Telstra Corporation Ltd. v. Shinpyo Kang; 11

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Telstra Corporation Limited v. 11/Shinpyo Kang

Case No. D2001-0623

1. The Parties

The Complainant is Telstra Corporation Limited, a company incorporated in Australia

with its registered office located at 38/242 Exhibition Street, Melbourne, Victoria

3000, Australia. It is represented by Ms. Effie Markopoulos and Mr. Warwick

A. Rothnie of Mallesons Stephen Jaques, Melbourne, Australia.

The Respondents are either or both of 11 and an individual, Shinpyo Kang, of

Seoul, Republic of Korea. No postal or street address is available for the Respondents.

2. The Domain Name and Registrar

The domain name at issue is <imt2000telstra.com>.

The Registrar with which the domain name is registered is Internet Names World

Wide (a division of Melbourne IT Limited), 120 King Street, Melbourne, Victoria

3000, Australia.

3. Procedural History

On May 2, 2001, a Complaint was received by the WIPO Arbitration and Mediation

Center ("WIPO Center") for decision in accordance with the Uniform

Policy for Domain Name Dispute Resolution Policy ("the Policy"), adopted

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

on August 26, 1999.

On May 15, 2001, the Registrar responded to a request for Verification of the

domain name, confirming details of the Respondents, that the Policy applied

to the domain name and that the current status of the domain name was "active".

On May 15, 2001, the WIPO Center sent a notification of complaint and commencement

of administrative proceedings to the Respondents. The Respondents were advised

that a response to the Complaint was required within 20 calendar days i.e. by

June 3, 2001.

No response was received from the Respondents.

On June 8, 2001, a Notification of Respondent Default was sent to the

Respondents.

On June 19, 2001, the WIPO Center informed both parties by email

that an administrative panel comprising Andrew Brown had been appointed.

The Panel is satisfied that the Complaint was filed in accordance with the

requirements of the Rules and Supplemental Rules, that the Complaint was properly

notified to the Respondents in accordance with the Rules, and that the Administrative

Panel was properly constituted.

4. Factual Background

The Complainant has asserted and provided evidence in support

of the following facts. Unless stated otherwise, the Panel finds these facts

established.

The Complainant is a telecommunications company and is one of the two largest

publicly listed companies in Australia. It is owned 50.1% by the Commonwealth

Government of Australia and 49.9% by approximately 2.14 million shareholders.

The Complainant is the successor in title to the telecommunications business

operated from 1901 to 1975 by the Australian Commonwealth Post Master-General

and from 1975 under the name "Telecom Australia" by the Australian

Telecommunication Commission and the Overseas Telecommunications Commission

("OTC"). Telstra was formed in 1992 by the merger of Telecom Australia

and OTC and adopted Telstra Corporation Limited as its legal name in April 1993.

At that stage it was still trading domestically as Telecom Australia, however,

it was trading offshore as "Telstra". On July 1, 1995, the domestic

trading name Telecom Australia was changed to "Telstra". TELSTRA is

one of the most well-known brands in Australia.

The Complainant has registered, (and has filed applications with registrations

pending for), 68 trademarks comprising or containing the word TELSTRA in Australia

including a number of registrations in class 38 in respect of telecommunication

services. The Complaint has exhibited these registered trademarks and pending

applications.

The Complainant has registered, or has filed applications with registrations

pending for, a number of TELSTRA trademarks overseas in various countries. The

Complainant has registered the trademark TELSTRA in Korea (where the Respondents

are located). The Complaint is also the owner of over 50 domain names containing

the word TELSTRA.

The TELSTRA trademarks have been heavily promoted through advertising and sponsorship

in Australia and overseas. For example, the Complainant sponsored the 2000 Sydney

Olympic and Paralympic Games which received worldwide press and television coverage.

All the Complainant’s advertising in Australia media since 1995 (and in overseas

locations since 1993) has been by reference to the TELSTRA brand. Promotional

and advertising expenditure is very significant ranging from A$164 million in

1996/7 to A$181 million in 2000/2001.

The Complainant has a significant international presence. It operates a number

of businesses in a number of Asia-Pacific, North American and European countries,

either alone or in partnership.

The Complainant has also submitted detailed evidence of its activities in Korea:

(i) The Complainant’s presence was known in Korea during the 1998 Seoul Olympics

during which the Complainant worked with Korea’s Telecom provider;

(ii) Telstra Korea Limited is a 100% subsidiary of the Complainant and began

operations in August 1999, providing wholesale voice services;

(iii) The TELSTRA brand was exposed extensively on television throughout the

world, including Korea, during the lead up to and in the course of the Sydney

Olympics in September 2000;

(iv) The Complainant advertised in Korean newspapers prior to the Australian

Prime Minister’s visit to Korea in May 2000;

(v) Reports in relation to the Complainant’s activities in Korea have been

published in the Korean press prior to the registration by the Respondents of

the disputed domain name.

The Complainant has been involved in the development of "IMT-2000".

IMT-2000 is a common telecommunication industry abbreviation for "International

Mobile Telecommunications-2000". It refers to the third generation mobile

system which was scheduled to start in some parts of the world in the year 2000.

The International Telecommunications Union ("ITU") has been involved

in (amongst other things) the standardization of IMT-2000. The Complainant is

an operator of IMT-2000 and has participated in various activities organised

by the ITU including the harmonisation and standardization procedure.

On October 23, 2000, the Respondents registered the disputed domain name <imt2000telstra.com>.

On December 13, 2000, the Complainant’s solicitors wrote to the Respondents

by email, requiring them to either cancel the domain name or transfer it to

the Complainant.

On December 18, 2000, the Respondents replied by email refusing to surrender

the name. The email is reproduced in its entirety:

"I’m wonder recieving unwanted and unexpected your e-mail for my domain.

Because I don’t know and I didn’t have ever heard your trade telstra. Before

recieving your unwanted email, I didn’t know telsta in where country was.

In my country your trade Telstra is not well known as your thought. If you

ask anybody in my own country and though other country which has known telstra,

you will recognize nobody known Telstra.

swear my god, I didn’t registered beside your trade to confuse and imfringe

your right.

But I’m registered my domain imt2000telstra that imt2000telephone using imt2000technology

plus strada which means "a way" by english.

If you have any valuable right unimpended, I have also same right corresponds

to it.

I think your demand which protests your right and if you commerse imt2000 in

your company by your own name you did obligate yourself to protect your name

association with imt2000.

IMT2000 technology, service and producs is boomed in my country.

I want supplying others informations(contents) through imt2000technology, networking

to my clients and I needs my internet zip name.

But I didn’t deal with imt2000 products in association with telstra and telstra

products.

swear my god, I didn’t registered beside your trade to confuse and imfinge

your right.

But I’m registered my domain imt2000telstra that imt2000telephone using imt20000technology

plus strada which means "a way" by english.

thanks for your recognition of TELSTRA.

Using my domain imt2000tel stra.com, I swear did not impringe your telstra"

The domain name <imt2000telstra.com> currently resolves to a "free

parking" website that advertises the services of Verio, the Internet service

provider (which is the technical contact for the domain name).

5. Parties’ Contentions

A. The Complainant

The Complainant contends that the domain name <imt2000telstra.com> is

confusingly similar to the Complainant’s extensive portfolio of TELSTRA trademarks,

which have been registered in numerous countries, including Korea.

The Complainant contends that TELSTRA is a distinctive, invented or coined

word and is not one that traders would legitimately chose unless they were trying

to create a false association with the Complainant. It claims that, given the

extensive reputation through Asia and Australia of TELSTRA, the public would

expect the registrant and user of the disputed domain name to be associated

with the Complainant, and that this likelihood of confusion is increased when

the word "TELSTRA" is combined with "IMT 2000", which is

a telecommunications service that the Complainant operates.

The Complainant also contends that the Respondents have no rights or legitimate

interests in respect of the disputed domain name because the Complainant’s use

of the mark predates the registration of the disputed domain name and the Respondents

do not have any association with the Complainant. The Complainant has not licensed

or otherwise permitted the Respondents to use any of its trademarks, nor has

it licensed or otherwise permitted the Respondents to apply for or use any domain

name incorporating any of those marks.

The Respondents were not using the domain name before the Complainant acquired

rights in the TELSTRA trademark and do not carry on any business and were not

commonly known by the name TELSTRA, or any other words including the word TELSTRA,

before the domain name was registered.

The Complainant contends that the Respondents’ explanation of the use of the

mark is implausible. Apart from anything else "strada" is not an English

word and has no meaning in English. From this, the Complainant concludes that

the explanation was concocted after the event to justify the registration of

the domain name.

The Complainant contends that the Respondents are well aware of the reputation

of the mark TELSTRA. It bases this contention on the evidence that TELSTRA is

a well-known trademark internationally and is highly distinctive, and that its

significant international reputation was boosted by the extensive promotion

the Complainant achieved with the Sydney Olympic Games in September 2000. The

Complainant notes in this regard the timing of the Respondents’ registration

of the disputed domain name on October 23, 2000, just after the Sydney Olympic

Games.

It contends that the Respondents’ choice of the mark TELSTRA coupled with IMT

2000 (a telecommunications service) is not coincidental and the intention of

this registration is to:

(a) attract Internet users to the Respondents’ online location by creating

a likelihood of confusion with the Complainant’s marks; or

(b) register the domain name with the aim of later selling it for an excessive

price; or

(c) register the name to prevent the Complainant from registering it.

B. The Respondents

There has been no formal response from the Respondents.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a complaint on the basis of the statements and documents submitted

in accordance with the policy, these rules and any rules and principles of law

that it deems applicable".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is

to show:

- That the domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights;

and

- That the Respondent has no rights or legitimate interests in respect of the

domain name; and

- That the domain name has been registered and is being used by the Respondent

in bad faith.

Domain name is confusingly similar/identical to Complainant’s trademark

The Complainant has provided extensive evidence of registrations of its trademark

TELSTRA in some 29 countries (including Korea) and as a Community Trade Mark.

The Panel considers that the mark is associated with the Complainant and the

Complainant’s products and services, particularly within Australia and the Asia-Pacific

region.

The Panel accepts the Complainant’s contentions that the likelihood of confusion

is increased by the fact that the disputed domain name contains both the Complainant’s

trademark TELSTRA and the word IMT2000, a telecommunications industry abbreviation

for the third generation mobile system which the Complainant operates. The domain

name is a combination of the Complainant’s distinctive trademark and additional

words which do nothing to alter the fundamental character of the domain name

as referring to some aspect of the Complainant and its marks (Telstra Corporation

Limited v Ozurls, WIPO Case No.D2001-0046).

Accordingly, the Panel finds that the domain name <imt2000telstra.com>

is confusingly similar to the trademark TELSTRA in which the Complainant has

rights.

No legitimate rights or interest in respect of the domain name

The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel

to be proved, shall demonstrate the Respondents’ rights or legitimate interest

in the domain name. These circumstances are:

(i) before any notice to the Respondent of the dispute, the Respondent’s use

of, or demonstrable preparations to use, the domain name or a name corresponding

to the domain name in connection with the bona fide offering of goods or services;

or

(ii) the Respondent (as an individual, business or other organisation) has

been commonly known by the domain name, even if the Respondent has acquired

no trademark or service mark rights; or

(iii) the Respondent is 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.

The Panel finds that none of the conditions outlined in (i) to (iii) above

have been made out by the Respondents. The Respondents have not provided any

evidence on which the Panel could base such a finding. Nor does any evidence

from the Complainant give rise to a suggestion that such a finding should be

made. The Panel finds it appropriate to draw an adverse inference from the Respondents’

failure to respond to the Complaint (SSL International PLC v Mark Freeman,

WIPO Case No. D2000-1080 and

Alta Vista Company v Grandtotal Finances Limited, WIPO

Case No. D2000-0848.)

The Panel accepts the Complainant’s contentions that:

(a) the Complainant’s use of the mark predates the registration of the disputed

domain name;

(b) the Respondents do not have any association with the Complainant; and

(c) the Respondents do not carry on any business and were not commonly known

by the name TELSTRA or any other words including the word TELSTRA before the

domain name was registered.

Overall, the Panel can find no evidence to demonstrate that the Respondents

have legitimate rights or a legitimate interest in the disputed domain name.

The Panel therefore finds that the Complainant has met the requirement in paragraph

4(a)(ii) of the Policy.

Domain name has been registered and is being used in bad faith

Paragraph 4(b) of the ICANN Policy states:

"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:

(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 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 should be noted that the circumstances of bad faith are not limited to the

above.

The Panel concludes that the Respondents’ conduct is in breach of paragraph

4(b)(iv) of the Policy above. Although the Respondents have not provided any

formal response, a number of the statements made in their email to the Complainant’s

solicitors point to bad faith within the scope of this sub-paragraph.

The statement made by the Respondents:

"I want supplying others informations (contents) through imt2000technology,

networking to my clients and I needs my internet zipname." (sic)

demonstrates that the Respondents intended to market their IMT related services

via the domain name <imt2000telstra.com>. The Respondents could have chosen

any other suffix to use with the generic name "imt2000" and did not

need to use the Complainant’s well-known trademark. The Respondents’ attempt

to explain their choice of name i.e. "imt2000telephone using imt2000technology

plus strada which means ‘a way’ by English" is implausible and represents

an unsuccessful attempt to find an explanation after the event. Even on the

Respondents’ explanation, the domain name would be <imt2000telstrada.com>

not as registered by the Respondent.

Internet users encountering the domain name <imt2000telstra.com> will

be likely to strongly identify the Telstra component of the domain name and

associate it with the Complainant. This is likely to give rise to confusion

with the Complainant’s well-known trademark such that users will think the site

is operated by the Complainant or is affiliated with it (when it is not).

The Policy requires not only that the Respondent has registered/acquired the

domain name in bad faith, but also that the Respondent is using the domain name

in bad faith. The domain name site resolves to a "free parking" website

that advertises the services of Verio, the Internet service provider which is

the technical contact for the domain name. This evidences bad faith use since

the domain name containing the Complainant’s well-known trademark leads to a

site which has no connection with the Complainant. Indeed, the Panel infers

from the Respondents’ email explanations and actions that, had it not been for

the Complaint, this site would have been in even more active use.

The Panel therefore finds the domain name has been registered and is being

used in bad faith.

7. Decision

For the foregoing reasons, the Panel decides that:

(a) the domain name registered in the name of the Respondents is identical

or confusingly similar to the trademark TELSTRA to which the Complainant has

rights; and

(b) the Respondents have no rights or legitimate interests in respect of the

domain name in dispute; and

(c) the Respondents’ domain name has been registered and is being used in bad

faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that

the registration of the domain name <imt2000telstra.com> be transferred

to the Complainant.

Andrew Brown

Sole Panelist

Dated: June 28, 2001

More cases by this complainant

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• Telstra Corporation Ltd. v. Nuclear Marshmallows — D2000-0003 · telstra.org · Transfer · 18 Feb 2000
• Telstra Corporation Ltd. — D2000-0002 · Terminated