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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telstra Corporation Limited v Norman Fry
Case No. D2001-0757
1. The Parties
The Complainant is Telstra Corporation Limited, 38/242 Exhibition Street, Melbourne, 3000 Victoria, Australia.
The Respondent is Norman Fry, PO Box 299, Rockhampton, 4700 Queensland, Australia.
2. The Domain Name(s) and Registrar(s)
The Domain Name is <te1stra.net>.
The Registrar is InternetnamesWW.com (a Division of Melbourne IT), Level 2, 120 King Street, Melbourne, 3000 Victoria, Australia.
3. Procedural History
The Complainant e-mailed a complaint to the WIPO Arbitration and Mediation Center (the Center) on June 6, 2001, about the Respondent's domain name. The Center acknowledged the complaint on June 8, 2001. The Center received the complainant's submission in hard copy on June 11, 2001. It complied with the ICANN Rules and Supplementary Rules and included the appropriate fee payment.
The Center sought verification of the disputed domain name from InternetnamesWW.com (a Division of Melbourne IT) on June 11, 2001. InternetnamesWW.com 's response was received on June 12, 2001, confirming the Respondent holds the disputed domain name registration and that the status of the name is active. Also, InternetnamesWW.com confirmed that the ICANN Policy applies. The Center communicated the complaint to the Respondent on June 12, 2001, by hard copy and e-mail and sent copies to the complainant, ICANN and InternetnamesWW.com. The Center's communication informed the Respondent of the administrative procedure and that the last day for a response was July 1, 2001.
The Respondent defaulted by not sending a response by the due date.
The Panel member submitted his Statement of Acceptance and Declaration of Impartiality and Independence to the Center on July 17, 2001, and was formally appointed on July 25, 2001.
The Panel has not received any additional submissions. The proceedings were conducted in English and the Panel's decision is scheduled to issue on August 8, 2001.
4. Factual Background
The Complainant is one of the largest incorporated companies in Australia. It is a telecommunications and information services company and has, through its predecessors, a background of 100 years in that industry. Its revenue in 1999-2000 exceeded $A19 billion. Employing over 50000 full-time staff it is one of Australia's largest employers. Also, it operates a number of related businesses in Asia-Pacific, North America and Europe.
In Australia, the Complainant's telephony network extends across virtually all of Australia providing services to over 8 million residential and business customers. It is Australia's largest provider of mobile phone services and is Australia's largest Internet service provider. The Complainant's products and services are well known and available through about 100 outlets, its promotional and advertising expenditure over the past five years exceed $A900 million and it has a strong reputation for sponsoring many sporting, cultural and entertainment programs.
Since 1992, the Complainant has nearly 70 registered or pending trademarks in Australia containing the word Telstra. It has also registered or taken action to register the word Telstra in 29 other countries and the European Community. The trademarks cover the telecommunications services trademark class (Class 38) and 16 other classes.
The Complainant's domain names include <telstra.com>, <telstra.net>, <telstra.org>, <telstra.com.au>, <telstra-inc.com>, <telstrainc.com> and <telstrashop.com>.
The Respondent registered the domain name <te1stra.net> on October 10, 1999. The domain name has been "parked" at GoDomains stating "Welcome to te1stra.net. Content coming soon!". It also contains a referral statement "For information about this site please contact firstname.lastname@example.org".
The Complainant's solicitors sent a "cease and desist" letter on November 29, 2000, to the Respondent by registered post and by e-mail. The letter was returned on December 1, 2000, due to the address post office box being closed. Australia Post indicated that the Respondent was "unknown at address" and "left address". No response to the e-mail was received.
5. Parties’ Contentions
The Complainant contends that:
- The relevant part of the Respondent's domain name is confusingly similar to the complainant's trademark - in fact at first glance it appears identical as the number 1 looks like the letter l.
- The Telstra trademark is an invented or coined word and no trader would legitimately choose the word "te1stra" unless trying to create a false association with Telstra.
- The Respondent has no right or legitimate interest in the disputed domain name.
- The Respondent does not have any association with Telstra and the Complainant has not licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of its trademarks.
- The Respondent was not using nor has he registered the domain name before the Complainant acquired rights in its Telstra trademark.
- Before the domain name was registered, the Respondent did not carry on any business and was not commonly known by the name "te1stra" or any name consisting of "te1stra".
- The Telstra mark is so distinctive that no one in Australia would choose it unless trying to trade off Telstra's rights.
- The Respondent is not making legitimate non-commercial or fair use of the domain name and there is currently no real use of the domain name.
- The Respondent registered the domain name in bad faith because the reputation of the Telstra marks in Australia is so extensive that the Respondent must have been aware of Telstra's rights when he registered the name and because the Respondent has no legitimate interest in the words Telstra or Te1stra and the Complainant's reputation precludes him from ever establishing a legitimate interest.
The Respondent failed to provide a response.
6. Discussion and Findings
The Panel notes that registration date of the disputed domain name occurred before the implementation of the ICANN Uniform Domain Name Dispute Resolution Policy. However, as confirmed by the Registrar, InternetnamesWW.com, its dispute resolution policy changes and modifications have a retrospective effect provided the Registrant maintains the registration. A similar situation arose with the same Registrar in World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 where the Policy applied even though the domain name was registered on October 7, 1999. The Panel is satisfied that it is appropriate to apply ICANN’s approved Policy in this case.
In accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, the Complainant must prove that: (i) the Respondent's domain name is 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 name; and (iii) the Respondent's domain name has been registered and is being used in bad faith.
(i) the Respondent's domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The disputed domain name is <te1stra.net> and the relevant part differs from the Complainant's well-known and established trademark "telstra" by using the number 1 instead of the letter l. When typing the word with a number 1 instead of the letter l there is no doubt that you are not typing Telstra. However, visually the domain name and trademark are quite similar. For example, if the domain name was used as a hyperlink the Panel has no doubt that many would be mislead into thinking that by clicking onto the word they would be reaching a Telstra site.
The respondent's use of the number 1 instead of the letter l is not taking advantage of a possible misspelling of the trademark Telstra but in the Panel's view intended to subtly and deliberately confuse users of the Internet.
The Panel finds that while the disputed domain name is not identical it is confusingly similar to the Complainant's trademark.
(ii) the Respondent has no rights or legitimate interest in respect of the domain name.
ICANN's Uniform Domain Name Dispute Resolution Policy Rule 4 (c) sets out how a Respondent can demonstrate rights to and legitimate interest in the disputed domain name. 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 organisation) 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".
Based on the information before the Panel none of the above ways of demonstrating rights to or legitimate interest in the disputed domain name could possibly be maintained by the Respondent. The Respondent has parked the domain name in an "under construction" holding site and in almost two years has not made any effort to use or prepare to use the domain name in a bona fide manner. There is no evidence before the Panel that indicates that the Respondent is commonly known by the domain name or that there has been legitimate non-commercial or fair use of the domain name.
Based on the evidence presented it is the Panel's view that the Respondent has no rights or legitimate interests to the disputed domain name.
(iii) the Respondent's domain name has been registered and is being used in bad faith.
For the purposes of determining if there was bad faith the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4 b of ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP) noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
The circumstances of paragraph 4 (b) involve possible bad faith motives of; (1) selling, renting or otherwise transferring the domain name for valuable consideration, (2) preventing the trademark owner from having its trademark as a domain name (provided there is a pattern of such conduct), (3) disrupting the business of a competitor or (4) attracting Internet users for commercial gain by creating confusion with the complainant's trademark.
In this case none of the above motives are immediately apparent. However, as mentioned earlier, the Panel is not limited to just the paragraph 4 (b) circumstances to determine whether the domain name was registered and used in bad faith.
In the Panel's view the factors supporting registration and use in bad faith by the Respondent are:
- 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 name independently there is no obvious explanation other than the registration was made in bad faith with the intent to attract business to his site, disrupt the business of the Complainant and/or profit from the eventual sale of the domain name. Similar conclusions about opportunistic bad faith registration are found in a number of decisions, such as, Cellular One Group v. Paul Brien WIPO Case No. D2000-0028, Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003, Charles Jourdan Holding AG v. AAIM WIPO Case No. D2000-0403, Nintendo of America Inc v. Pokemon WIPO Case No. D2000-1230, Neuberger Berman Inc v. Alfred Jacobson WIPO Case No. D2000-0323 and Telstra Corporation Limited v. Brett Micallef WIPO Case No. D2000-0919.
- The Respondent's passive holding of the domain (it has been inactive for nearly two years) in combination with having no legitimate rights or interest in the domain name and the strong likelihood of being aware of Telstra's reputation, 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, Telstra Corporation Limited v. Barry Cheng Kwok Chu WIPO Case No. D2000-0423.
- The Respondent's apparent failure to provide accurate, reliable and up to date details as warranted in his domain name registration.
- Finally, the lack of a response to the Complainant's solicitor's letter and e-mail and this complaint infers that the Respondent could not provide any good faith use of the domain name (see Encyclopaedia Britannica v Zuccarini WIPO Case No. D2000-0330 and eBay Inc v. Sunho Hong WIPO Case No. D2000-1633).
In accordance with the Uniform Dispute Resolution Policy [paragraph 4 (a)(iii)], the Panel finds that the Respondent registered and used the disputed domain name in bad faith.
In accordance with the Policy, Rules and prior authority the Panel has decided that the disputed domain name is confusingly similar to the Complainant's trademark, the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent's domain name has been registered and used in bad faith. Accordingly, the Panel requires the Respondent to transfer the disputed domain name to the Complainant.
Dated: August 13, 2001