Telstra Corporation Limited v. kids@m-a-i-l.com 987654321

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Telstra Corporation Limited v. kids@m-a-i-l.com 987654321

Case No. D2003-0169

1. The Parties

The Complainant is Telstra Corporation Limited of Melbourne, Victoria, Australia,

represented by Mallesons Stephen Jaques of Australia.

The Respondent is kids@m-a-i-l.com 987654321 of Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name is <telstrabigpond.com> which is registered

with OnlineNic, Inc. dba China-Channel.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the

"Center") on March 3, 2003. On March 5, 2003, the Center acknowledged

receipt of the Complaint and transmitted by email to OnlineNic, Inc. dba China-Channel.com

a request for registrar verification in connection with the domain name at issue.

On March 5, 2003, the Registrar transmitted by email to the Center its verification

response confirming that the Respondent is listed as the registrant and provided

the administrative, billing, and technical contact details of the Respondent.

The verification response also confirmed that the Uniform Domain Name Dispute

Resolution Policy applies to the domain name.

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").

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 March

7, 2003. The due date for Response as per the Rules, paragraph 5(a), was March

27, 2003. The Respondent did not submit any response. Accordingly, the Center

notified the Respondent’s default on March 28, 2003.

The Center appointed Harini Narayanswamy as the sole panelist in this matter

on April 9, 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.

4. Factual Background

The Complainant, Telstra Corporation Limited ("Telstra") is incorporated

in the Commonwealth of Australia and is Australia’s major telecommunications

and information services provider. The Complainant states that it is one of

the largest public listed companies in Australia with revenues during

the financial year 2001-2002 exceeding AU $ 20.8 billion, employing more than

40,000 full time employees. The Complainant has filed a copy of its annual

report for the year 2001-2002, from which these factual details pertaining to

the Complainant are garnered.

The trademark TELSTRA is owned by the Complainant and is a well known brand

in Australia. The Complainant states that it is trying to achieve world wide

recognition of its mark by means of sponsorships and advertisements while spreading

its operations to other cities, including Hong Kong. A sizable number of marks,

about 101, according to the Complainant contain the word "telstra".

These are registered or have been filed pending registration in Australia, covering

a wide range of goods and services, spanning 28 of the 45 trademark classes

including a number in class 38 in respect of telecommunication services. Annexure

E to the Complaint furnishes the print-out from the website of the Australian

Trademark Office pertaining to these trademarks.

The Complainant further states that it had registered or filed applications

with registrations pending for a large number of TELSTRA trademarks in various

other jurisdictions which include Hong Kong, Brunei Darussalam, Cambodia, France,

Germany, India, Indonesia, Ireland, Japan, Kazakhstan, Kiribati, Korea, Lao

People’s Democratic Republic, Malaysia, Mauritius, New Zealand, Papua New Guinea,

People’s Republic of China, South Africa, Russian Federation, Saudi Arabia,

Singapore, Taiwan, The Philippines, Tonga, United Kingdom, United States of

America, Vanuatu, Vietnam and Western Samoa. The Complainant has also obtained

a registered Community Trademark. The details of its international trademarks

are filed as Annexure F to the Complaint.

The Complainant asserts that it provides Internet services under the BIG POND

trademark. On October 8, 1996, the Complainant registered the term BIG POND

in Australia under classes 9, 35, 38, 41 and 42. The website, through which

it offers its Big Pond Internet Services, was first launched in November 1996.

On August 10, 2000, the Complainant registered the word BIG POND and device.

Annexure G of the Complaint bears testimony to this fact. The Panel also notes

that the Complainant has registered the mark BIG POND as a trademark in several

other countries as per details filed at Annexure H.

The Complainant claims ownership of several domain names containing the word

"telstra", including:

<telstra.com>

<telstra.net>

<telstra.org>

<telstra.com.au>

<telstra-inc.com>

<telstrainc.com>

and several domain names containing the words "big pond", including:

<bigpond.com>

<bigpond.net>

<bigpond.org>

<bigpond.com.au>

The popularity and use of the Complainant’s websites are well established.

According to the Complainant the various Telstra websites received between 11

million and 22 million hits per month during the year 2000 and these numbers

are increasing.

The Complainant contends that the trademarks TELSTRA and BIGPOND are widely

promoted in Australia and the world over through regular advertisements and

promotions and has furnished the figures for promotion of both the trademarks.

The Panel notes that the expenditure incurred on publicizing the two marks TELSTRA

and BIGPOND are considerable and a significant number of promotional campaigns,

including major sporting, cultural and entertainment events and programs are

conducted by the Complainant.

Telstra is an avid protector of its intellectual property rights and has been

successful in several UDRP cases pertaining to domain names violating its trademarks,

and has also obtained orders from the Federal Court of Australia in proceeding

VG 1 OF 2000 for transfer of <telstranet.com>.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain name <telstrabigpond.com>

was registered by Airspace Pty Limited with registrar Registrars.com prior to

it being registered by the Respondent. The Complainant had approached a director

of Airspace Pty Limited to transfer the domain name to the Complainant and thereby

sent a signed ownership transfer application form to Registars.com on December

31, 2001. The domain name was however not transferred to the Complainant. It

is the contention of the Complainant that the domain name was cancelled, instead

of being transferred.

The Complainant states that within 24 hours of cancellation of the domain name,

the Respondent has registered the domain name on January 26, 2002. The Complainant

further asserts that the Respondent has an intention to sell the domain name

as the contact details of the Respondent explicitly use the words "Domain

for Sale". A letter dated April 24, 2002, was sent by the Complainant to

the Respondent by registered post and email demanding transfer of the domain

name to the Complainant, which is marked as Annexure K. On May 20, 2002, the

letter was returned with the endorsement "No such address", and there

was no response to the email sent. The Complainant then sent a facsimile to

the registrar of the domain name, OnlineNic, Inc., requesting it to furnish

alternative contact details of the registrant which is filed as Annexure L.

To this letter also that the Complainant states no reply has been received from

the Registrar.

The Complainant has raised several legal points and has made reference to a

plethora of Policy rulings which are summarized hereunder:

The Complainant asserts that the domain name is confusingly similar to its

trademarks for the following reasons:

TELSTRA and BIGPOND are the registered trademarks of the Complainant.

The test to determine confusing similarity is by visual comparison. [1]

The disputed domain name is essentially or virtually identical to the Complainant’s

trademarks. [2] A domain name that incorporates,

in its entirety, a distinctive mark, creates sufficient similarity between the

mark and the domain name and renders it confusingly similar. [3]

Combining two of the Complainant’s prominent trademarks increases the likelihood

of confusion and associating the domain name with the Complainant. The Complaint

distinguishes the <telstraonair.com> decision from the present case. [4]

The Complainant claims that the Respondent has no right or legitimate interests

in the domain name for the following reasons:

Telstra’s use of its mark predates the registration of the domain name by at

least six years. The Respondent is not a licensee or in any way associated with

the Complainant. [5] Respondent was not using

the domain before the Complainant had acquired rights in its marks. The Complainants

trademark TELSTRA is distinctive. [6] The

BIG POND mark is not inherently descriptive of communication services and the

Complainant has built up an extensive reputation in the name. The name of the

Respondent does not include any parts of the domain name.

The grounds from which bad faith may be inferred, according to the Complainant

are:

The Respondent ought to have known of the Complainant’s trademarks [7]

since the Complainant has significant international presence, particularly in

the Asia Pacific region. The Complainant has registered or filed application

pending registration in several jurisdictions including Hong Kong. Failure to

verify by means of a trademark search constitutes bad faith registration. [8]

Bad faith can be attributed within the meaning of paragraph 4(b)(i) of the policy

for the purpose of selling the domain name, since the Respondent’s contact details

include the words ‘Domain for Sale’. [9]

It is presumed by the Complainant that the Respondent is in the practice of

monitoring cancelled domain names for registration, gives rise to bad faith

within the meaning of paragraph 4(b)(iv) of the Policy: attracting users for

commercial gain. [10]

B. Respondent

The Respondent did not file a response to the Complaint, despite the fact that

the Center, in compliance with paragraphs 2(a) and 4(a) of the Rules, has formally

notified the Respondent of the commencement of proceedings and sent a copy of

this Complaint to Respondent. The Respondent has been notified of these proceedings

by the Center and has not been denied its right to be heard in these proceedings.

6. Discussion and Findings

The sine qua non for a Complainant to succeed in these proceedings is to prove

three aspects set out in paragraph 4(a) of the Policy, which are that the domain

name should be:

A. Identical or confusingly similar to trademark in which the Complainant has

rights.

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

C. The domain name is registered and used in bad faith.

A. Identical or Confusingly Similar

In determining confusing similarity between a domain name that incorporates

several terms or trademarks, a mere visual comparison is a simplistic test.

The touchstone in determining confusingly similarity is whether the combination

of terms used in a domain name has the potential to mislead unsuspecting users.

If the domain name combines two or more terms, and if any one or more of those

terms are trademark(s), it is imperative to determine whether the particular

combination of terms used in the domain name has been engineered to mislead

or confuse Internet users to associate the domain name with the trademark(s)

in question. The strongest argument put forward by the Complainant is: a domain

name that incorporates, in its entirety, a distinctive mark creates sufficient

similarity between the mark and the domain name and renders it confusingly similar.

EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,

WIPO Case No. D2000-0047 (March 24, 2000)

The disputed domain name <telstrabigpond.com> incorporates the distinctive

word mark TELSTRA in its entirety. The domain name additionally contains the

terms "big" and "pond", which are common descriptive words.

It is the contention of the Complainant that the mark BIG POND is widely promoted

and has become distinctive, although the words "big" and "pond"

are common words, it is a coined term which is not directly descriptive of the

services or products of the Complainant. Despite these contentions put forward

by the Complainant, the fact remains that the BIG POND mark is an inherently

weak mark due to the use of two common dictionary words.

The Panel is also reluctant to accept the submission put forward by the Complainant

regarding the Telstra Corporation Limited v. Geonill Cha case, which

has been mentioned as WIPO Case No. D2002-0260

in the Complaint. The Panel finds the title of WIPO

Case No. D2002-0260 (May 28, 2002) is Telstra Corporation Limited v.

David John Singh, where the domain names in issue were <etelstra.com>

and <telstraonline.com>. The Panel therefore assumes that the Complainant

is referring to the case Telstra Corporation Limited v. Geonill Cha,

WIPO Case No. D2001-0301 (April 19, 2001).

It is the contention of the Complainant that the panel in that case had found

that the domain name <telstaronair.com> was identical or confusingly similar

to the TELSTRA mark and the trademark ON AIR, which was pending registration,

despite the fact that the trademark ON AIR was not a registered trademark. The

panel had found the term "on air" to be a potentially descriptive

term. It is the opinion this Panel that, even if the ON AIR mark was to be accepted

for registration subsequently, the mark ON AIR would still be considered a potentially

descriptive term. Similarly, the BIGPOND mark would be regarded as inherently

descriptive mark, despite the fact that the mark BIGPOND has been accepted for

registration. Further, the Complainant has not disclosed the details of disclaimers,

if any, regarding the registration. While the Panel has no hesitation in agreeing

that the disputed domain name is confusingly similar to the TELSTRA mark, due

to the strength of the TELSTRA mark, the BIGPOND mark cannot be treated on par

with TELSTRA mark and suffers from the inherent weakness discussed above.

The preponderance of evidence filed supports the finding that the Complainant

is undoubtedly the owner of the invented word mark TELSTRA and also has rights

in the BIG POND mark. The Panel agrees with the Complainant that combining two

of the Complainant’s trademarks increases the likelihood of confusion and associating

the domain name with the Complainant’s trademarks, which have been fully incorporated

in the domain name without any variation, and is likely to mislead unsuspecting

users.

The Panel finds that the combination of terms used in the domain name is virtually

identical and confusingly similar to the trademarks of the Complainant. The

Complainant has succeeded in establishing that the domain name is confusingly

similar to the trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel has considered the various submissions put forward by the Complainant

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

The Panel is satisfied that the trademark rights of the Complainant predate

that of the domain name registration.

The Panel’s opinion however differs regarding the submission made by the Complainant,

that the name of the Respondent does not include any parts of the domain name,

and concurs with the observation of the learned panel in EAuto, L.L.C. v.

Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO

Case No. D2000-0047 (March 24, 2000) regarding this point, where it was

observed that:

"A person or entity may legitimately register and use many domain

names that are different from its corporate name."

The Panel finds, the strongest argument in favour of the Complainant is that,

the trademark TELSTRA which is an invented word is distinctive and famous,

and the mark BIGPOND, which is a coined term, are owned by the Complainant.

It is axiomatic that other than the owner, no person or entity can rightfully

claim the use of an invented word or a coined term; particularly when it has

become distinctive by virtue of its usage in trade, and people associate these

marks with the Complainant. The Panel finds that the Complainant has categorically

stated that the Respondent is not a licensee and has refuted any association

with the Complainant.

In the light of all the findings rendered above and the fact that the particular

choice of terms used in the domain name is not normally opted for unless it

is with intent of creating a false association, the Panel finds that the Respondent

has no rights or legitimate interests in the domain name which incorporates

the trademarks of the Complainant.

C. Registered and Used in Bad Faith

The Complainant asserts that bad faith registration and use can be inferred

within the meaning of paragraph 4(b)(i) and 4(b)(iv) of the Policy. The Complainant’s

contention that the Respondent’s name "Domain for Sale" discloses

an intention to sell the domain name gives rise to bad faith within the meaning

of paragraph 4(b)(i). The Panel concurs with this submission of the Complainant.

The Panel finds that there are two distinct submissions made by the Complainant

as regards allegations of bad faith attributed to paragraph 4(b)(iv). The allegation

that the Respondent is engaged in a practice of monitoring cancelled domain

names and registering them for sale is admittedly only a presumption made by

the Complainant. No evidence has been submitted regarding the earlier registration

or the date of cancellation of the prior registration. The Panel therefore declines

to draw any conclusions whether the domain name was registered within a period

of 24 hours of cancellation of the earlier registration. The Panel finds that

the Complainant’s allegation of bad faith imputed to the above aspects is devoid

of any conclusive evidence; hence no findings can be made based on these claims.

The other submission made regarding bad faith within the meaning of paragraph

4(b)(iv) is that the Respondent ought to have known of the TELSTRA mark and

the connection of the BIGPOND mark with TELSTRA. Registration and use of a domain

name using this particular combination of terms is with the intention of gaining

mileage from a well known trademark proves bad faith within the meaning of paragraph 4(b)(iv)

of the Policy. A copy of the print out of the web page linked to the domain

name as on February 27, 2002, is filed as Annexure M and displays a list of

popular searches. It can be inferred that the Respondent is using the domain

name to benefit financially by creating a likelihood of confusion, in an attempt

to attract Internet users for commercial gain .The Panel finds merit in these

submissions made by the Complainant. The Respondent has registered the domain

name in bad faith and uses of the domain name in bad faith, within the meaning

of paragraph 4(b)(iv) of the Policy.

The Complainant has argued that failure to verify by means of a trademark search

constitutes bad faith registration. The Panel finds that there are varying opinions

in UDRP decisions regarding bad faith attributed to this aspect. The Panel however

states that in the instant case where the trademark in question is such a well

known mark this argument is redundant.

In conclusion, the Panel finds that for the reasons discussed above, the domain

name <telstrabigpond.com> has been registered and is being used in bad

faith pursuant to paragraph 4(b)(i) and paragraph 4(b)(iv) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with the Policy and the Rules,

the Panel orders that the domain name <telstrabigpond.com> be transferred

to the Complainant.

Harini Narayanswamy

Sole Panelist

Dated: April 23, 2003

Footnotes:

[1] Gateway, Inc. v. Pixelera.com, Inc.,

WIPO Case No. D2000-0109 (April 6, 2000)

[2] Myer Stores Limited v. Mr. David John

Singh, WIPO Case No. D2001-0763 (July 10, 2001);

Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S

Enterprises Ltd., WIPO Case No. D2000-0802

(September 9, 2000); The Stanley Works and Stanley Logistics, Inc. v. Camp

Creek Co., Inc., WIPO Case No. D2000-0113

(April 13, 2000); Nokia Corporation v. Nokiagirls.com aka IBCC, WIPO

Case No. D2000-0102 (April 18, 2000)

[3] EAuto, L.L.C. v. Triple S. Auto Parts

d/b/a Kung Fu Yea Enterprises, Inc., WIPO

Case No. D2000-0047 (March 24, 2000)

[4] Telstra Corporation Limited v Geonill

Cha, WIPO Case No. D2001-0301 (April 19, 2001)

[5] Compaq Computer Corporation v. Boris

Beric, WIPO Case No. D2000-0042 (March 28,

2000)

[6] Telstra Corporation Limited v. David

John Singh, WIPO Case No. D2002-0260

(May 28, 2002); Telstra Corporation Limited v. Nuclear Marshmallows,

WIPO Case No. D2000-0003 (February 18,

2000); The British Broadcasting Corporation v. Jamie Renteria, WIPO

Case No. D2000-0050 (March 23, 2000)

[7] Myer Stores Limited v. David John

Singh, WIPO Case No. D2001-0763 (July

10, 2001)

[8] Red Nacional De Los Ferrocarriles

Espanoles v. Ox90, WIPO Case No. D2001-0981

(November 21, 2001); Telstra Corporation Limited v. Unitel Media Group Limited,

Cheree Cullen and Michael Norris, WIPO

Case No. D2001-1422 (January 31, 2001); Telstra Corporation Limited v.

Nuclear Marshmallows, WIPO Case No. D2000-0003

(February 18, 2000); Telstra Corporation Ltd v. Warren Bolton Consulting

Pty Ltd., WIPO Case No. D2000-1293

(November 21, 2000)

[9] Automobiles Peugeot SA v. Good Domains,

Formerly Domains For Sale Inc, WIPO Case

No. D2002-0805 (October 28, 2002); Parfums Christian Dior v. QTR Corporation,

WIPO Case No. D2000-0023 (March 9, 2000);

Hoffmann-La Roche Inc. v. Domain for Sale, Domain for Sale HeatherWhite,

WIPO Case No. D2001-0650 (August 10, 2001);

Prada S.A. v. Domains For Sale Inc., WIPO

Case No. D2002-0512 (July 30, 2002)

[10] Yahoo! Inc. v. Casino Yahoo, Inc.,

Jon Maranda, WIPO Case No. D2000-0660

(August 24, 2000); Autosales Incorporated dba Summit Racing Equipment

v. John Zuccarini dba Cupcake Patrol, WIPO

Case No. D2001-0230 (March 30, 2001); Snapple Beverage Corp. v. Telmex

Management Services, WIPO Case No. D2002-0114

(April 22, 2002); Reuters Limited v. Stealth Commerce (a/k/a Telmex Management

Services), WIPO Case No. D2002-0223

(May 8, 2002); Softbank Corporation v. Omniscience (a.k.a. Stealth commerce

a.k.a. Lost in space, SA, a.k.a. Telmex management services,Inc. a.k.a. Organized

crime Inc., a.k.a. Bilham solutions), WIPO

Case No. D2002-0868 (November 4, 2002)

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