Telstra Corporation Limited v. David Whittle

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Telstra

Corporation Ltd v. David Whittle

Case No.

D2001-0434

1. The Parties

The Complainant is

Telstra Corporation Ltd of Level 4, 400 George Street, Sydney, NSW, 2000,

Australia.

The Respondent is David

Whittle of 27 Howitt Street, South Yarra, Melbourne, Victoria 3141, Australia.

2. The Domain Name

and Registrar

The domain name on

which the Complaint is based is <telsra.com>.

The registrar with

which the domain name is registered is Melbourne IT Ltd of Level 2, 120

King Street, Melbourne, Victoria 3000, Australia.

3. Procedural History

3.1 The Complaint

was made pursuant to the Uniform Domain Name Dispute Resolution Policy

approved by the Internet Corporation for Assigned Names and Numbers ("ICANN")

on October 24, 1999 ("the Policy") in accordance with the Rules

for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN

on October 24, 1999 ("the Rules") and the WIPO Supplemental

Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental

Rules").

3.2 The Complaint

was received by the WIPO Arbitration and Mediation Center (the "Center")

on March 26, 2001.

3.3 The Center

has stated in its "Formal Requirements Compliance Checklist"

dated April 2, 2001 that:

- The Complaint

was filed in accordance with the requirement of the Rules and the

WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy in effect as at December 1, 1999 ("the Supplemental

Rules").

- Payment

for filing was properly made.

- The Complainant

has complied with the formal requirements.

3.4 The Panel

accepts these findings and it finds further that:

- The Complaint

was properly notified in accordance with the Rules, paragraph 2(a),

having been sent to the Respondent by Post/Courier and E-mail on

April 2, 2001.

- Having

received no response from the Respondent within the specified time

in the Notification of Complaint, the Center issued a Notification

of Respondent Default on April 23, 2001.

- On May

1, 2001, the Center issued to both parties a Notification of Appointment

of Administrative Panel and Projected Decision Date. The notification

informed the parties that the Administrative Panel would be composed

of a single member and that, in the absence of exceptional circumstances,

the decision of the Panel was to be forwarded to the Center by May

14, 2001.

- The Administrative

Panel was properly constituted.

4. Factual Background

4.1 According to

the Complaint (pages 5-6), the Complainant is Australia’s leading telecommunications

and information services company, offering a wide range of telecommunications

and information services. It is the successor in title to the telecommunications

business operated from 1901 to 1975 by the Commonwealth Postmaster-General

and from 1975 under the name "Telecom Australia" and the Overseas

Telecommunications Corporation ("OTC"). It was formed as a result

of the merger of these two entities in 1992, and adopted "Telstra Corporation

Limited" as its legal name in April 1993, although still trading domestically

under the name of Telecom Australia. In July 1995, the domestic trading

name Telecom Australia was changed to "Telstra" and has been used

ever since.

4.2 In 1997, Telstra

Corporation was partially privatized by a public offering of shares, and

a further public offering on the Australian Stock Exchange occurred in 1999.

It is now one of the two largest publicly listed companies in Australia

and was ranked 70th in the Financial Times Limited 2000

and 108th in Business Week’s 2000 Global 1000 of the world’s

most valuable companies by market value (Complaint, para 29). It is currently

50.1% owned by the Commonwealth Government of Australia, and 49.9% owned

by shareholders of whom there are approximately 2.14 million (the latter

has a market capitalisation of about AUD$60 billion). The Complainant’s

revenue in the financial year 1999-2000 exceeded $A19 billion. It is also

one of Australia’s largest employers, with 50,761 full-time employees as

at 30 June 2000 (for further details, see the latest annual report which

is available online via the URL provided in Annexure D).

4.3 The main activities

of the Complainant are carried out under or by reference to the "TELSTRA"®

mark, and include the provision of telephone exchange lines and call services

to over 8 million residential and business customers throughout Australia, the

provision and maintenance of approximately 36,000 public payphones, the operation

of a digital mobile telecommunications service with over 4.1 million customers,

the provision of a large range of data, Internet and on-line services, the provision

of directory information and connection services, and the operation of over

100 retail outlets around Australia.

4.4 According to

the Complaint (page 7), the Complainant has registered, or has filed applications

with registrations pending for, 68 trade marks comprising or containing

the word "TELSTRA" in Australia. The trade marks cover an extensive

range of goods and services and span 17 of the 42 trade mark classes (a

list of these, comprising a printout from the website of IPAustralia, the

registering authority, is set out in Annexure E). In addition, the Complainant

has registered, or has filed applications with registrations pending for

a large number of "TELSTRA" trade marks overseas in some 29 countries.

It has also registered over 50 domain names containing the word "Telstra"

including <telstra.com>, <telstra.net>, <telstra.org>

and <telstra.com.au>. At para 31 of the Complaint, it is noted that

the Complainant’s websites received between 11 million and 22 million hits

per month throughout the year 2000 and that in September 2000 the <telstra.com>

website was the fourth most frequently visited website in Australia.

4.5 According to

the Complaint (pages 7–9), the Complainant has been very active in promoting

the "Telstra" brand through a wide variety of sponsorship and

advertising activities, both within Australia and internationally. Within

Australia, there is extremely high market recognition of the "TELSTRA"

brand (see Annexure F), while the amounts spent annually on advertising

and promotion over the past 5 years range between $164.1 and $209.1 million.

Sponsorship activities have included sponsorship of such high profile events

as the 2000 Sydney Olympic Games and the Sydney to Hobart Yacht Race, and

various Australian sporting teams, such as the Australian Womens’ Hockey

Team (the "Telstra Hockeroos") and the Australian Olympic Teams.

4.6 According to

the WHOIS database maintained by Internet Names Worldwide of Melbourne,

Victoria, Australia (a Division of Melbourne IT Ltd), the Respondent is

listed as the Registrant of the domain name <telsra.com>, having been

registered on

March 21, 2000, and

is also listed as the administrative and technical contact (Complaint, Annexure

A).

4.7 The Complaint

alleges that the Complainant became aware of the domain name in February

2001, and it was observed that the name resolved to a number of gambling

sites (Complaint, Annexure K). Following correspondence between the parties,

the Complaint in the present proceeding was made

5. Parties’ Contentions

A. Complainant

The Complainant seeks

cancellation of the domain name <telsra.com>, and in support of

this contention addresses each of the elements described in paragraph

4(a) of the Policy as follows.

- With respect to the element

described in paragraph 4(a)(i), the Complainant submits that the disputed domain

name is confusingly similar to its TELSTRA trade mark and that in a number of

previous cases under the Policy such small differences in spelling have been

held to satisfy this element of the Policy. In particular, it cites the following

Panel decisions: Encyclopaedia Britannica,

Inc. v. John Zuccarini

Case No D2000-0330 (concerning <encyclopediabrittanica.com>, <brtanica.com>,

<bitannica.com>, and <britannca.com>), Nicole

Kidman v. John Zuccarini, d/b/a Cupcake Party

Case No D2000-1415 (concerning <nicholekidman.com> and <nicolekidmannude.com>),

Hewlett-Packard Co. v. Cupcake City File No FA000200093562 (concerning <hewlittpackard.com>).

- With respect

to the element described in paragraph 4(a)(ii), the Complainant submits

that there is no evidence of any right or legitimate interest by the

Respondent in the domain name. It states that it has not licensed,

authorized or otherwise permitted the Respondent to use its name or

any of its trade marks or similar name or mark, and that it has not

licensed or otherwise permitted the Respondent to apply for or use

any domain name incorporating any of those marks (Complaint, para

42). It submits further that it has undertaken searches (including

telephone book and Australian Securities & Investments Commission

name searches) and has found no evidence that the Respondent has ever

traded under the name "telsra" (Complaint, para 42 and Annexure

O).

- With respect to the element

described in paragraph 4(a)(iii) of the Policy, the Complainant submits that

the mark "TELSTRA" is a well known trade mark in Australia and that

there "can be no question that the Respondent is well aware of the reputation

of Telstra in its name" in the light of the following: the distinctive

nature of the name; the high promotion of TELSTRA, particularly during the Sydney

Olympic Games in September 2000; and the fact that the Respondent is located

in Melbourne, Australia. The Complainant notes further that, until the Respondent

received a letter of demand from the Complainant’s solicitors, the domain name

redirected users to a gambling site which pays a commission to persons who direct

Internet traffic to it (Complaint, Annexures L and N). The Complainant submits

that the Respondent knew, or should have known, of the large number of visits

received daily at the Complainant’s <telstra.com> website and that the

misspelled domain name was likely to result in the diversion of large numbers

of people to the Respondent’s site and then to the redirected gambling site.

Furthermore, once this rediversion was discovered by the Complainant and made

the subject of a letter of demand, the Respondent offered to sell the domain

name to the Complainant (Annexure H). It is submitted that these facts are evidence

of registration and use of the domain name in bad faith. The Complainant submits

further that the domain name is still in use, or alternatively that, if there

is no positive action in bad faith, there is inactivity that amounts to use

in bad faith within the interpretation adopted in Telstra

Corporation v Nuclear Marshmallows Case

No D2000-0003.

B. Respondent

As noted above, the

Respondent has not filed a Response to the Complaint. Under paragraph

5(e) of the Rules, it is provided that if a Respondent does not submit

a response, in the absence of exceptional circumstances, the Panel shall

decide the dispute based on the Complaint. As no exceptional circumstances

have been brought to the Panel’s attention, it proceeds to make the findings

below on the basis of the material contained in the Complaint.

6. Discussion and

Findings

In accordance with

paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating

three elements.

6.1 That the complainant

has rights in a trade or service mark with which the respondent’s domain

name is identical or confusingly similar

As noted in paragraph

4.3 above, the Complainant has provided evidence of its trade mark registrations

within Australia (Complaint, Annexure E) and states that it has registrations

or applications filed in another 29 countries. In addition, it has registered

over 50 domain names that contain the word "Telstra", and has

spent large sums each year in the promotion and advertising of services

and products under that name. Particular reference should be made here

to evidence which the Complainant has annexed concerning the level of

consumer recognition of the "Telstra" name within the Australian

market. According to monthly telephone surveys undertaken by outside consultants,

the "Telstra" brand has a very strong market presence with total

unaided unawareness (on the part of consumers) at around 95% (Complaint,

Annexure F). The date of this research is not precisely indicated, but

it appears to have been carried out during 1997 and 1998, and, along with

the other evidence presented by the Complainant, can be taken as demonstrating

that the "Telstra" name and mark is well known within the Australian

community. Accordingly, the Complainant has established that the first

part of paragraph 4(a)(i) of the Policy, namely that it has rights in

a trade or service mark.

The next question is whether

the disputed domain name is confusingly similar to the Complainant’s mark. In

this regard, there is a small difference in the spelling or misspelling of the

domain name, with the absence of the letter "t", and the addition

of the appendage ".com" in the domain name. In determining whether

a domain name is confusingly similar to a mark in which the Complainant has

rights, it is a matter of comparing one with the other: evidence of actual confusion

or evidence of the use of the mark or its fame is irrelevant to this comparison.

See further the cases cited by the Complainant at para 38 of the Compliant:

Gateway Inc v Pixelera.com Inc Case

No D2000-0109; Allocation Network GmbH

v Steve Gregory Case

No D2000-0016.

In the present case, the

misspelling by the Respondent of "Tesltra" relates to one letter only

and the sound and appearance of "Telstra" and <telsra.com> remain

very close. There are a number of earlier decisions in which Panels have found

confusing similarity where there have been similar small differences between

domain names and trade or service marks and the addition of the suffix .com

has been found to make no difference to the creation of such confusing similarity:

World Wrestling Federation Entertainment

Inc v Michael Bosman WIPO

Case No D99-0001 (January 14, 2000) (worldwrestlingfederation.com and

WORLD WRESTLING FEDERATION) and InfoSpace.com,

Inc v Registrar Administrator Lew Blanck,

WIPO Case No D2000-0069 (April 3, 2000) (INFOSPACES.COM and INFOSPACE).

In this regard, the Complainant also cites the following illustrative decisions:

Encyclopaedia Britannica, Inc. v. John

Zuccarini

Case No D2000-0330 (concerning encyclopediabrittanica.com, brtanica.com,bitannica.com,

and britannca.com), Nicole Kidman v. John

Zuccarini, d/b/a Cupcake Party

Case No D2000-1415 (concerning nicholekidman.com and nicolekidmannude.com),

Hewlett-Packard Co. v. Cupcake City File No FA000200093562 (concerning hewlittpackard.com).

Each case, of course, is dependent upon its own facts, but in the present proceeding

the Panel has no difficulty in concluding that the disputed domain name <telsra.com>

is confusingly similar to the Telstra mark, and that the requirements of paragraph

4(a)(i) have been satisfied.

6.2 That the Respondents

must be shown to have no rights or legitimate interests in the Domain

Name

Paragraph 4(c) of

the Policy sets out certain matters to which a Respondent can point as

demonstrating rights or legitimate interests in a disputed domain name

for the purposes of paragraph 4(a)(ii). These include:

"(i) before

any notice to you [the Respondent] 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 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 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."

In the present proceeding,

there is no evidence that the Respondent has used the domain name <telsra.com>

in connection with any bona fide offering of goods and services (subpara (i)).

Nor is there any evidence of "demonstrable preparations" to use the

domain name in that way (subpara (i)), while it is clear that there has been

no licence or authorization given by the Complainant to the Respondent to use

the name or mark "Telstra". Indeed, the evidence adduced by the Complainant

is that until February 2001, the URL www.telsra.com automatically redirected

Internet users to another website concerned with gambling (Complaint, Annexure

K) and that this, in turn, directed users to other gambling sites (Complaint,

para 33). Thus, the effect of use of the disputed domain name was to increase

Internet traffic to another website and there was no independent offering of

goods or services by the Respondent under the disputed domain name.

Likewise, there is

no evidence before the Panel that indicates that the Respondent has ever

carried on a business under the name "Telsra" or any variant

of this expression, or that it has been commonly known by that name (subparagraph

(ii)).

Finally, there is

no evidence before the Panel that indicates whether any of the factors

referred to in subparagraph (iii) are applicable.

The matters referred

to in paragraph 4(c) are not an exhaustive statement of what may constitute

rights or legitimate interests in a domain name, and it is therefore open

to a Respondent to point to other evidence that may show this. In the

present proceeding, there has been no Response or evidence presented by

the Respondent, and the Panel, under Paragraph 14(b) of the Rules, is

entitled to draw from such default such inferences as it considers appropriate.

The Panel therefore concludes that the Complainant has established this

element of Paragraph 4(a) of the Policy, namely that the Respondent has

no rights or legitimate interests in the disputed domain name.

6.3 That the Respondent

registered and is using the Domain Name in bad faith

Paragraph 4(b) of

the Policy lists certain factors which, if found by the Panel to be present,

shall be evidence of registration and use of a domain name in bad faith.

This is not an exclusive list, and includes:

"(i) circumstances

indicating that you [the Respondent] 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 web site 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 web site or location or of a product or service on your

web site or location."

It will be noted that,

under paragraph 4(a)(iii) of the Policy, both registration and use of

the domain name in bad faith are required. Of the factors listed in paragraph

4(b) above, (i)-(iii) relate specifically to registration (and acquisition)

of the name, while (iv) relates to use following registration. However, in view

of the fact that these factors are stated to be inclusive, it follows that there

can be other factors that can be relied upon to point to bad faith, both in

registration and in use. In this regard, it is worth noting an early decision

of an Administrative Panel to the effect that registration in bad faith followed

by a passive holding of a domain name when there is no way in which it could

be used legitimately can amount to use in bad faith: Telstra

Corporation Ltd v Nuclear Marshmallows

WIPO Case No D2000-0003. In addition, it would be both mistaken and artificial

to confine paragraphs (i)-(iii) solely to the time of registration: presumably,

it would also be a use of a disputed domain name in bad faith to do so, after

registration, with one of the purposes outlined in those paragraphs. Support

for this view is to be found in several Panel decisions: see, for example, Estee

Lauder Inc v estelauder.com, estelauder.net and Jeff Hanna,

WIPO Case No D2000-0869 and E &

J Gallo Winery v Hanna Law Firm,

WIPO Case No D2000-0615.

In the light of the

above, the Complainant contends that the circumstances set out in subparagraphs

(i) and (iv) are present.

Acquisition for

purpose of sale or rent at a valuable consideration

In this regard, the

Complainant states that after its solicitors had sent a letter of demand

to the Respondent on February 13, 2001 (Complaint, Annexure G), it had

received a response from the Respondent in a letter dated February 19,

2001 (Annexure H). In this letter, the Respondent stated that he had "as

at that date" removed all DNS entries for the domain name but had

"absolutely no intention of cancelling the registration." The

letter concluded with the following statement: "Should your client

wish to purchase the domain name, I may be open to discussions concerning

this". There is no further evidence adduced concerning the question

of purchase of the domain name.

Does the Respondent’s

letter of February 13, 2001, including the statement last quoted above,

indicate that the Respondent has "registered or … 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 …for valuable consideration in excess of …documented

out-of-pocket costs directly related to the domain name" (within

the formulation in paragraph 4(c)(i))? There is no reference to price

in the letter, but the inference that the Respondent’s intention was to

sell the domain name can be drawn from the following:

- The Respondent’s

readiness to remove all DNS entries for the domain name once it

received the Complainant’s letter of demand.

- The absence

of any indication in the letter of the purpose for which the Respondent

had registered the domain, ie whether this was for the purpose of

carrying on a particular business by reference to that name.

- The refusal

to cancel the registration, coupled with an "invitation to

treat".

- The reference

to "purchase" rather than "transfer" of the

domain name, thereby indicating that that the Respondent was concerned

to receive a consideration for this in excess of its out of pocket

expenses. While no mention is made of an actual monetary amount,

it is clear that the Respondent was foreshadowing a bargaining process

in which a price would be settled between the parties and that this

would include a profit component in addition to any out of pocket

expenses.

In the light of the

above, the Panel concludes that the Complainant has established the bad

faith of the Respondent in registering and using the domain name within

the terms of paragraph 4(b)(i).

Acquisition in order

to attract Internet users

Evidence presented by the

Complainant indicates that, until at least February 19, 2001, Internet users

who accessed the URL www.telsra.com were automatically redirected to a gambling

website (Annexure K). It appears that this website attracts customers by paying

a commission to parties, such as the Respondent, who direct Internet traffic

to it (Annexure L, extract from "Casino Traffic" website). This traffic

can be generated by banner advertising or "whatever legal means necessary",

including via blind links (Annexure M, "Casino Traffic Frequently Asked

Questions"). Given the very high consumer recognition of the "Telstra"

brand, plus the existence of a number of domain names incorporating the "Telstra"

name, including <telstra.com>, it is clear that there is a high probability

that Internet users wishing to locate the Complainant will find the Respondent’s

website <telsra.com> and will then be diverted to the gambling site. This

comes within the formulation in paragraph 4(b)(iv), with the elements of "commercial

gain" and "likelihood of confusion …as to the source, sponsorship,

affiliation, or endorsement" of the Respondent’s web site being clearly

present. Similar findings involving diversion of Internet users to other sites

through the use of domain names that represent misspellings of another party’s

trade mark are to be found in Encylopaedia

Britannica, Inc v John Zuccarini Case

No D2000-0330 and Nicole Kidman v John

Zuccarini Case

No D2000-1415.

Other matters relevant

to registration and use in bad faith

As noted above, the

instances of bad faith referred to in paragraph 4(b) are not exhaustive,

and it is open to a Complainant to adduce evidence of other matters supporting

the inferences of registration and use in bad faith.

In this regard, the

Complainant has submitted that the redirection of Internet users to a

gambling site through the use of a confusingly domain name is embarrassing

to the Complainant and has the effect of tarnishing its reputation and

marks. The Complainant asserts (Complaint, para 52) that gambling is a

controversial issue in Australia where the Government has banned certain

online gambling sites. This controversy is within the personal knowledge

of the Panel, but cannot be taken into account for present purposes in

the absence of further evidence from the Complainant, eg newspaper articles,

Hansard references and so on. Nonetheless, the Panel is prepared to conclude

that the images contained on the website ("Gambling Girls")

to which Internet users are directed when they access <telsra.com>

are inappropriate images for users who are intending to access a telecommunications

site, and that this must inevitably tarnish the general reputation of

the Complainant. The Panel therefore concludes that the use of these images

and associations is further evidence from which the inference of registration

and use of the domain name in bad faith can be drawn.

Evidence of continued

use of the domain name in bad faith is also to be seen from the message

which now appears on the Respondent’s webpage, namely the message that

"Forbidden. You don’t have permission to access on this server."

(Annexure J). At the very least, this will be frustrating for Internet

users who will believe that they have been denied access to the legitimate

<telstra.com> website.

Finally, the Complainant

submits that, even if the Respondent’s current conduct (as outlined in the preceding

paragraph) is not to be regarded as a positive action constituting use in bad

faith, inaction is nonetheless to be regarded as within this concept, referring

here to the early Panel decision in Telstra

Corporation Limited v Nuclear Marshmallows

Case No D2000-0003 and the subsequent Panel decisions that have followed

this (Complaint, para 54). In light of the findings already made, it is unnecessary

for the present Panel to base its decision in the case on this specific ground.

6.4 Conclusions

The Panel finds that

the Complainant has established its case with respect to each of the elements

stated in paragraph 4(a) of the Policy.

7. Decision

The Administrative

Panel accordingly directs that the registration of the domain name <telsra.com>

should be cancelled.

Staniforth

Ricketson

Sole Panelist

Dated: May

11, 2001

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