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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telstra Corporation Limited v. Mr. Andy Kang
Case No. D2002-0832
1. The Parties
The Complainant is Telstra Corporation Limited ("Telstra"), Melbourne, Australia. Complainant is represented in this administrative proceeding by Mr Stephen Rebikoff and Mr. Cheng Lim, of Mallesons Stephen Jaques, Solicitors, Melbourne, Australia.
The Respondent is the Registrant, Mr. Andy Kang, Seoul, Republic of Korea.
2. The Domain Name and Registrar
The Domain Name subject to this Complaint is <pccw-telstra.net>.
The Registrar of the Domain Name is Network Solutions, Inc., ("NSI"), Dulles, United States of America.
3. Procedural History
3.1. The Complaint in respect of the disputed Domain Name was received by the World Intellectual Property Organization Arbitration and Mediation Center (the Center) by email on September 5, 2002, and in hard copy on September 10, 2002. Amendments to the Complaint concerning the name of the Registrar were received by email on September 12, 2002, and in hard copy on September 18, 2002. Complainant states that a copy of the Complaint with the prescribed cover sheet was transmitted to the Respondent by email to his address of registration, and that a copy was sent to the concerned Registrar by email.
3.2. On September 7, 2002, verification was sought by the Center and on September 18, 2002, was recorded as received from the Registrar, NSI, that the disputed Domain Name <pccw-telstra.net> is registered in the name of Andy Kang, Seoul, Korea. The Registrant is the same as the Administrative Contact, Technical Contact and Billing Contact. The language of the Service Agreement is English.
3.3. On September 12, 2002, the Center determined (and the Administrative Panel has subsequently accepted) that the Complaint as amended (hereafter, "Complaint") satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") approved by the Internet Corporation for Assigned Names and Numbers (ICANN), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), and that the appropriate fee has been paid.
3.4. On September 12, 2002, formal Notification of Complaint and Commencement of Administrative Proceeding was sent by the Center by post/courier (with enclosures) to the registered address of Respondent. Email copies without enclosures were sent to Respondent, copied to Complainant, ICANN and the Registrar.
3.5. On September 25, 2002, Respondent contacted the Center by email asking to communicate in Korean rather than English. The Center replied to the effect that the language of the registration agreement and therefore of this proceeding is English.
3.6. No formal Response was received from Respondent by the due date of October 2, 2002, and a Notification of Respondent Default was sent to the Parties on October 3, 2002.
3.7. On October 9, 2002, Dr. Clive Trotman, having provided the Center with a Statement of Acceptance and Declaration of Impartiality, was appointed as a single member Administrative Panel and notification was sent by email with attachments to Complainant, Respondent and the Administrative Panel. An electronic copy of the Case File was sent by email to the Administrative Panel on October 9, 2002, and the hardcopy of the Case File was sent by courier.
4. Factual Background
4.1. According to Complainant, Telstra is Australia’s leading telecommunications and information services company with a market capitalization of AU$70 billion and revenue in the financial year 2000-2001 exceeding AU$23 billion. The trademark TELSTRA, alone or in combination, is well known in Australia and internationally and has been registered in at least 30 countries including Korea. A Community Trademark has been registered. In 1999, The Wall Street Journal ranked Telstra in the top 50 of "The World’s 100 largest Public Companies" and Telstra ranked 62nd in Business Week’s 1999 Global 1000 of the world’s most valuable companies by market value.
4.2. In the past six financial years between AU$144 million and AU$164.1 per year at least has been spent on advertising and sponsorship of the TELSTRA trademarks in Australia and internationally. The tenor of Telstra advertising has made the company a well known household name and well known as offering solutions to commercial communications problems. Telstra's positioning of its name and profile has included sponsorship of Olympic teams, soccer, rugby, rallies, and individual athletes; business, arts and community projects including dance, ballet, festivals and museums; disability causes including blindness and deafness; and awards to small businesses and to women in business.
4.3. Telstra owns many Domain Names incorporating its trademark. Its principal website "www.telstra.com", to which "www.telstra.com.au" now resolves, includes electronic customer services, news, entertainment services and directories. Telstra’s websites received between 11 million and 22 million hits per month throughout 2000.
4.4. Telstra operates wholesale or retail businesses in at least 18 countries throughout the world including Korea, where Telstra Korea Ltd is a 100% subsidiary of Telstra Corporation Ltd.
4.5. Pacific Century CyberWorks ("PCCW"), registered in Hong Kong, is a leading Asian communications company. PCCW has 17,000 employees in 25 offices in 18 countries. Its strategic partners include Telstra, Intel, CMGI, Trans World International, EADS, Microsoft, Sun Microsystems and Legend Holdings. PCCW is very well known throughout Asia and operates Network of the World, a fully-converged TV-and-satellite Internet service, with a potential to reach more than 135 million cable television households under the AsiaSat3 footprint.
4.6. Telstra and PCCW announced their strategic Pan-Asian Alliance on April 13, 2000, with completion of their agreement taking place on February 7, 2001. The terms of the alliance have included various forms of joint ownership of companies. The alliance has been extensively publicized in all media including the Internet and particularly in Australia and Asia.
4.7. No significant facts are available about the Respondent's activities.
5. Parties’ Contentions
A. Contentions of Complainant
5.1. The contentions of Complainant include (paragraphs 5.2-5.7 below) that:
5.2. The dispute is properly within the scope of the Policy. The registration agreement, pursuant to which the Domain Name being the subject of this Complaint was registered, incorporates the Policy by reference.
5.3. The disputed Domain Name is confusingly similar to the trademark TELSTRA in which Complainant has rights, embodying that trademark and an acronym of its partner company PCCW. The name TELSTRA is an invented word with no other meaning than Complainant's trademark. The acronym PCCW has no meaning in the context except for being the distinctive initial letters of the company Pacific Century CyberWorks. Internet users would expect the disputed Domain Name to have some connection with Telstra, PCCW or their joint venture. Relevant precedent Domain Name disputes where the names PCCW and Telstra have been linked have been decided in favour of Telstra.
5.4. Respondent does not have and has not been granted by Complainant any rights or legitimate interests in the disputed Domain Name. Respondent has not been known by the Domain Name. The offering of the Domain Name for sale does not constitute a right or legitimate interest in the Domain Name.
5.5. Respondent’s registration and use of the Domain Name is in bad faith in the terms of the Policy and there is no evidence of any good faith registration or use. The Domain Name was registered on June 25, 2000, being about two months after the announcement of the alliance between PCCW and Telstra, and the Domain Name has been inactive since at least as early as November 2001. The passive holding of the Domain Name is in a manner constituting bad faith use. Telstra’s use of its trademark predates the registration of the Domain Name by at least 6 years. Respondent knew or ought to have known of Complainant's trademark, which is so well known that its unauthorized use constitutes trading off Telstra's rights.
5.6. Respondent has held the Domain Name with the intention of selling it at a price in excess of the costs of registration. Respondent's reply to a first cease and desist communication should be interpreted as an inducement to Complainant to negotiate a deal profitable to Respondent. A second communication from Complainant offering a refund of out of pocket costs of registration in return for transfer was not replied to by Respondent. Respondent's conduct in general and as a whole constitutes bad faith within the terms of the Policy.
5.7. The remedy requested by Complainant is that the disputed Domain Name <pccw-telstra.net> be transferred to Complainant or cancelled.
B. Contentions of Respondent
5.8. No Response has been received from Respondent. An email communication regarding language is referred to in 3.5 above and 6.3 - 6.5 below.
6. Discussion and Findings
Jurisdiction of Administrative Panel
6.1. Paragraph 4(a) of the Uniform Policy states:
"You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith."
6.2. Complainant has made the relevant assertions as in 6.1 above. The dispute is properly within the scope of the Uniform Domain Name Dispute Resolution Policy and the Administrative Panel has jurisdiction to decide the dispute.
6.3. In an email dated September 25, 2002, addressed to the Case Manager at the Center, Respondent said in effect that he was not a native English speaker and that his language was Korean. The Center replied drawing the attention of the Respondent 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."
6.4. The Panel noted among other things that (a) the language of the Registration Agreement accepted by Respondent was English; (b) Respondent's email of September 25, 2002, to the Center was partly in English; (c) Respondent wrote in colloquial English expressing his terms in reply to Complainant's cease and desist communication, which was in English.
6.5. The Panel, having regard to all the circumstances, found no reason for this proceeding to depart from the language of the Registration Agreement, namely English.
Whether the Domain Name is Identical or Confusingly Similar to a Trademark
6.6. The disputed Domain Name subject to this Complaint is <pccw-telstra.net>. The disputed Domain Name incorporates Complainant's trademark TELSTRA in its entirety.
6.7. The principle is well established in precedent cases that the adaptation of a recognized trademark by the incorporation of other letters or words in the construction of a Domain Name does not avoid a finding of confusing similarity. A number of such precedents have dealt specifically with combinations incorporating the trademark TELSTRA together with the acronym PCCW (Telstra Corporation Limited v. Mr. Jeon, WIPO Case No. D2001-1161; Telstra Corporation Limited v. Domain-Broker Labs, WIPO Case No. D2000-1789; Telstra Corporation Limited v. Jinseok Yang/JYT112, WIPO Case No. D2001-0800). The Panel finds the disputed Domain Name <pccw-telstra.net> to be confusingly similar to Complainant's trademark TELSTRA in the terms of Paragraph 4(a)(i) of the Policy.
Whether Respondent Has Rights or Legitimate Interests in Respect of the Domain Name
6.8. The Complainant must prove that the Respondent does not have rights or legitimate interests in respect of the Domain Name. Complainant certifies that it has not licensed, authorized or permitted Respondent to use Complainant's trademark TELSTRA for any purpose. Furthermore the word TELSTRA is a distinctive and invented trademark that Respondent does not and cannot claim any right to use. The trademark TELSTRA is well protected internationally including in the Republic of Korea where it was lodged in 1993 and where the registration remains in force. A prima facie case has been established in the terms of Paragraph 4(a)(ii) of the Policy.
6.9. The Respondent has not denied the Complaint. In the terms of Paragraph 4(c) of the Policy there is no evidence to the effect that Respondent has used the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or has as an individual, business, or other organization been commonly known by the Domain Name; or has made a legitimate noncommercial or fair use of the Domain Name.
6.10. The Panel finds that Respondent has no rights or legitimate interests in the disputed Domain Name in terms of Paragraph 4(a)(ii) of the Policy.
Whether the Domain Name Has Been Registered and Is Being Used in Bad Faith
6.11. Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides illustrative circumstances whereby bad faith may be established. Complainant relies in large part on Paragraph 4(b)(i):
"circumstances indicating that you [Respondent] 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 documented out-of-pocket costs directly related to the domain name;"
6.12. Complainant provides evidence of having sent a cease and desist communication to Respondent who eventually replied by email in the following terms:
"Dear [Complainant's representative]
This is a current domain holder of <pccw-telstra.net>
I've recently received your advice in terms of transferring the domain to Telstra.
Regarding the domain <pccw-telstra.net>, I’ve never used it nor I won’t use it in the future as commercial and never affected the reputation of PCCW and Telstra company since I have it.
If you or you client are interested in having this domain, you’d better consider how much cost caused me to have and hold it. I’d like to tell you that I’m interested in transferring this domain to you or your client if they want, with proper compensation.
I'm looking forward to hearing your response.
6.13. Complainant submits that Respondent's email (6.12 above) contains clear evidence of a primary purpose of intending to sell the Domain Name at a profit. Complainant draws parallels with broadly similar correspondence quoted in precedent cases decided in Complainant's favour. Considering Respondent's email in isolation, its tone is debatable. For instance, "you’d better" might or might not be an aggressive stance. Reference to the cost incurred "to have and hold it" may or may not presage the familiar implications of added value. Respondent's notion of "proper compensation" may or may not concur with Paragraph 4(b)(i) of the Policy.
6.14. On a wider interpretation of all the evidence, including Respondent's email, bad faith is established. Respondent's reply to the effect that "I’ve never used it nor I won’t use it in the future as commercial" amounts to an admission Respondent has held and is holding the Domain Name passively, which, on the facts of the present case, constitutes the element of use required by Paragraph 4(a)(iii) of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Respondent confirms an interest in transferring the Domain Name to Complainant, and Respondent's conduct and communications project an intention to profit from the transaction. Complainant has established the elements of Paragraph 4(b)(i) that support a finding of bad faith in the terms of Paragraph 4(a)(iii) of the Policy.
6.15. The circumstances illustrated in Paragraphs 4(b)(i) - (iv) of the Policy are without limitation and bad faith may be found alternatively. Respondent's action in registering a combination of PCCW and TELSTRA as a Domain Name within three months of the announcement of the alliance between those two companies leaves no scope to doubt that Respondent had knowledge of Complainant's trademark, which at the time was registered in Korea and internationally. Appropriation of a well known trademark of which Respondent had actual or constructive knowledge can be in itself sufficient to amount to bad faith registration (Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). Bad faith use through passive holding has already been found (6.14 above). Respondent's failure to reply to Complainant's second cease and desist communication is an aggravating circumstance (Ebay, Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632). The Panel finds bad faith registration and use proven in the general terms of Paragraph 4(a)(iii) of the Policy.
6.16. In summary, as concluded in 6.7 above the disputed Domain Name is confusingly similar to Complainant's trademark and Complainant succeeds under Paragraph 4(a)(i) of the Policy. As concluded in 6.10 above, Respondent has no rights or legitimate interests in the Domain Name and Complainant succeeds under Paragraph 4(a)(ii) of the Policy. As concluded in 6.14 and 6.15 above, Respondent has registered and is using the Domain Name in bad faith and Complainant succeeds under Paragraph 4(a)(iii) of the Policy. The Complainant has proven the elements required by Paragraph 4(a) of the Uniform Policy and the Administrative Panel decides for the Complainant.
The Decision of the Administrative Panel is that the disputed Domain Name <pccw-telstra.net> is confusingly similar to the trademark TELSTRA in which Complainant has rights; Respondent has no rights or legitimate interests in the disputed Domain Name; and Respondent has registered and is using the disputed Domain Name in bad faith. The Domain Name <pccw-telstra.net> shall be transferred to the Complainant.
Dr. Clive N. A. Trotman
Dated: October 23, 2002