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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TELSTRA CORPORATION LIMITED V BARRY CHENG KWOK CHU
Case No. D2000-0423
1. The Parties
The Complainant is Telstra Corporation Limited, a company incorporated in Australia and having its principal place of business at 38/242 Exhibition Street, Melbourne, Victoria, 3000, Australia.
The Respondent is Barry Cheng Kwok Chu, an individual having an address of 7 Marong Crescent, Forest Gardens, Forest Hill, Victoria, 3131, Australia.
2. The Domain Name and Registrar
The domain name at issue is:
The Registrar with which the domain name is registered is Network Solutions, Inc., of 505 Huntmar Park Drive, Herndon, Virginia, 20170, USA.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on May 12, 2000, and the signed original together with four copies was received on May 15, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant on May 15, 2000.
On May 15, 2000, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain names at in issue were registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain names; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es) available in the Registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
On May 16, 2000, NSI confirmed by reply e-mail that the domain name <telstrashop.com> is registered with NSI, is currently in active status, and that the Respondent, Barry Cheng Kwok Chu, is the current registrant of the name. The Registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a single member Panel were paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on May 17, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of June 5, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSI’s confirmation. In addition, the Complaint was sent by courier to the postal address given.
On June 6, 2000, WIPO received a Response.
On June 9, 2000, in view of the Respondent’s election of a single member panel, WIPO Center appointed John Terry to serve as sole Panelist.
On June 9, 2000, the WIPO Center notified the parties that John Terry had been appointed as the Panel and set the projected decision date as June 22, 2000.
4. Factual Background
The present Domain Name was registered on June 25, 1999.
The certified Complaint states that the Complainant is one of the largest public listed companies in Australia with 50.1% of the issued stock owned by the Australian Federal Government and the balance with a market capitalisation of about A$60 billion is held by investors with Revenue exceeded A$80 billion in the financial year 1998 to 1999. The Complainant adopted the domestic trading name "Telstra", has consistently used that name since 1 July 1995 and has continued a telecommunications business which previously was conducted by its government owned predecessors with the monopoly in the telecommunications field.
The Complainant certifies it has been using the trade mark "TELSTRA SHOP" for retail outlets since early 1994 and there are currently around 100 such outlets across Australia carrying a range of products including "Telstra®-branded communications equipment, mobile phones, computer software and hardware". Furthermore, these outlets provide facilities to the customer to pay telephone bills and arrange connection to the Complainant’s "MobileNet®" mobile telecommunications service and the Complainant’s "Telstra BigPond®" Internet service. The Complainant sets out an extensive summary of its business in relation to which "Telstra" has been used in addition to particularising the extent to which it has promoted and used the name and trade mark "TELSTRA SHOP".
The Complainant proved that "TELSTRA SHOP" has been registered in Australia to the Complainant since 1994 and annexes to the Complaint particulars of its portfolio of Australian trade marks which includes some 60 marks comprising or containing word "TELSTRA", the registrations extending over some 17 of the 42 international trade mark classes and many of the registrations being in class 38 in respect of telecommunications services.
The Complaint includes summary of registrations and trade mark applications which are pending for marks containing or being the word "TELSTRA" in an extensive list of countries including Europe, China, South East Asian countries, Pacific nations and USA.
The Complainant filed evidence of market research to demonstrate an extremely high level of consumer recognition of the "TELSTRA" brand and a certified average minimum expenditure on promotion and advertising of approximately $200 million per annum.
The Complainant certifies it is the owner of several domain names containing the words "TELSTRA" namely:
- <telstra-inc.com>; and
The Respondent takes no issue generally with the facts asserted insofar as they are summarised above and confines himself to contentions as to interpretation of facts and makes assertions as to the lack of reputation of the Complainant and the names "TELSTRA" and "TELSTRA SHOP" outside Australia. However, the Complaint shows that 7% of the equity of the Complainant is in foreign private hands, a prominent stock market position is held by the Complainant, under its name "Telstra", and the Complainant has been a major sponsor of many events which may have received exposure outside Australia, such as the Telstra Sydney to Hobart yacht race.
The Respondent states that he has registered in his name the business name "TELSTRA SHOP" (sic) in Hong Kong for the period August 10, 1999 to August 9, 2000 in both "English and Chinese characters". However Annexure A, a copy of the Business Name Registration Certificate has first the word "TELSTRA" adjacent to three Chinese characters. No evidence is given as to what rights, if any, are acquired by such a business name registration in Hong Kong. The Respondent does not provide any evidence of actual use of the domain name in question or the requirements for registration of a business name in Hong Kong but his certified Response states that he chose the domain name and business name "TELSTRA SHOP" (sic) not because of any association of those names with the Complainant, but because the phonetic pronunciation of this name in English "most closely corresponds with pronunciation of the Chinese characters that represent the name of his business in Chinese". He further asserts that he chose the business name and domain name in relation to a proposed advertising consultancy business and that the Chinese characters chosen are, in the order they appear on the Business Name Registration Certificate, characters which mean:
"(China and particular the Tang Dynasty);
to be ‘scholarly’ holding some ‘expertise’ in a particular field;
to be ‘capable’ or to have a special ‘capability’."
5. Parties’ Contentions
Firstly, the Complainant contends the Domain Name "telstrashop" was identical with or confusingly similar to the Complainant’s trade marks containing the word "Telstra" and in particular its Australian trade mark "Telstra Shop".
Secondly, the Complainant contends that "Telstra" is an invented or coined word, is not licensed to the Respondent and in the circumstances, the Respondent has not legitimately traded and nor could it do so in the future under the name "Telstra" or "Telstrashop" and accordingly the Respondent has no rights or legitimate interests in respect of the Domain Name.
Thirdly, the Complainant contends the Respondent satisfy the requirement of paragraph 4(a)(iii) of the Policy namely that the Domain Name has been registered and is being used in "bad faith".
Fourthly, the Complainant contends that the Domain Name should be transferred to the Complainant.
The Respondent denies that the provisions of paragraph 4(a) of the Policy are made out and in particularly denies that the Domain Name will cause confusion with the Complainant’s trade mark, denies the allegation that the Respondent has no legitimate interests in the Domain Name and denies the Domain Name is being used in bad faith (see paragraph 3 of the Response) but there is no express pleading that denies the allegation that the Domain Name has been registered in bad faith.
6. Discussion and Findings
WIPO received the Response June 6, 2000, one day after the deadline for a response of June 5, 2000. By email on that day WIPO informed the parties’ representatives of this fact and pointed out that the WIPO Centre calculates time deadlines by including the day in question and weekends in the day count and stated that "any weight to be given to the lateness" of the Response is solely in the discretion of the Panelist. The Panel determines that in all the circumstances and in the absence of any submissions by either party, it is appropriate to extend the time for receipt of a Response to June 6, 2000.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." This dispute concerns activities over a range of countries. The Complaint contains a nomination of the place of location of the Respondent, namely the State of Victoria, Australia as the jurisdiction to which any challenge to the Administrative Panel decision may be made. The Complainant does make submissions relying on certain Australian Court decisions and statutes but the Respondent has made no submissions as to the applicable laws of any particular jurisdiction. The Panel must therefore decide this matter and where appropriate holds it proper to apply principles derived from Australian case law and statutory law.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
- that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
- that the Respondent has no rights or legitimate interests in respect of the domain name; and,
- the domain name has been registered and used in bad faith.
The Panel holds that a Domain Name containing <telstrashop> in the context of domain name issues is identical to the Australian registered trade mark of the Complainant "Telstra Shop", it being immaterial that the words be separate in the trade mark; such separation must be removed in domain name use. The fact that the Respondent appears to have the intention of using the Domain Name in relation to a business to be centred on Hong Kong is held to be immaterial because of the persuasive international character of use of domain names and that it is quite invisible to the user as to the location of an entity or a business for delivery of goods and services which plainly could be delivered anywhere including delivery into Australia.
Further, the Panel holds that the Domain Name <telstrashop.com> is confusingly similar to the Complainant’s extensive portfolio of trade marks containing or comprising the word "Telstra" which the evidence shows has been registered on an extensive international scale. Furthermore, the reputation of the trade mark "Telstra" is clearly established to be extensive and the mark is well known at least in Australia.
The requirements of paragraph 4(a)(i) of the Policy are held to be met.
Regarding subparagraph 4(a)(ii) of the Policy, it is firstly relevant to consider whether the non-limiting examples of paragraph 4(c) are met.
Paragraph 4(c) of the Policy sets out three non-limiting examples of circumstances; if any one of the examples is established to the satisfaction of the Panel by the Respondent, then a Complainant’s assertion that the domain name owner has no rights or legitimate interests in respect of the domain name is rebutted.
The Panel holds that none of the exemplary circumstances are made out by the Respondent.
The Respondent has demonstrated that he registered the business name "TELSTRA" (but not TELSTRA SHOP) and some Chinese characters in Hong Kong for the period August 10, 1999 to August 9, 2000 and now has a webpage under construction in view of his intention to base a business in Hong Kong, a place to which he says he travels "often" and the business will be that of an advertising consultant.
The Respondent will have rebutted the Complaint if he can show under paragraph 4(c)(i) that, before any notice to him of the dispute, use or demonstrable preparation to use the Domain Name or a name corresponding to the Domain Name in connection with the bona fide offering of goods or services.
Annexure L to the Complaint is a copy of an email in reply to the solicitors representing the Complainant from the email address "email@example.com" dated 29 February 2000; this is the email contact given as the billing contact for the Domain Name with NSI. The email states:
"I understand Telstrashop is an Australia company. Therefore, I ever (sic) use that name in Australia. I still didn’t design (sic) what should I do with this domain name. I will go back Hong Kong soon. I am not sure I will use the name over there or not!"
There is no evidence as to the significance of or requirements for obtaining a Hong Kong business name registration. The Respondent has had opportunity to adduce any relevant evidence, but has not done so. The Panel holds that there has been no use or demonstrated preparation for use by the Respondent before Notice of Dispute and the Respondent had in his mind no more than a possibility of developing a business based in Hong Kong. The Panel holds that under clause (i) the Respondent has not made out a case. Furthermore, even if the Respondent had demonstrated appropriate preparation for use, the Respondent would have to establish that there was a proposed "bona fide" use, and for the reasons set out below the Panel is not satisfied the Respondent has the requisite bona fide status.
The Respondent’s contentions are essentially that the Complainant has a reputation confined to Australia and that he is an employee of "Cybus Computers", Annexure K to the Complaint being a photocopy of a business card of "Barry Cheng" associating with the business which relates to "computers, internet, networking, web design and mobile phone". According to this business card the business is also a One.tel and One.net authorised dealer, entities which the Complainant states are competitors of the Complainant. The essence of the case of the Respondent is that his intentions were never to do anything which would mislead or deceive anybody in Australia and that his proposed consultancy in Hong Kong would be not be in breach of any rights of the Complainant in Hong Kong. The Respondent’s case, however, does not address the question that domain names are often used internationally and that an Australian resident effecting an inquiry based on "telstrashop" could be led to any website to which the Respondent’s domain name may resolve on the future.
The Panel holds that proposed used within the terms of clause (i) does not become "bona fide" merely because of an intention to offer goods or services from a business having a website to which the Domain Name resolves where the business may be located in a territory where the Complainant may have little or no reputation and outside a territory in which the Complainant has established a substantial reputation. All the surrounding circumstances should be considered.
The Respondent heavily bases his case on the contention that firstly he is intending to operate an advertising consultancy business which differs from the business of the Complainant and secondly, that he adopted "telstrashop" because the phonetic pronunciation of this name in English most closely corresponds with the pronunciation of the Chinese characters referred to in the factual background above.
The Respondent has not chosen to lead any evidence from an expert as to the range of options in producing in English words which are phonetic equivalents to the Chinese words and the procedure for the present matter does not provide for evidence in response by the Complainant. The certified Response merely states that the name in English "most closely corresponds" and this indicates that other spellings would legitimately correspond. Apart from the assertion of phonetic equivalence, the Respondent gives no justification for including the generic word "shop" which plainly is totally descriptive for use in indicating an outlet for goods or services. Taken in conjunction with the fact that the Respondent has an Australian address and states he is an employee of an Australian company in the computer and telecommunications field and must have full well known of the extensive reputation of the Complainant and its trade mark, the Panel does not accept that the intended use of the Domain Name is shown by the Respondent "bona fide" within the meaning of clause (i) and the onus on the Respondent to establish that defence is not made out.
Furthermore, the Panel finds the assertion by the Respondent not convincing because he is inconsistent in claiming his words "telstrashop" are phonetic for a business name which on his own evidence in English is just "TELSTRA" and fails to address the obvious capacity to present the Chinese characters in other English syllables. He does not address the question of "shop" in English and does not lead credible evidence whether this is equivalent to part of the Chinese characters. The Respondent does not offer any evidence such as survey evidence as to whether when presented in English with the expression "Telstra" or "Telstra Shop" persons of Chinese ethnicity would recognise from phonetics any particular meaning in Chinese or would translate the phonetic "Telstra Shop" into anything like the Chinese characters of the Hong Kong business name registration of the Respondent. The absence of such evidence when the Respondent has that opportunity to adduce such evidence, leads to the inference that no such evidence is available in fact and the Panel decides this matter on the basis that the Domain Name "Telstra Shop" would not be recognised as such to a person of Chinese ethnicity as having the meaning asserted by the Respondent. The absence of any corroborative evidence or even dictionary extracts to show phonetic presentation leads the Panel to hold the Respondent has not discharged the onus of rebutting the prima facie case of the Complainant.
This decision does not rely upon recourse to extrinsic aids to interpretation of evidence such as review of dictionaries. However, the Panel does note that further support for the findings is available from an English-Chinese dictionary which the Panel has consulted and that dictionary does not support the contentions of the Respondent and shows that other phonetics primarily correspond with the Chinese characters to which the Respondent has referred in his evidence and contained in his Hong Kong business name registration.
Clause (ii) does not apply as the Respondent does not assert he has been commonly known by the domain name.
As to clause (iii), neither party and in particular the Respondent has made any legal submissions as to the applicability of clause (iii), but through his legal advisers relies on a good faith argument due to intended geographical location of the Respondent’s proposed business and relies on the Domain Name closely corresponding with the pronunciation of Chinese characters.
Clause (iii) applies if the Respondent can establish he is making "a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue". The Panel finds clause (iii) has some difficulties of interpretation and in the absence of legal submission by either party, the Panel construes clause (iii) to the effect that the Respondent must establish:
- his use is legitimate non-commercial or fair use of the domain name. It is not enough under this requirement for the Respondent simply to show there is fair use of a trademark, e.g. in a website, but the Respondent must satisfy the Panel there is either legitimate non-commercial use or legitimate fair use of the domain name itself; and
- his use is without intent for commercial gain; and
- his use is without intent to misleadingly divert consumers; and
- his use is without intent to tarnish the trademark or service mark at issue.
On this construction, the Panel holds there is currently no use of the Domain Name by the Respondent and for that reason alone, he fails to establish the ground. Clause (iii) clearly refers to the present tense of "making … a fair use" and this contrasts with clause (i) which refers to "use" or "demonstrable preparations to use". Furthermore, even if it were held, that steps towards use were enough, the Respondent fails to establish himself under clause (iii) because his intentions for use are for an advertising consultancy, i.e., for commercial gain.
Even if the finding in the previous paragraph were reversed, the Panel would hold that the Respondent has not made any use of the Domain Name except in the narrow sense of holding it in an inactive manner and the Panel holds in any event that for the reasons stated above that the Respondent has not discharged the onus of showing that his conduct is "fair use".
The Panel holds that the Respondent has not made out a case in terms of any one of clauses (i), (ii) or (iii) of paragraph 4(c). However, this is not the end of the matter, as the Respondent would establish his case if he could otherwise show, rights or legitimate interests in respect of the Domain Name.
The Panel holds that the Respondent has not established any such rights or legitimate interests and by contrast the Complainant has established a prima facie case by virtue of its registrations and reputation as pleaded.
The third element that the Complainant must prove is that the Domain Name has been registered and is being used in bad faith. Dealing first with the issue of "use in bad faith" the Panel holds that this requirement is not limited to positive action, and with respect adopts the reasoning in the Panel decision in Telstra Corporation Limited v Nuclear Marshmallows case D2000-003 (the "Telstra.org decision"). In that decision, the Panel stated:
"… inaction is within the concept. That is to say, it is possible, in certain circumstances for inactivity by the Respondent to amount to the domain name being used in bad faith … The question that then arises is what circumstances of the inaction (passive holding) … can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case."
Thus, the Panel holds that the positioning of the Respondent in the manner given in evidence may fall within the concept of the Domain Name "being used" and the question of "bad faith" must be examined.
The "Telstra.org" decision was a case where an Australian resident had registered but done nothing further with the domain name <telstra.org>. The Domain Name owner did not file any response. The Panel stated:
"… given the Complainant’s numerous trade mark registrations for, and its wide reputation in, the word TELSTRA, … it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name <telstra.org>. It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration. These findings, together with the finding … that the Respondent has no rights or interests in the domain name, leave the Administrative Panel to conclude that the domain name <telstra.org> has been registered by the Respondent in bad faith."
The case put by the present Complainant would justify the Panel finding "bad faith" for similar reasoning without undue difficulty but for the present Response which requires careful analysis and raises difficult issues.
In the present matter, it is firstly convenient to consider whether the exemplary and non-exhaustive circumstances of registration and use in bad faith set out in paragraph 4(b) of the policy are found; if found then the Complainant is deemed to have made out its case under clause 4(a)(iii).
There is no evidence that clause (i) applies ie that the Domain Name was registered primarily for the purpose of selling the Domain Name for a profit. The Complainant is suspicious that the Respondent had that intent but none has been proven and, in any event, any prima facie pleading on such a clause is rebutted by the Respondent.
Clause (ii) is not made out since that requires proof that the Respondent has engaged in a pattern of conduct in which the Domain Name is registered to prevent the trade mark owner from reflecting the mark in a corresponding Domain Name. No assertion has been made.
Clause (iii) applies where the Complainant establishes that the Domain Name was registered "primarily for the purpose of disrupting the business of a competitor". The Complaint argues that in all the circumstances "it is fair to assume that the Respondent has acquired the Domain Name for one of the following purposes:
… to disrupt the business of the Respondent."
While in the absence of an adequate rebuttal, the evidence led by the Complainant might make it reasonable to draw the inference contended for, there is a Response certified by the legal representative of the Respondent contending other purposes and it is beyond the scope of the present dispute resolution procedure for such issues to be explored further. The Panel finds that the Complainant has not made out a case in terms of clause (iii).
Clause (iv) requires the Complainant to prove that, shortly stated, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his website or of a product or service on his website.
To date, the Respondent does not have a website, but the Panel holds that for the purpose of clause (iv) it is legitimate to consider hypothetically the effect of use in the manner foreshadowed by the Respondent. The critical issue is whether the attraction to a website of the Respondent would be attraction by creating a likelihood of confusion with the Complainant’s mark.
In the present case, it is well established that the Complainant’s mark TELSTRA is famous and must be judged as extremely well-known in Australia. It is beyond the scope of this matter to determine whether the use of the Domain Name <telstrashop.com> to an Australian resident would be a registered trade mark infringement and what would be the burden of proof of a trade mark owner in showing relevant activity in the Australian jurisdiction to establish infringement. However, it is noteworthy that the Australian Trade Marks Act 1995 Section 120 provides for trade mark infringement firstly where a mark is used without authority and is substantially identical with or deceptively similar to the registered trade mark in respect of the goods or services for which the trade mark is registered. Secondly, infringement arises in respect of use, shortly stated, on closely related goods or services unless the Respondent can show that the use was not likely to deceive or cause confusion. Thirdly, infringement of a trade mark well-known in Australia arises where a substantially identical or deceptively similar mark is used without authority on unrelated goods or services to those which the mark is registered when use of the mark would be likely to be taken as indicating a connection with the unrelated goods or services and the registered trade mark owner and the interests of the registered trade mark owner are likely to be adversely affected.
Had the Respondent been using or proposing to use the Domain Name in the Australian jurisdiction for the services of an advertising consultancy, then it is difficult to see how use by the Respondent would be other than indicating prima facie a connection with the present Complainant and, as a consequence, the interests of the Complainant plainly would be adversely affected, at least due to dilution or its famous, coined or invented trade mark. In fact, the Respondent does not contend otherwise but frames his case in terms of a proposed Hong Kong location of the business. The Respondent contends that his website will contain appropriate material so that any visitor would not take the business to be associated with the Complainant; however, this is a speculative and if the Respondent retains the Domain Name, there would be no compunction by virtue of the present proceedings on him to honour any such assurance. However, the Internet system and in particular domain names registered in the <.com> form by NSI do not have any particular location, but are pervasive and can be accessed worldwide. Clause (iv) does not define the likelihood of confusion as to be related to any particular political jurisdiction and the likelihood of confusion somewhere in the view of the Panel is sufficient for the purposes of clause (iv) providing all other elements are found. However, clause (iv) requires proof that the Domain Name owner has "intentionally attempted to attract … internet users … by creating a likelihood of confusion". The Respondent denies such an intention and offers an alternative reason. The present dispute resolution procedure does not permit the testing out of this evidence and the Panel holds that the Complainant has not made out its case under clause (iv).
Notwithstanding that the Complainant has not made out its case under the examples of paragraph 4(b) of "bad faith" nevertheless the fundamental test is whether the Complainant has made out a case that the Respondent’s Domain Name has been registered and is being used in bad faith. The Policy does not define "bad faith" and the Panel is not aware of any prior decisions which establish a test and neither have the parties to this matter made legal submissions on the point.
The Complainant contends that any use by the Respondent of the Domain Name in Hong Kong is likely, inter alia, to infringe Telstra’s registered trade marks in Hong Kong where "Telstra" is registered in class 38 for telecommunications. However, the Complaint does not draw attention to any other Hong Kong registrations e.g. covering advertising consultancy services and neither is any evidence given of Hong Kong law, e.g. to show any equivalent of Section 120 of the Australian Trade Marks Act 1995. Further, the Complaint does not include any particulars by which the degree of reputation of the Complainant in its mark "Telstra" in Hong Kong might subsist. Accordingly, the Panel cannot give any weight to the assertion of likelihood of trade mark infringement in Hong Kong.
The Complainant makes extensive contentions that any use of the Domain Name by the Respondent would in Australia result in passing off, trade mark infringement and breach of Australian consumer protection legislation. Therefore the Complainant’s case, outside the scope of clauses 4(b)(i) to (iv) but under the general provision paragraph 4(a)(iii), i.e. the general notion of use in bad faith, must reduce to the proposition that:
(a) at least for a trade mark proven to be famous or well-known in one economically significant country, i.e. Australia in this case,
(b) where the nature of the Complainant’s business is inherently of or susceptible to being of an international character, and
(c) where the Complainant has made proper substantial steps towards protecting its trade marks with a view to conducting business in many other jurisdictions, then
(d) in the relevant sense, bad faith is prima facie proven against a Respondent who asserts an intention to use the trade mark to characterise a domain name.
In this case, the Complainant appears further to rely upon the Respondent having a place of residence in Australia and admitting to an employment position in Australia in the industry in which the Complainant trades.
In all these circumstances and for the reasons stated above relating to finding that the Respondent had not demonstrated any rights or legitimate interests, the Panel holds that a prima facie case of bad faith within the meaning of clause 4(a)(iii) of the Policy is made out by the Complainant, that the onus of proof was transferred to the Respondent and the Panel is not satisfied that the Respondent’s rebuttal demonstrates other than "bad faith".
After formulating but before issuing this decision, via WIPO the Panelist received further submissions on behalf of the Complainant. The Policy and Rules do not provide for admission of such material but this is subject to the general discretion of the Panelist. This case has raised considerable difficulties for the Panelist particularly due to the abbreviated procedure of the Policy under which a Response with a scintilla of plausibility might incline a Panelist to simply hold the Complainant fails due to a conflict of assertions which are not tested in a normal legal procedure.
In this case the Panelist has been able to conclude a decision in favour of the Complainant despite a less than satisfactory state of evidence and without the benefit of legal submissions after the evidence has closed. Revision of the Policy and Rules may be desirable.
In this case the Panelist does not rely at all on the further material submitted by the Complainant.
For all of the foregoing reasons, the Panel decides that the Domain Name at issue is identical to the trade mark or service mark which had previously been used by the Complainant, that the Respondent has no rights or legitimate interests in respect of the Domain Name at issue, and that the Domain Name at issue has been registered and is being used in bad faith. Accordingly, the Panel requires, pursuant to paragraph 4(i) of the Policy, that the domain name at issue be transferred to the Complainant.
Dated: June 21, 2000