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WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION
Telstra Corporation Limited v. Mark Cleary
Case No. D2008-1992
1. The Parties
The Complainant is Telstra Corporation Limited of Melbourne, Victoria, Australia, represented by Davies Collison Cave, Australia.
The Respondent is Mark Cleary of Burleigh Waters, Queensland, Australia.
2. The Domain Names and Registrar
The disputed domain names
<telstramarketing.com>,
<telstraplans.com>,
<telstraresidential.com>,
<telstraservice.com> and
<telstraservices.com>
are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2008. On December 30, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On December 31, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the respondent and contact information originally set out in the Complaint. The Center sent an email communication to the Complainant on January 12, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 15, 2009. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 January 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2009.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on February 19, 2009. 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
1. The Complainant is in the business of providing telecommunication and multi-media services which it has provided since 1995 under the trade mark TELSTRA.
2. The Complainant’s business includes the provision of telephone exchange lines, public pay phones, mobile telecommunication services, broadband access, internet services, and retail shops. It also wholesales telecommunication services to other carriers.
3. The Complainant has not authorised the Respondent to use the trade mark TELSTRA, nor to register any domain name incorporating it.
4. The Respondent is an Australian resident.
5. The disputed domain names were registered on October 7, 2006.
6. With the exception of <telstraservices.com> which is not in use, the disputed domain names are each associated with a corresponding portal style website which, in each case, carry numerous links to services unconnected with, and frequently offered in competition to, the Complainant’s services.
7. The Complainant petitions the Panel to order transfer of the disputed domain names from the Respondent to the Complainant.
5. Parties’ Contentions
A. Complainant
The Complainant asserts trade mark rights and states that each of the disputed domain names is confusingly similar to the trade mark TELSTRA.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant alleges that the Respondent registered and used the disputed domain names in bad faith.
The detail of the Complaint is included where necessary in Section 6 of this Decision.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, a complainant must prove that:
(i) the domain name is identical or confusingly similar to a trade mark 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
On the evidence, there is no doubt that the Complainant has trade mark rights in the word TELSTRA acquired through both use1 and registration2.
Applying the principles developed under the Policy which now have wide support, the disputed domain names are confusingly similar to the Complainant’s trade mark TELSTRA. In each case, the gTLD “.com” is trivial and can be ignored. In each case, the domain name wholly incorporates the Complainant’s trade mark. The added words
“marketing”, “plans”, “residential”, “service(s)” are either per se descriptive or descriptive within the context of the Complainant’s business. The omission of spaces between the words is inconsequential3.
The Panel accordingly finds that the Complainant has satisfied the first element of the Policy on the basis of rights in the trade mark TELSTRA and so there is no need to consider its other registered rights4.
B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the domain names. Nevertheless, it is well settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to demonstrate rights or legitimate interests5.
Notwithstanding the lack of a response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(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 other organization) 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 noncommercial 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.
The WhoIs data does not support any argument that the Respondent might be commonly known by the disputed domain names. There is no evidence that the Respondent has any trade mark rights in the names, registered or not. The Complainant has stated there to be no relationship between it and the Respondent.
The Respondent does not appear to be using, nor has it presented evidence of any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and that the Respondent in failing to reply has not discharged the onus which fell to it as a result.
The Panel finds that the Respondent has no rights or legitimate interests in the domain names and so the Complainant has satisfied the second limb of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
(i) circumstances indicating that you 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; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
What is noteworthy about paragraphs 4(b)(i)-(iv) of the Policy is that they are cases of both registration and use in bad faith.
In relation to the disputed domain names <telstramarketing.com>, <telstraplans.com>, <telstraresidential.com> and <telstraservice.com>, the Complainant has relied specifically on paragraph 4(b)(iv) of the Policy6.
The Panel has already found the domain names to be confusingly similar to the trade mark TELSTRA. The Panel finds that the likelihood of confusion as to source is therefore highly likely. Paragraph 4(b)(iv) also requires an intention for commercial gain. What is required is a finding that it is more likely than not such an intention existed; absolute proof is not required and the Panel is entitled to accept reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory7. The Complainant says it can be inferred that the Respondent was most likely benefiting from pay-per-click revenue resulting from the likely confusion. On the facts, the Panel finds it more likely than not that the Respondent had the requisite intention for commercial gain. It is abundantly clear that use of a domain name in this same manner is very frequently for commercial gain8.
The Panel finds that the Complainant has shown the Respondent’s use of the disputed domain names <telstramarketing.com>, <telstraplans.com>, <telstraresidential.com> and <telstraservice.com> falls under paragraph 4(b)(iv) of the Policy and that they were therefore used and registered in bad faith.
In relation to the remaining disputed domain name <telstraservices.com>, which is not in use, the Complainant relies on paragraph 4(b)(ii) of the Policy. The Panel is of the view that this domain name can be more simply found as having been registered and used in bad faith for the reasons that (1) given the enormity of the Complainant’s business in Australia by 2006, it is inconceivable that the Respondent was not aware of the Complainant’s trade mark, plus actual knowledge can be imputed to Respondent from its bad faith use of the other domain names in dispute, and (2), following the criteria laid down in the landmark UDRP decision involving this same Complainant, Telstra Corporation Limited v. Nuclear Marshmallows
WIPO Case No. D2000-0003, there is on the facts no plausible scenario in which the Respondent might come to use the domain name <telstraservices.com> in good faith.
Accordingly, the Panel finds that the Complainant has satisfied the third and final limb of the Policy in relation to all five disputed domain names.
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 names,
<telstramarketing.com>,
<telstraplans.com>,
<telstraresidential.com>,
<telstraservice.com> and
<telstraservices.com>
be transferred to the Complainant.
Debrett G. Lyons
Sole Panelist
Dated: February 27, 2009
1 The Complainant is Australia’s largest telecommunications provider with a market capitalization in 2008 of more than AU$52 billion, annual revenue that same year in excess of AU$24 million and having over 46,000 employees. Its reputation and trade mark rights have been recognised by formative panels in numerous other disputes brought under the Policy.
2 The Complainant has an extensive international portfolio of registrations for the trade mark TELSTRA. See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Case No. FA705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark STATE FARM establishes its rights in the STATE FARM mark pursuant to Policy paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Case No. FA174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
3 See Vin Diesel v. LMN a/k/a L.M. Nordell, NAF Case No. FA804924 finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (‘gTLD’) ‘.com’ [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy 4(a)(i)”.
4 Which, it is worth footnoting, include, TELSTRA TALK PLAN and TELSTRA MARKETING ACADEMY.
5 See Do The Hustle, LLC v. Tropic Web,
WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Case No. 741828; AOL LLC v. Jordan Gerberg, NAF Case No. 780200.
6 The Complaint actually cites paragraph 4(b)(ix) but given that there is no sub-paragraph of that description and since the Complaint uses the language of paragraph 4(b)(iv), it is understood that this is a mere clerical error.
7 See Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Case No. 95095 (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Michael Robertson,
WIPO Case No. D2000-0009 (“In the absence of a response, it is appropriate to accept as true all allegations of the complaint.”).
8 See The Vanguard Group, Inc. v. Lorna Kang,
WIPO Case No. D2002-1064 (finding that redirecting users to the website “www.magazines.com” was for commercial gain and was bad faith registration and use); Ticketmaster Corporation v. Amjad Kausar,
WIPO Case No. D2002-1018 (holding that “[t]he Respondent is clearly acting in bad faith by using the Complainant’s mark to profit in the form of commissions by linking of the Ticketsnow.com Affiliate Program”); Yahoo! Inc. v. DFI Inc., NAF Case No. 147313 (holding that, because respondent participated in an affiliate program whereby it earned a commission for each user redirected from its infringing site, its ultimate goal was commercial gain and thus it was using the name in bad faith); and Showboat, Inc. v. Ezra Khan, NAF Case No. 125227 (redirecting users for a commission is using a confusingly similar domain name for commercial benefit, which is evidence of bad faith).
