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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TELSTRA CORPORATION LIMITED v KANDASAMY MAHALINGAM
Case No. D2000-0999
1. The Parties
1.1. The Complainant is Telstra Corporation Limited, 38/242 Exhibition Street, Melbourne, Victoria, 3000, Australia; represented by Mallesons Stephen Jaques, Solicitors, Level 28, Rialto, 525 Collins Street, Melbourne, Victoria, 3000, Australia.
1.2. The Respondent is Kandasamy Mahalingam whose address is given in the Domain Name Register as 19a Robson Road, Keiraville, Wollongong, NSW 2500, Australia.
2. The Domain Name and Registrar
2.1. The domain name subject to this Complaint is "telstraa.com". The Registrar of the domain name is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia, 20170, U.S.A.
3. Procedural History
3.1. The Complaint was received by email at the World Intellectual Property Organization Arbitration and Mediation Center (WIPO Center) on August 10, 2000. The appropriate payment was lodged by bank transfer to the account of the WIPO Center by the Complainant on August 10, 2000. A copy of the Complaint was sent by the Complainant to the Respondent by registered post on August 10, 2000. A copy of the Complaint was sent by the Complainant to the Registrar by email on August 10, 2000. The hardcopy of the Complaint with annexes was received at WIPO Center on August 14, 2000. An Acknowledgment of Receipt of Complaint was sent by the WIPO Center on August 16, 2000. On August 16, 2000 a printout of the URL was made.
3.2. On August 16-17, 2000, following contact between the Complainant and the Respondent, there was email correspondence between the WIPO Center and the Complainant concerning possible suspension of the Complaint. A Notification of Suspension of Administrative Proceeding dated August 17, 2000, was sent to the Complainant, to the Respondent, to the Internet Corporation for Assigned Names and Numbers (ICANN) and to the Registrar, Network Solutions, Inc.
3.3. On August 21, 2000, Verification was received from the Registrar of Network Solutions, Inc., to the effect that the Domain Name "telstraa.com" is registered by that Registrar in the name of Kandasamy Mahalingam with Administrative Contact and Billing Contact address recorded as 19a Robson Road, Keiraville, Wollongong, NSW 2500, Australia. The Domain Name registration was at that time in Active status. The Registrar stated that Network Solutions’ 5.0 Service Agreement is in effect.
3.4. On September 1, 2000, the Complainant by email asked WIPO Center to re-institute the proceeding. On September 4, 2000, WIPO Center determined (and the Panel has subsequently accepted) that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (Uniform Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (Uniform Rules) and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).
3.5. Formal Notification of Complaint and Commencement of Administrative Proceeding was sent to the Respondent on September 4, 2000 by WIPO Center by email (Complaint without attachments) and via courier (with enclosures) to follow. The deadline for the receipt of a Response was set as September 23, 2000. The Formal Notification was copied to the Complainant by email and to ICANN and to the Registrar, Network Solutions, Inc.
3.6. The Respondent emailed the WIPO Center on September 21, 2000, with a message that embodied the original message to him from WIPO Center referring to an "attached Notice of Complaint and Commencement of Administrative Proceeding in D2000-0999 "telstraa.com" ". In reply by email on September 21, 2000, WIPO Center reminded the Respondent of the contact address of the Complainant if a direct settlement were intended, and further reminded the Respondent that otherwise September 23, 2000, was the deadline for the receipt of a Response. No formal Response was received by the due date and, on September 25, 2000, a Notification of Response Default was sent by WIPO Center to the Respondent by email, and by courier on September 26, 2000; copied to the Complainant by email.
3.7. On September 29, 2000, Dr Clive Trotman, having provided the WIPO Center by fax with a Statement of Acceptance and Declaration of Impartiality, was appointed as a single member Administrative Panel and the parties were so informed via post/courier to the Respondent and by email to the Complainant, the Respondent and the Administrative Panel. An electronic copy of the Complaint was emailed to the Administrative Panel on September 29, 2000, and the hardcopy of the Case File followed by courier.
4. Factual Background
4.1. The Domain Name "telstraa.com" was registered on May 1, 2000.
4.2. The Complainant, Telstra Corporation Limited (Australian Company Number 051 775 555), certifies that it is one of the two largest publicly listed companies in Australia. The 49.9% publicly issued stock has a market capitalization of about $A60 billion; the other 50.1% is owned by the Australian Federal Government. Revenue in the financial year 1998-1999 exceeded $A18 billion.
4.3. The Complainant’s main activities, all of which are carried out under or by reference to the "TELSTRA" trademark, include: telephone services to over 7 million customers in Australia; mobile phone services to 3.4 million customers; the provision of a large range of data, Internet and on-line services as the largest Internet Service Provider in Australia, with over 400,000 Australians now using its services; the operation of around 100 Telstra Shops across Australia; the publication of the Telstra White PagesÔ directory and the Telstra Yellow PagesÒ directory.
4.4. The Complainant has registered, or has filed applications with registrations pending for, 60 trademarks comprising or containing the word "TELSTRA" in Australia. In addition, the Complainant has also registered or has filed applications with registrations pending for, a large number of "TELSTRA" trademarks in 29 other countries. It has also obtained a registered Community Trade Mark.
4.5. The Company currently spends at the rate of at least $A200 million per year on advertising and sponsorship, including major sporting and Olympic Games sponsorship.
4.6. The Complainant is the owner of several Domain Names containing the word "TELSTRA" including the following:
telstra.com (currently the Complainant’s main web site)
5. Parties’ Contentions
A. Contentions of Complainant
5.1. The Complainant contends (paragraphs 5.2-5.7 below) that:
5.2. The Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights. The relevant part of the Domain Name complained of ("telstraa") is confusingly similar to the Complainant’s extensive portfolio of "TELSTRA" trademarks which have been registered on an international scale. It is identical but for the extra "a". Furthermore, "telstraa" sounds the same as "TELSTRA" and at a glance looks identical to the trademark "TELSTRA".
5.3. The Respondent has no rights or legitimate interests in respect of the Domain Name. At the time when the Respondent registered the Domain Name, Telstra’s Company name, trademark and brand name had been in operation for around 7 years. The word "TELSTRA" is an invented or coined word. "TELSTRA" is not a word that traders would legitimately choose unless they were trying to create a false association with Telstra Corporation Limited, as the reputation of the trademark "TELSTRA" is immense and well known, particularly in Australia.
5.4. The Respondent admitted that it was the reputation of Telstra Corporation Limited that led him to register the Domain Name. The Complainant certifies that in a telephone conversation with the Complainant’s Solicitor on August 1, 2000, the Respondent said: "Telstra is a friendly name"; and "if I registered this name I would get a higher number of hits", or words to that effect.
5.5. The Respondent registered and is using the Domain Name in bad faith. The Complainant states that the Respondent has indicated that his choice of the Domain Name was directly related to the Complainant’s trademark and is clearly aimed at attracting internet users who are attempting to access the Complainant’s website or who are familiar with the Complainant’s trademark and reputation. Furthermore, the Complainant states that the Respondent offered by telephone on August 9, 2000 to sell the Domain Name for $A2000 and later, after that was rejected, for $A1000, which is well in excess of direct registration costs of $A70.
5.6. The Complainant contends that as a result of the widespread use and reputation of the trademark "TELSTRA" by the Complainant, virtually any member of the public in Australia would believe that "telstraa.com" was the Complainant or in some way associated with it. The Respondent’s statements that "Telstra is a friendly name" and that he would "get a higher number of hits" if he registered a name similar to "TELSTRA" are evidence of his knowledge of the reputation of the "TELSTRA" trademark and his bad faith intentions to misuse it.
5.7. Remedies Requested. The Complainant requests that the Domain Name "telstraa.com" be transferred to the Complainant.
B. Contentions of Respondent
5.8. The Respondent has not submitted any formal Response.
6. Discussion and Findings
Whether the Domain Name is Identical or Confusingly Similar to Another
6.1. The Domain Name that is the subject of the Complaint is "telstraa.com". The Complainant has submitted that "telstraa" contains the trademark "TELSTRA" with the addition of a single letter "a"; that "telstraa" sounds the same as "TELSTRA"; and that at a glance "telstraa" looks identical to the trademark "TELSTRA". The Respondent has not rebutted these submissions. The Panel finds on the facts that the Domain Name "telstraa.com" is confusingly similar to trademarks and service marks containing the word "TELSTRA" in which the Complainant has clearly established that it has rights. The Complainant therefore succeeds under element 4 (a) (i) of the Uniform Policy.
Whether Respondent Has Rights or Legitimate Interests in Respect of Domain Name
6.2. The Complainant has submitted that the Respondent does not have any rights to or legitimate interest in the Domain Name for reasons including those summarized in Section 5 above. The Complainant certifies that it has not licensed or otherwise permitted the Respondent to use its trademarks or service marks. It is for the Respondent to refute this submission by establishing any applicable rights or legitimate interest in the Domain Name, in particular but without limitation under Paragraphs 4 (c) (i) or (ii) or (iii) of the Uniform Policy, which the Respondent has not done.
6.3. Nevertheless the Complainant has in the Complaint analyzed some circumstances under which the Respondent may have moved to rebut the Complainant’s assertion under Paragraph 4 (a) (ii) of the Uniform Policy. The Complainant states that the Respondent has not and cannot have made any 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 (Uniform Policy Paragraph 4 (c) (i) ). The Respondent is not and cannot be commonly known by or trade under the Domain Name, among other reasons because no other entity (as far is the Complainant is aware) is using the trademark "TELSTRA" without the Complainant’s permission (Uniform Policy Paragraph 4 (c) (ii)). The Respondent is not making a legitimate noncommercial or fair use of the Domain Name as included in Uniform Policy Paragraph 4 (c) (iii) since on the facts presented by the Complainant the Domain Name is not being used in such a way. Furthermore, in relation to Uniform Policy Paragraph 4 (c) (iii), the Complainant certifies that the Respondent said, "Telstra is a friendly name" and "if I registered this name I would get a higher number of hits" (or words to that effect), which if these quotations were in context and are taken together would amount to an intention to divert customers misleadingly. The Respondent has not rebutted any of the Complainant’s assertions listed in this paragraph.
6.4. Having regard to the conclusions reached in 6.2 and 6.3 above and recognizing that the circumstances listed under Uniform Policy Paragraph 4 (c) are without limitation, the Panel finds that the Respondent does not have any rights to or legitimate interest in the Domain Name. The Complainant therefore succeeds under Paragraph 4 (a) (ii) of the Uniform Policy.
Whether Domain Name Has Been Registered and Is Being Used in Bad Faith
6.5. The first part of Uniform Policy Paragraph 4 (a) (iii) requires that the Domain Name has been registered [in bad faith]. The Uniform Policy lists four circumstances (but without limitation) that in the alternative shall be evidence of registration and use in bad faith. Under the first, Paragraph 4 (b) (i), no evidence was offered by the Complainant to the effect that the Respondent had registered the Domain Name primarily for the purpose of selling, etc., the Domain Name. The Complainant therefore does not succeed under this heading.
6.6. Under Paragraph 4 (b) (ii), on the evidence, it is not convincingly probable that the Domain Name could have prevented Telstra from using its trademarks, and no evidence was offered by the Complainant that the Respondent engaged in a pattern of relevant conduct.
6.7. Under Paragraph 4 (b) (iii), the Complainant would need to prove that the Respondent registered the Domain Name primarily for the purpose of disrupting the business of a competitor. The word "disrupting" is a strong word, defined in The Concise Oxford Dictionary (3rd ed.) as (disrupt) shatter, separate forcibly, (disruption) bursting asunder, violent dissolution (etc). It could be stretching definitions to conclude, on a balance of probabilities, that the activities of the Respondent complained about could cause the business of Telstra Corporation Limited to be disrupted according to this definition, or that such was the primary purpose of the registration. No evidence was offered as to whether the nature of the Respondent’s business made it a competitor.
6.8. Under Paragraph 4 (b) (iv), the Complainant has established a convincing case that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a high probability of confusion with the Complainant’s trademark. Supporting evidence includes the statements attributed to the Respondent (which he has not denied) that "Telstra is a friendly name" and "if I registered this name I would get a higher number of hits" (or words to that effect), which amount to an intention to divert customers misleadingly to his site. The Panel finds the requirements fulfilled for the Complainant to succeed under the first part of Paragraph 4 (a) (iii).
6.9. The Complainant also needs to show under the second part of Paragraph 4 (a) (iii) that the Domain Name "is being used in bad faith". The Complainant, however, has implied several times that the Domain Name is not being used; for instance in the Complaint on page 11, "The Respondent registered the Domain Name in May 2000 and has not used it"; on page 12, "To date the website is inactive…"; on page 12, "… the Domain Name is not being used."; on page 12, "…there is currently no use of the telstraa.com domain name…"; on page 13, "the Respondent has made no real use of the Domain Name…"; on page 15, "At the date of this Complaint the Respondent had not established an active website corresponding with the domain name".
6.10. On the other hand the Case File includes a printout of a token website answering to the address "www.telstraa.com" hosted by Interliant Hosting Services which shows that to at least a minimal extent the site is being used.
6.11. The Panel recognizes different meanings of the word "use" according to its immediate context in the Uniform Policy. The degree of use necessary for a Domain Name to be "registered and being used" (e.g., under Paragraphs 4 (a) or 4 (b) of the Uniform Policy) may be slight and no more than it’s being maintained in existence. Conversely, a Domain Name would need to be demonstrably in bona fide use or in preparation for use in order to satisfy the requirements of Paragraph 4 (c).
6.12. The Panel has been guided in the interpretation of Paragraph 4 (a) (iii) of the Uniform Policy by Paragraph 4 (b), of which the preamble reads "For the purposes of Paragraph 4 (a) (iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: " and then presents clauses 4 (b) (i), (ii), (iii) and (iv). Since the Panel finds (6.8 above) adequate elements of Paragraph 4 (b) (iv) to be proven, those findings are the "evidence of the registration and use of a domain name in bad faith" referred to in the preamble of Paragraph 4 (b) which in turn deals specifically with "the purposes of Paragraph 4 (a) (iii)". The Panel therefore finds the requirements of Paragraph 4 (a) (iii) to be satisfied in full and that the Domain Name was registered and is being used in bad faith.
6.13. An alternative interpretation of Paragraph 4 (a) (iii) leads to the same conclusion. The phrase "domain name has been registered and is being used in bad faith" can imply a single coherent act. The act of registering a domain name cannot be separated from the act of using it, because as from the moment of registration, the name is then being used at least to prevent anyone else from registering it (which is a motivation for registering it in the first place). Paragraph 4 (a) (iii) is notable for using the words "domain name" and not "site" or "web site". In order to satisfy Paragraph 4 (a) (iii) it is not necessary for there to be a functioning web site but merely registration and use of a domain name in bad faith.
6.14. The Complainant refers the Panel to the Decision in WIPO Case No. D2000-0003 (telstra.org), Andrew F. Christie Presiding Panelist. In that Decision (Paragraphs 7.8 – 7.11 therein) that Panel developed a persuasive argument to the effect that "the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith"; and furthermore, ""being used in bad faith" is not limited to positive action; inaction is within the concept". In the present case the Panel finds evidence of bad faith on the part of the Respondent in, among other things, his admission that it was the reputation of Telstra Corporation Limited that led him to register the Domain Name; his offering to sell the Domain Name for $A2000 or $A1000; and his passive holding of the Domain Name. Given the Complainant’s high public profile and well established trademarks, there can be no plausible explanation by the Respondent for registering the Domain Name other than to benefit in bad faith from the Complainant’s well known name and reputation. The Panel has taken an overall view of the actions and inactions of the Respondent and having regard to all the particular facts of the present case the Panel finds ample evidence that the Respondent has acted and is acting in bad faith.
6.15. To summarize, as stated in 6.1 above the Complainant succeeds under element 4 (a) (i) of the Uniform Policy. As stated in 6.4 above, the Complainant succeeds under element 4 (a) (ii) of the Uniform Policy. The conclusion reached in each of the alternatives 6.12, 6.13 and 6.14 above is the same, namely that the Complainant succeeds under element 4 (a) (iii) of the Uniform Policy. The Complainant therefore has proven its case and the Decision is made in favour of the Complainant and against the Respondent.
7.1. The Decision of the Administrative Panel is that the disputed Domain Name "telstraa.com" is confusingly similar to the trademark TELSTRA in which the Complainant has legitimate interests; that the Respondent has no rights or legitimate interests in the Domain Name "telstraa.com"; and that the Respondent has registered and is using the Domain Name in bad faith. The Decision of the Administrative Panel is that the Domain Name "telstraa.com" shall be transferred to the Complainant.
Clive N. A. Trotman
Dated: October 8, 2000