Telekom Austria AG v. William Stanley (TELEKOMAUSTRIA-DOM)

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

Telekom Austria AG v. William L. Stanley

Case No. D2002-0171

1. The Parties

The Complainant is Telekom Austria AG an Austrian Corporation of Vienna, Austria.

The Complainant is represented by Dr. Andreas Manak of Haarman Hemmelrath Hügel,

Attorneys at Law of Vienna, Austria.

The Respondent is William L. Stanley. The Respondent’s address as provided

by the Registrar’s Whois database is Kueniglbergstrasse, 46, Vienna, Austria.

The Respondent did not file a Response but has filed certain proceedings against

the US Department of Commerce in which his address is given as 9503 Blue Creek

Lane, Austin, TX, USA.

2. The Domain Name and Registrar

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

The domain name is registered with Versign/Network Solutions Inc., of Virginia,

U.S.A. ("the Registrar"). The domain name was registered by the

Respondent on December 18, 1999.

3. Procedural History

A Complaint submitted by the above Complainant was received on February 20, 2002,

(email) and February 26, 2002, (hard copy) by the World Intellectual Property

Organization Arbitration and Mediation Center ("WIPO Center").

On March 1, 2002, a request for Registrar verification was transmitted

by the WIPO Center to the Registrar, requesting it to:

- confirm that a copy of the Complaint was sent to it by the Complainant as

required by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy, paragraph 4(b);

- confirm that the domain name <telekomaustria.com> is registered with

it;

- confirm that the Respondent is the current registrant of the domain name;

- provide the full contact details (i.e., postal address(es), telephone number(s),

facsimile number(s), email address(es)) that are available in its WHOIS database

for the domain name registrant, technical contact, administrative contact and

billing contact, for the domain name;

- confirm that the Uniform Domain Name Dispute Resolution Policy applies to

the <telekomaustria.com> domain name;

- indicate the current status of the <telekomaustria.com> domain name;

- indicate the specific language of the registration agreement as used by the

registrant for <telekomaustria.com>;

- indicate whether the domain name registrant has submitted in its Registration

Agreement to the jurisdiction at the location of the principal office of the

Registrar for court adjudication of disputes concerning or arising from the

use of <telekomaustria.com> (i.e The United States District Court for

the Eastern District of Virginia, Alexandria Division).

By email dated March 4, 2002, Network Solutions Inc., advised WIPO Center as

follows:

- Network Solutions Inc., is the Registrar of the domain name registration

<telekomaustria.com>.

- William Stanley of TelekomAustria.com, Kueniglbergstrasse 46, Vienna, Austria

is shown as the "current registrant" of the domain name. TelekomAustria.com

at the same address is shown as the administrative, billing and technical contact.

- The domain name registration <telekomaustria.com> is currently in "active"

status.

- The Registrar has currently incorporated in its agreements the Uniform Domain

Name Dispute Resolution Policy ("UDRP") adopted by the Internet Corporation

for Assigned Names and Numbers ("ICANN") (hereinafter simply the "Policy").

- The language of the Registration agreement is English.

- The domain name registrant has submitted his Registration agreement to the

jurisdiction of the principal office of the Registrar for court adjudication

of disputes concerning or arising from the use of domain names.

By virtue of the registration agreement, the Respondent is bound by the provisions

of the Policy.

On February 21 and 26, 2002, the Respondent advised the WIPO Center that he

had not been advised of the administrative proceeding and that he had been talking

to the Complainant’s legal department on a daily basis. On March 1, 2002 he

advised WIPO Center that:

a) he did not wish to participate in the UDRP process initiated by the Complainant

which he did not recognise as a legal deciding authority;

b) he would be filing federal suit;

c) he was the rightful owner of the disputed domain name which, amongst many

functions, operates as a primary and secondary domain server. He threatened

the Registrar with legal proceedings.

Having verified that the Complaint satisfied the formal requirements of the

Policy and the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"),

the WIPO Center on March 5, 2002, transmitted by post-courier, facsimile, and

by email a notification of the Complaint and Commencement of Administrative

Proceedings to the Respondent as named in the Complaint.

The Complainant elected to have its Complaint resolved by a sole panelist;

it has duly paid the amounts required of it to the WIPO Center.

The Respondent was advised that a Response to the Complaint was required within

20 calendar days. The Respondent was also advised that any Response should

be communicated, in accordance with the Rules, by four sets of hard copy and

by email. The Respondent did not file a Response. On March 22, 2002, his attorney

advised the WIPO Center that the Respondent had on March 21, 2002, commenced

proceedings against the US Department of Commerce in the US District Court for

the Western District of Texas. In these proceedings, the Respondent challenged

the Policy and the policy-making role of ICANN. He sought from the WIPO Center

a stay of the present administrative proceedings.

The WIPO Center invited the Honorable Sir Ian Barker QC of Auckland,

New Zealand to serve as Sole Panelist in the case. It transmitted to him

a Statement of Acceptance and requested a declaration of impartiality and independence.

The Panelist duly advised acceptance and forwarded to the WIPO Center an executed

declaration of impartiality and independence. The Panel finds that the Administrative

Panel was properly constituted in accordance with the Rules and the Supplemental

Rules. On April 5, 2002, the Complainant sought to file further submissions

in response to the Respondent’s email. The Panel has determined not to receive

these submissions in view of the fact that the Respondent has chosen not to

file a response.

On April 3, 2002, WIPO Center forwarded to the Panel by courier the relevant

submissions and the record. The projected decision date is April 17, 2002.

The Panel has independently determined and agrees with the assessment of WIPO

Center that the Complaint meets the formal requirements of the Rules and the

Supplemental Rules.

4. Factual Background

The Complainant is a provider of mobile and fixed line networks for Internet,

data, image and multimedia communications. It serves 3.2 million access lines

in Austria with a market share in that country of 63% of voice telephony measured

in traffic volume. It has Internet and mobile communications business in Czech

Republic, Croatia and Slovenia. It has 18,560 employees and a Group turnover

of 3.9 billion EUR in 2000. A subsidiary is the largest provider of

mobile communications in Austria with 2.8 million customers. Prior to liberalization

of European telecom markets, the Complainant was for many years the only telecom

provider in Austria. It owns an Austrian trademark registered in 1995 for TELEKOM

AUSTRIA.

The website connected to the disputed domain name contains the legend "TelekomAustria.com

Terms and Conditions of Use" and statements about abuse of the site. There

are no offers, contact details or other customer information provided.

Prior to commencing the administrative proceeding, the Complainant contacted

the Respondent with a view to his transferring the domain name to the Complainant

or reimbursement of registration fees. In his various responses to the Complainant,

the Respondent refused to transfer the domain name. His assertions include the

following:

(a) The disputed domain name "… which among other functions (including

Telekom history) operates as the primary and secondary name server for many

profitable domains and businesses, wholly owned companies and joint venture

companies in many countries".

(b) He was still willing to negotiate a transfer when he returned to Austria

in March but sought an assurance that no legal steps be taken for 30 days after

discussions. (The Complainant claims that it refused to agree with this stipulation.)

(c) Complainant had "shut down" his Internet service in Austria and

forced him to manage his business from elsewhere.

(d) He is a part-time resident of Austria.

(e) He is involved in a software development project in Austin, Texas, USA.

(f) He threatened legal action against the Complainant and/or the Registrar.

(g) He was capable, confident, able and experienced to defend himself against

large corporations.

5. Parties’ Contentions

Complainant:

- The domain <telekomaustria.com> is identical to the Complainant’s trade

mark TELEKOM AUSTRIA, except that the domain name adds the generic top-level

domain ".com". According to Mobilkom Austria AG v Herbert Zajic,

WIPO Case No. D2001-0466, the addition

of the generic top-level domain ".com" is without legal significance

in determining similarity.

- The Respondent has no rights or legitimate interests in the domain name.

The Complainant gave him none. Furthermore, the Respondent cannot bring himself

within Paragraph 4(c) of the Policy because:

(i) The Respondent does not make legitimate non-commercial or fair use of the

domain. The website connected to the domain contains only the rather obscure

"Telekom Austria.com Terms and Conditions of Use" reference and the

comments on "abuse". The terms and conditions are not connected to

any offer. The website contains neither contact details nor other company service-information.

(ii) The "terms and conditions" were placed on the website in an

attempt by the Registrant to demonstrate that the domain name is being used

according to Paragraph 4(c) of the Policy. However, according to Paragraph 4(c)

the domain name has to be used in connection with a bona fide offering

of goods or services. Such offering has not been demonstrated. The website informs

about terms and conditions for a service that does not appear to exist. Therefore,

the domain name is not used in connection with such bona fide offering of goods

or services.

(iii) The Respondent is also not commonly known by the domain name.

- The domain name was registered and is being used in bad faith because:

(i) According to the WHOIS information, the Registrant is an Austrian resident

because of the Austrian address given. The Respondent also announced his intention

to "return" to Austria. The Respondent because of his connection with

Austria, must know that, in registering the domain name <telekomaustria.com>,

he violated the trademark rights of the Complainant.

(ii) The Respondent’s knowledge of Complainant’s name and trademark can also

be deduced from his email in which he used the phrase "… after the way

your company treated me …".

(iii) Prior to the commencement of this administrative proceeding, the Complainant

contacted the Respondent, informed him of the legal situation and offered to

refund the registration fees in return for the Respondent transferring the domain

name to the Complainant. The Respondent refused and replied aggressively claiming

prior unfair treatment of him by the Complainant.

(iv) In his first reply to Complainant, the Respondent stated that he conducts

a business by means of the domain and that he acts as a (host) provider. If

correct, the Respondent is a competitor of the Complainant which also conducts

business as (host) provider. The Respondent – as an Austrian part-time resident

– must have known of the name and mark of the Complainant. He registered the

domain name primarily for the purpose of disrupting the business of a competitor.

Knowledge of the Respondent of the Complainant’s name and mark can be inferred

from the Respondent’s statement that he had had contact with the Complainant

in the past.

(v) Respondent’s use of the domain name is an attempt to attract, for commercial

gain, Internet users to the website of the Respondent, by creating a likelihood

of confusion with the Complainant’s famous name and mark. Users could assume

sponsorship of, affiliation to, or endorsement by the Complainant of any product

or service on the Respondent’s website.

(vi) The Respondent did not register the domain for business use but in order

to prevent the Complainant from reflecting its name and trademark in a corresponding

domain name. Alternatively, he acted out of retaliation reasons in order to

gain – in case of a transfer of the domain – a benefit from the Complainant.

(vii) The Respondent’s emails lead to the conclusion that he registered the

domain name for the purpose of transferring the domain name registration to

the Complainant, for valuable consideration in excess of his expenses relating

to the domain name. The Respondent declares in his one email, (Annex 13) that

he refused to sell the domain to a company from Poland. This does however not

exclude the conclusion that he registered the domain name primarily for the

purpose of transferring it to the Complainant against valuable consideration.

(viii) The Respondent will not "just surrender the domain" but is

willing to open his mind to "reasonable suggestions". This statement

implies that he registered the domain in order to transfer it to the Complainant

against a valuable consideration in excess of his registration expenses.

Respondent:

The Respondent has filed no Response but supplied a copy of his claim in a

US Court against the US Department of Commerce. The Panel cannot accept this

pleading in lieu of a Response. Respondent could have addressed all the Complainant’s

assertions as detailed in the Complaint. He chose not to do so. The Panel cannot

accept allegations recorded in a Statement of Claim presented outside this case

proceeding, whether or not accompanied by documentary evidence or affidavits,

which could have been filed in support of a Response in the present case. The

Respondent clearly stated that he does not accept the Panel’s jurisdiction.

The pending suit in the US is res inter alios acta.

6. Effect of US Court Proceedings

Paragraph 18 of the Policy permits a Panel, in its discretion, either to suspend

or terminate the administrative proceeding or else proceed to a decision in

the event of any legal proceedings initiated prior to or during an administrative

proceeding "in respect of a domain name dispute that is the subject of

the complaint".

The legal proceedings commenced by the Respondent in the United States are

not filed against the Complainant or the Registrar but against the US Department

of Commerce solely. One of the causes of action refers to the present domain

name dispute. Because Paragraph 18 of the Policy refers to proceedings "in

respect of a domain name dispute that is the subject of the Complaint",

the Panel considers that Paragraph 18 applies where both Complainant and Respondent

are parties to legal proceedings which seek to assert or prevent use of the

disputed domain name between a trademark owner and a domain name registrant

(e.g. Proceedings under the United States Anti-Cybersquatting Consumer Protection

Act).

Even if the term ‘legal proceedings’ were to be interpreted more liberally,

the Panel does not consider that the present administrative proceedings should

be suspended or terminated. The Court in question has no jurisdiction over this

Panel or the WIPO Center. The proceedings constitute a challenge to ICANN and

the Policy in terms of US constitutional law. One would expect them to take

some time to be completed by jury trial as requested in the pleading. The Respondent

chose not to participate in the administrative proceeding and present his side

of the story to the Panel. Accordingly, the Complainant is entitled to have

its Complaint considered by the Panel, which declines to suspend or terminate

the administrative proceeding.

7. 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 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 legitimate rights or interests in respect of the

domain name; and

- that the domain name has been registered and is being used in bad faith.

The disputed domain name is identical to the Complainant’s registered trademark.

The first criterion is proved.

As to the second criterion, the Complainant gave the Respondent no legitimate

rights or interests in respect of the domain name. Paragraph 4(c) of the Policy

sets out matters which a Respondent is entitled to raise which, if found by

a Panel to be proved based on an evaluation of all evidence presented, should

demonstrate a Respondent’s rights or legitimate interests to a domain name.

The Respondent here has chosen not to submit anything to the Panel in support

of any defence he might have under Paragraph 4(c) of the Policy. Consequently,

the inference remains that because the Complainant gave the Respondent no rights

to the name, he has none. The second criterion has been established.

The Panel is prepared to infer bad faith registration and use by the Respondent

for the following reasons:

(a) As a part-time resident of and a visitor to Austria and a person with an

address there, he must have been aware of the Complainant and its activities

which impinge on the daily lives of Austrian residents who use telephones. Although

the Complainant now faces competition, it was a monopoly supplier of telecom

services for many years and its brand must have been apparent to most telephone

users.

(b) The Respondent’s website offers no goods or services.

(c) The Respondent has clearly indicated that he is not prepared to transfer

the domain name to the Respondent for repayment of registration costs. The inference

is that he would only contemplate a transfer for a greater consideration. The

Panel is in no position to determine Respondent’s motivation for this stance.

There is no evidence of any bad treatment of him at the hands of the Complainant.

(d) Registration by the Respondent of the disputed domain name would make the

internet user believe that Complainant had endorsed or sponsored the Respondent

who was therefore in some way connected with it. This could disrupt Complainant’s

business.

8. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain name <telekomaustria.com> is identical to the trademark

to which the Complainant has rights; and

(b) That the Respondent has no rights or legitimate interests in respect of

the domain name; and

(c) That the 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 <telekomaustria.com> be transferred

to the Complainant.

Hon. Sir Ian Barker QC

Sole Panelist

Dated: April 11, 2002

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