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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TELUS Corporation v. Telus VoiP Inc

Case No. D2007-0398

 

1. The Parties

The Complainant is TELUS Corporation, Edmonton, Alberta, Canada, represented by an internal representative.

The Respondent is Telus VoiP Inc, Alexandre (Andre) Gratton, Toronto, Ontario, Canada.

2. The Domain Name and Registrar

The disputed domain name <telus-voip.com> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2007. On March 16, 2007, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On March 19, 2007, eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 2, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2007.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on May 8, 2007. 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 leading Canadian telecommunications company, which has been in operation for over 15 years. The Complainant’s business earns $8.5 billion in annual revenue, with 10.5 million customer connections, including 4.9 million wireless subscribers, 4.6 million wireline network access lines and 1.1 million Internet subscribers. The Complainant’s business provides a wide range of communications products and services including data, internet protocol (IP), voice, entertainment and video.

The Complainant owns numerous trademark registrations in Canada and the United States of America for the word “Telus” in connection with telecommunication services. The Complainant also owns registrations or has applied for an additional 150 trademarks or service marks that contain the word “Telus”.

The Complainant owns and operates a website at “www.telus.com”.

The Complainant also owns and operates a number of divisions and subsidiaries using the “Telus” prefix as part of their business name, such as TELUS Communications, TELUS Quebec, TELUS Mobility and TELUS International. The Complainant’s business is listed on both the New York Stock Exchange and the Toronto Stock Exchange.

The Respondent registered the <telus-voip.com> domain name on December 7, 2006. At the date of the Complaint, the domain name resolved to a parked site.

 

5. Parties’ Contentions

A. Complainant

(a) Identical or Confusingly Similar

The Complainant contends that the domain name <telus-voip.com> is confusingly similar to the Complainant’s TELUS trademark.

(b) Rights or Legitimate Interests

The Complainant contends that the trademark TELUS is a well-known trademark both in Canada and the United States of America. The TELUS trademark has been used by the Complainant for over 15 years in connection with millions of customers in Canada and accordingly, those customers readily recognize that the TELUS trademark is connected with the Complainant’s business. The Complainant contends that the TELUS trademark is particularly well-known in Toronto, the location of the Respondent, and that the Respondent was fully aware of the Complainant and its rights in the TELUS trademark. The Complainant contends that the Respondent registered the domain name <telus-voip.com> 16 years after the Complainant began using the TELUS trademark. The Complainant submits that the Respondent’s domain name initially reverted to an active website that duplicated the design, layout, organization, color scheme, and visual elements of the Complainant’s website. The Complainant further submits that after an e-mail exchange with the Respondent, the Respondent removed the website content and the domain name now resolves to a parked site. The Complainant contends that the Respondent’s previous use and current use of the domain name does not establish a legitimate right or interest in the domain name. The Complainant further submits that the Respondent has advised it has no plans to use the domain name in connection with a bona fide offering of goods and services. The Complainant submits that the Respondent, as an individual, business or other organization, has never been commonly known by the TELUS trademark. The Complainant also submits that it has never authorized the Respondent as a dealer, distributor or licensee of the Complainant.

(c) Registered and Used in Bad Faith

The Complainant contends that the domain name <telus-voip.com> was registered and is being used in bad faith based on the following factors: (i) the knowledge of the Complainant’s long and continuous use of the TELUS trademark at the time of registration; (ii) the registration of a confusingly similar domain name to the Complainant’s trademark; (iii) the Respondent registered the domain name for the purpose of preventing the Complainant from obtaining the domain name; (iv) the Respondent’s use of confusingly similar website content to the Complainant’s website; and (v) the Respondent’s offer to sell the domain name for the purpose of monetary gain.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The Domain Name is identical or confusingly similar to the trademark 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 Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established its rights in the TELUS trademark, by virtue of the U.S. and Canadian trademark registrations.

The Complainant has submitted that the word “Voip” is an acronym which stands for “Voice Over Internet Protocol”, a “protocol for transmitting the human voice in digital form over the Internet or other networks as an audio stream, instead of using traditional telephone lines.” This type of Internet Protocol is not limited to communication by computer, but rather phone to phone communication can also be conducted by this technology. The Complainant has further stated that as an Internet services provider, it has provided Voice Over Internet Protocol (“Voip”) to Canadian consumers since at least as early as 2003. The Respondent did not file any evidence disputing that the term “Voip” is an acronym for a particular type of techonology relating to telecommunications, and accordingly, the Panel is prepared to accept that the term “Voip” is a descriptive term in the field of internet protocol and voice over communications.

The Panel concludes that the domain name is a combination of a dominant first element “Telus”, which is identical to the Complainant’s trademark and a second element “Voip”, which is a descriptive term related to one of the Complainant’s services. As such, the domain name is confusingly similar to the Complainant’s TELUS trademark. The addition of a descriptive technical term does not serve to distinguish the domain name from the Complainant’s trademark in any meaningful way. (See Harrods Limited v. Vision Exact, WIPO Case No. D2003-0723; United States Olympic Committee v. MIC, WIPO Case No. D2000-0189; and Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a, For Sale, WIPO Case No. D2000-0662).

Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel finds no evidence that the Respondent ever had any right or legitimate interest in the <telus-voip.com> domain name. The Respondent does not appear to have ever been commonly known by the disputed domain name and is not using the domain name in connection with a bona fide offering of goods and services.

The Panel finds that the Complainant’s trademark TELUS is well-known in Canada and in the absence of any evidence to the contrary from the Respondent, finds it difficult to believe that the Respondent was unaware of the Complainant’s rights in the TELUS trademark when the Respondent registered the subject domain name.

The Panel accepts that the Complainant never authorized, licensed or permitted the Respondent to use its TELUS trademark.

The Respondent in the e-mail correspondence (submitted in the Complainant’s evidence) states that it has no intention to use the domain name in connection with a bona fide offering of goods and services, and will hold the domain name until it can sell the name to another entity.

The Panel is therefore, satisfied that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interest in the dispute domain name. Once a complainant has made this prima facie showing, the respondent must come forward with evidence that rebuts this presumption (Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270).

As the Respondent has not filed any evidence in response, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The uncontested evidence shows that the Complainant’s trademark TELUS is distinctive of the Complainant and has been widely known for more than 15 years. In the circumstances, the Panel is prepared to infer that the Respondent had actual knowledge of the Complainant’s trademark rights when it registered the <telus-voip.com> domain name, and that it intended to trade on the Complainant’s reputation and goodwill in its mark.

The Panel also places emphasis on the following facts, all of which support a finding of registration and use in bad faith: (i) the Respondent’s use of the domain name in connection with a website that resembled many of the features of the Complainant’s website, such as design, color scheme, organization; (ii) after the Complainant put the Respondent on notice of its objection to the website, the Respondent removed the content and arranged for the domain name to resolve to a parked site; (iii) the Respondent clearly states in that correspondence that the Respondent does not intend to use the domain name, but rather intends to sell the domain name to another entity.

For these reasons, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <telus-voip.com> be transferred to the Complainant.


Christopher J. Pibus
Sole Panelist

Date: May 21, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-0398.html

 

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