|Complainant||Telstra Corporation Limited|
|Panelist||Gardner, Nick J.|
|Date of Decision||27.01.2003|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Telstra Corporation Limited v. UCT Inc
Case No. D2002-1066
1. The Parties
1.1 The Complainant is Telstra Corporation Limited of Melbourne, Australia represented by Davies Collison Cave of Melbourne, Australia.
1.2 The Respondent is UCT Inc of Irvine, California, United States of America. The Respondent is not represented.
2. The Domain Names and Registrar
2.1 The disputed domain names are <1212telstra.com> and <1212telstra.net> (the "Domain Names") which are registered with DomainDiscover (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 21, 2002. On November 21, 2002, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 22, 2002, Registrar 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, billing, and technical contact.
3.2 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").
3.3 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 November 27, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2002. No Response was filed with the Center and on December 18, 2002, the Center served notification of Respondent default on the Respondent.
3.4 The Center appointed Nick Gardner as the sole Panelist in this matter on January 3, 2003. 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. A Decision is due to be provided by January 17, 2003.
4. Factual Background
4.1 The Complainant is one of the largest publicly listed companies in Australia and is the well-known telecommunications and information services company.
4.2 A very great amount of detailed material is provided in the Complaint as to the nature, extent and scope of the Complainants activities. It is sufficient for present purposes to indicate that this establishes (amongst other things) that the Complainants annual revenues in the year 2000 exceeded 23 billion Australian dollars; it employs over 44,000 people, it has a wide range of activities carried out under the TELSTRA brand, both nationally within Australia and internationally; and clearly has very extensive goodwill and reputation in the name TELSTRA. It has registered or has filed applications for 74 trademarks comprising or containing the word TELSTRA in Australia and has 16 registered trademarks for the word TELSTRA in the United States. Details of all of these registrations are filed with the Complaint. Details are also provided of many more marks registered on a worldwide basis. Extensive information is also provided showing the Complainant has a wide range of advertising, sponsorship and other promotional activities all associated with or carried out under the name TELSTRA.
4.3 Details of the nature and extent of activities that have been undertaken by the Complainant to protect its mark are provided. These include details of a large number of previous actions taken under the Policy in respect of various domain names.
4.4 The Domain Names were registered on February 2, 2001. The Respondent appears to be a developer and manufacturer of various items of wireless Internet equipment. It offers a product or service called "1212net." This product or service appears to allow subscribers to register various domain names prefixed by the figures "1212." To quote from the Respondents website (details of which are provided with the Complaint) it provides the facility to have "your own 1212 domain name of your choice. We simply add 1212 to the front of your existing domain name to provide a wireless version of your existing website."
4.5 Details of correspondence which has been sent by the Complainants representatives to the Respondent is also provided in the Complaint. This correspondence comprises a number of "cease and desist" letters. No reply has ever been received to this correspondence.
4.6 The Domain Names resolve, if accessed on the Internet, to a site "www.buydomains.com" which indicates that the Domain Names have been "reserved."
5. Parties Contentions
5.1 The Complaint sets out in considerable detail the Complainants submissions in respect of these matters. In summary the Complainant submits that the Domain Names are confusingly similar to its registered US trademarks; that the word TELSTRA is an invented or coined word; that the use of the numerals 1212 in front of the word could only be chosen if trying to create a false association with TELSTRA; and that the dominant impression of the Domain Name is still the word TELSTRA.
5.2 The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Names given that the Respondent does not have any connection with TELSTRA; it is not making any fair use of the name; and it is not being used for any bona fide offering of goods or services.
5.3 The Complaint also submits that the Domain Names were registered and being used in bad faith. It provides a detailed series of submissions and references to previous UDRP decisions in this regard. In summary the Complainant submits that the Respondent is "seeking to capitalize on the well-known TELSTRA name." The Complainant says that the Respondent "could not possibly make any plausible actual or contemplated active use of the Domain Names that would not violate or infringe the Complainants trademark rights in the TELSTRA name or otherwise be legitimate."
5.4. No response has been filed by the Respondent.
6. Discussion and Findings
6.1 The Panel has reviewed the Complaint and the documents annexed to the Complaint. In the light of this material, the Panel finds as set out below.
6.2 The Panel does not find there are any exceptional circumstances within paragraph 5(e) of the ICANN Rules applicable to the Policy so as to prevent this Panel determining the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Details of these proceedings have been served in accordance with the relevant requirements set out in the Policy.
6.3 In order to succeed in this Complaint the Complainant has to establish, pursuant to paragraph 4(a) of the Policy that:
(i) the Domain Names are identical to or confusingly similar to the Complainants trademarks;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names were registered and are being used in bad faith.
6.4 The Complainant has numerous registered trademarks in respect of the word TELSTRA, all or substantially all of which were registered by the Complainant before the Domain Names were registered by the Respondent.
6.5 The Panel agrees with the Complainant that the word TELSTRA is a distinctive and made up word. In those circumstances the Panel does not consider that the addition of the numerals 1212 before the word are sufficient to distinguish the Domain Names from the Complainants trademarks the Domain Names as a matter of impression are clearly based upon and bring to mind the term TELSTRA.
6.6 Accordingly the Panel concludes the Domain Names are confusingly similar to the Complainants trademarks.
6.7 The Respondents activities appear to be part of some sort of scheme to promote an Internet service or directory involving domain names which are prefixed by the numbers 1212 and then adopting specific designators thereafter as the remainder of the name concerned.
6.8 Insofar as such a scheme involves the use of generic or descriptive terms as designators prefixed by 1212 there is no difficulty. However the adoption of trademarks as the designator would require the Respondent to have an appropriate right or interest in the term concerned to allow it to do so. In this case in the absence of any Response from the Respondent the Panel accepts the Complainants evidence and submissions that no such rights exist in respect of the term TELSTRA.
6.9 The question then is whether such use is use in bad faith. A non-exhaustive list of relevant factors which may establish bad faith is set out under paragraph 4(b) of the Policy. In this case the Panel is satisfied that on the evidence the Respondents proposed scheme involves attracting Internet users to its website as a result of the likelihood of confusion with the Complainants marks " as to the source, sponsorship, affiliation, or endorsement of the Complainants website or location or of a product or service on the Respondents website." Accordingly bad faith within the meaning of paragraph 4b(iv) of the Policy is established.
6.10 The Panel also notes that the Respondent appears to be engaged in a pattern of such behavior, having also registered <1212mercedes.com> and <1212ford.com> as domain names.
6.11 Accordingly the Panel concludes the Domain Names were registered and are being used in bad faith. The Panel therefore concludes that the Complainant has established each of the elements of paragraph 4(a) of the Policy.
7.1 In the light of the above findings, the Panel's decision is as set out below.
7.2 The Domain Names are confusingly similar to the trademarks in which the Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy.
7.3 The Respondent has no rights or legitimate interests in respect of the Domain Names within the meaning of paragraph 4(a)(ii) of the Policy.
7.4 The Domain Names have been registered and are being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the Domain Names be transferred to the Complainant.
N. J. Gardner
Dated: January 20, 2003