time employees as at June 30, 2001, numbered over 44,000.
TELSTRA is one of the best-known brands in Australia and has substantial operations in many overseas countries. The Complainant's products and services are all offered under or by reference to the trademark TELSTRA (alone, or in combination with other trademarks). The TELSTRA trademarks are heavily promoted through advertising and sponsorship in Australia and overseas. Telstra regularly advertises its services and products in all forms of media. In 2001-2002, its promotional and advertising expenditure exceeded $A140 million. Telstra is a major sponsor of many sporting, cultural and entertainment events and programs in Australia. The TELSTRA mark has been highly visible in Telstra’s major corporate sponsorships as well as individual product sponsorships.
In Australia Telstra has registered, or has filed applications with registrations pending for, 69 trademarks comprising or containing the word TELSTRA including a number in trademark class 38 in respect of telecommunications services. The trademarks cover an extensive range of goods and services and span 17 of the 42 trademark classes. In addition, Telstra has also registered, or has filed applications with registrations pending for, a large number of TELSTRA trademarks overseas in over 30 countries.
Telstra is the owner of a number of domain names containing the word TELSTRA including <telstra.com>, <telstra.net>, <telstra.org>, <telstra.com.au>, <telstra-inc.com>, <telstrainc.com> and <telstrashop.com>. For several years Telstra has operated its principal web site at <www.telecom.com.au>, followed later by <www.telstra.com.au>. In December 1999, Telstra relaunched its web site at <www.telstra.com> to which <www.telstra.com.au> now resolves. The site includes electronic customer services for its fixed-line and mobile-phone customers, news and other entertainment services as well as combining its White Pages directories and Yellow Pages directories, which previously were accessible only through separate sites located respectively at <www.whitepages.com.au> and <www.yellowpages.com.au>. Use of the various Telstra web sites continues to grow at a rapid rate. Telstra’s web sites received between 11 million and 22 million hits per month throughout the year 2000.
On March 12, 2000, the Respondent registered the disputed domain names and they have remained inactive since then.
The Complainant's representative sent a cease and desist letter on December 19, 2001, requesting the domain names be transferred. In his reply of January 10, 2002, the Respondent stated that he was not currently using the domain names and added "If Telstra believes that there may be some confusion at some time in the future if I do decide to use these domain names then I am open to suggestions as to how Telstra might like to prevent this confusion occurring. If Telstra has a specific interest in becoming the owner of these domain names then I would be prepared to consider a financial solution."
The Complainant's response on February 6, 2002, was to offer the Respondent out-of-pocket registration expenses in return for the transfer of the domain names. In reply the Respondent e-mailed the Complainant's representative on April 5, 2002, stating that he has not used the domain names, does not appreciate the implication of being a cybersquatter and was not interested in the offer proposed.
On April 30, 2002, the Complainant's again offered to reimburse reasonable out-of-pocket expenses in exchange for the transfer of the domain names. The Respondent made no response until he received the Center's Notification of Complaint and e-mailed the Complainant's representative on July 29, 2002, offering to resolve the matter and avoid further costs by accepting $A10,000 in exchange for transferring the domain names to the Complainant. The Complainant's representative replied on August 1, 2002, stating that the Complainant does not accept the offer as it is only prepared to pay out-of-pocket expenses incurred in registering the domain names.
5. Parties’ Contentions
The Complainant contends that:
- The domain names are confusingly similar to its trademark because the generic "e" does not detract from the dominant trademark part of each domain name, the combination of the "e" and the trademark is confusing and likely to cause a false impression that the Respondent is associated with the Complainant and, in Australia in particular, any person would immediately conclude that the user had some connection with the Complainant.
- The Respondent has no rights or legitimate interests in respect of the domain names because the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks nor has it licensed or otherwise permitted the Respondent to apply or use any domain names incorporating its trademark. The Complainant's trademark is so distinctive that no one could legitimately choose it unless trying to trade off Telstra's rights. Also, the name of the Respondent is not and does not include any parts of the disputed domain names.
- The Respondent's conduct is sufficient to establish evidence of bad faith registration and use of the disputed domain names because the Respondent must have known of Telstra's widespread use and reputation and that "it was this very fact that led the Respondent to register the domain names", the Respondent could virtually not make any commercial use of the domain names without infringing the legal rights of the Complainant or misleading and deceiving the public and the Respondent's proposal to consider a financial solution but rejecting Telstra's offer of out-of-pocket expenses.
Also, the Complainant contends that the "response as a whole" amounts to bad faith in terms of Paragraph 4 b (i) as:
- At no time does the Respondent provide any indication as to why he had registered the domain names;
- The Respondent has made no use of the domain names since their registration over 2 years earlier;
- The Respondent has no legitimate rights or interests in the domain names;
- The Respondent was aware of Telstra’s immense reputation in the TELSTRA name; and
- The Respondent proposed to "consider a financial solution", but rejected Telstra’s offer to reimburse him for out-of-pocket expenses incurred.
Finally, the Complainant asserts that although the domain names are not active, the concept of "use" in the requirement of bad faith is not limited to positive actions by the Respondent.
The Respondent has failed to provide a response to the Complainant's allegations.
6. Discussion and Findings
As the Respondent failed to provide a response to the Complainant's allegations and, in the absence of any exceptional circumstances, the Panel, in accordance with Rule 5 (e), will decide the dispute based on the complaint.
In accordance with the Policy, the Complainant must prove that: (i) the Respondent's domain names are identical or confusingly similar to a trademark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the domain names; and (iii) the Respondent's domain names have been registered and are being used in bad faith.
(i) the Respondent's domain names are identical or confusingly similar to a trademark in which the Complainant has rights
The Complainant's rights in the trademark TELSTRA are well proven. In Australia, the Complainant has nearly 70 registered or pending trademarks. Also, it has trademarks registered in over 30 other countries. The TELSTRA trademark, with its extensive use and marketing, is definitely well-known in Australia.
The disputed domain names <e-telstra.org> and <e-telstra.net> are made up of a simple combination of the Complainant's trademark prefixed by the letter "e", presumably to represent the concept of "electronic".
Since the commencement of domain name dispute resolution it has been commonly held that the effect of linking a trademark with an ordinary descriptive word does not detract from the trademark itself. See, for example, Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409 where 19 domain names incorporated the trademark SONY. In that case the panel held that "neither the addition of an ordinary descriptive word (either as a prefix or suffix)…detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY…. A reader of any of the disputed domain names would be confused into thinking that it was associated with the complainant". The same conclusion can be made where a single letter is used rather than a word. Example of such decisions include <i-telstra.com> in Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046 and <etelstra.com> in Telstra Corporation Limited v. David John Singh, WIPO Case No. D2002-0260.
Consistent with previous decisions, the Panel agrees that the addition of the prefix letter "e" does not alter the basic meaning of the disputed domain names and, therefore, finds that the Respondent's domain names are confusingly similar to the Complainant's trademark.
(ii) the Respondent has no rights or legitimate interests in respect of the domain name
Paragraph 4 (c ) of the Policy sets out how a Respondent can demonstrate rights to and legitimate interests in the disputed domain names. The ways include, but are not limited to:
(i) "before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or an organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights: or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".
The Respondent has not provided any information demonstrating its rights or legitimate interests in the disputed domain names. However, based on the information before the Panel it seems unlikely that any of the above ways of demonstrating rights to or legitimate interests in the disputed domain names could possibly be maintained by the Respondent. There is no evidence of using the domain names with a bona fide offering of goods and services. There is no evidence before the Panel that indicates that the Respondent is commonly known by the domain names or that there has been legitimate non-commercial or fair use of the domain names.
As TELSTRA is a well-known trademark particularly in Australia it is difficult to imagine that the Respondent was not aware of the Complainant's reputation and trademark when registering the disputed domain names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
(iii) the Respondent's domain name has been registered and is being used in bad faith
For the purposes of determining if the Respondent acted in bad faith the Panel considered the circumstances of the registration and use of the domain names as set out in Paragraph 4 (b) of the Policy noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
Since registering the disputed domain names the Respondent has not made any use of them and they do not resolve to any web site. Once the Complainant contacted the Respondent and requested the transfer of the domain names the Respondent refused all offers of reimbursement covering the reasonable out-of-pockets costs of registering the domain names. However, once confronted with the formal Notification of the Complaint from the Center the Respondent contacted the Complainant seeking $A10,000 for transferring the two domain names, a sum clearly in excess of the out-of-pocket costs related to registering the domain names.
The Complainant has argued that bad faith registration and use is evidenced by the "response as a whole" as well as specifically in terms of the circumstances set out under Paragraph 4 (b) (i) of the Policy.
The Paragraph 4 (b) (i) circumstances that evidence of the registration and use of a domain name in bad faith are "that you have registered or you have acquired the 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 your out-of-pocket costs directly related to the domain name".
On the information available to the Panelist, including the fact that the domain names have not been used in the two and a half years since registration, there can be no other conclusion other than they were registered for the primary purpose of at some stage extracting a profit from the Complainant. As in the Myer Stores Limited v. David John Singh, WIPO Case No. D2001-0763 the fame of the trademark in Australia is such that the Respondent, an Australian resident, must have known of the mark before registering the domain names.
Given the distinctiveness and reputation of the Complainant's trademark, the fact that it has no specific meaning and the improbability of the Respondent coming up with the names independently, there appears to be no explanation other than that the registrations were made in bad faith with the intent to attract business to the Respondent’s site, disrupt the business of the Complainant and/or profit from the eventual sale of the domain names (see Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003, Nintendo of America Inc v. Pokemon, WIPO Case No. D2000-1230 and Neuberger Berman Inc v. Alfred Jacobson, WIPO Case No. D2000-0323).
As mentioned earlier, the Panel is not limited to just the paragraph 4 (b) circumstances to determine whether the domain names were registered and used in bad faith. In the Panel's view there are two other factors supporting registration and use in bad faith by the Respondent. First, the Respondent's current holding of the domain names, in combination with having no legitimate rights or interests in the domain names and the likelihood of being aware of the TELSTRA reputation and trademark, can be interpreted as bad faith use for the purposes of paragraph 4 (a)(iii). Previous decisions support this approach: see, for example, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423.
Second, the act of registering a domain name without developing an active web site has been found to constitute bad faith. Cases involving such bad faith inaction include World Wrestling Federation Entertainment Inc.(WWFE) v.M.de Rooij, WIPO Case No. D2000-0290, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633. In these cases the disputed domain names had not been used for any legitimate purpose, in fact, the lack of legitimate, good faith use suggests bad faith.
In view of the above the Panel finds that the disputed domain names have been registered and are being used in bad faith.
In accordance with the Policy, Rules and prior authority the Panel has decided that the disputed domain names are confusingly similar to the Complainant's trademark, the Respondent has no rights or legitimate interests in respect of the domain names and the Respondent's domain names have been registered and are being used in bad faith. Accordingly, the Panel requires the Registrar to transfer the disputed domain names <e-telstra.org> and <e-telstra.net> to the Complainant.
Dated: September 9, 2002