telstra-pccw.com

WIPO Arbitration and Mediation Center

The Complainant in this administrative proceeding is Telstra Corporation Limited ("TCL") a company incorporated in Australia.

The Respondent is Domain-Broker-Labs, an organisation based in Seoul, Korea.

The domain name in dispute ("Domain Name") is <telstra-pccw.com>

The Domain Name was registered on September 7, 2000.

The registrar with which the domain name is registered is:

Network Solutions Inc
Herndon, Virginia

A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules’) both of which were implemented by ICANN on October 24, 1999, was received by WIPO in electronic format on December 22, 2000 and hardcopy on December 27, 2000. Payment in the required amount to the Center has been made by the complainant.

On January 4, 2001, a request for registrar verification was sent to the Registrar of Network Solutions requesting confirmation that it had received a copy of the complaint from the complainant, that the domain name was currently registered with it and that the Policy was in effect, and requesting full details of the holder of the domain name and advice as to the current status of the domain name.

On January 5, 2001, WIPO received a verification response from the Registrar confirming receipt of the complaint and verifying the domain name is registered and that it is active.

On January 8, 2001, notification of the complaint and commencement of the administrative proceeding was sent to the parties.

On January 30, 2001,WIPO notified the respondent that he had failed to comply with the deadline indicated in the notification of complaint by not filing a submission in response.

On February 2, 2001 an invitation was e-mailed to Clive Elliot inviting him to be the sole panelist. The invitation was accepted and returned on February 2, 2001.

On February 2, 2001, a notification of appointment of administrative panel and projected decision date ("the appointment notification") was sent to the complainant and the respondent. In accordance with the complainant’s request, the appointment notification informed the parties that the administrative panel would be comprised of a single panelist, Clive Elliott, and advised that the decision should be forwarded to WIPO by February 15, 2001.

On February 21, 2001 a request for an extension of time to complete the draft decision was made. This was granted and the new draft decision date moved to February 28, 2001.

The complainant is one of the two largest publicly listed companies in Australia. The 49.9% publicly issued stock has a market capitalisation of about AUD$60 billion. (Telstra is 50.1% owned by the Australian Federal Government). It is Australia’s leading telecommunications and information services company, offering a wide range of telecommunications and information services. Its revenue in the financial year 1999-2000 exceeded $A19 billion. The complainant is one of Australia’s largest employers. Its full-time employees as at 30 June 2000 numbered 50,761.

The complainant has filed applications with registrations pending for 69 trade marks comprising or containing the word "TELSTRA" in Australia, including a number in class 38 in respect of telecommunications services. The trade marks cover an extensive range of goods and services and span 17 of the 42 trade mark classes.

The complainant has also registered, or has filed applications with registrations pending for, a large number of "TELSTRA" trade marks overseas in countries including Korea, Hong Kong, Brunei, Cambodia, France, Germany, Indonesia, Ireland, Japan, Kazakhstan, Kiribati, Laos, 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. It has also obtained a registered Community Trade Mark.

The complainant states that it has for several years operated its principal web site at <www.telecom.com.au>, followed by <www.telstra.com.au>. In December 1999 the complainant relaunched its web site at <www.telstra.com> which <www.telstra.com.au> now resolves to. The site includes electronic customer services for its fixed-line and mobile-phone customers, news and other entertainment services as well as combining its White Pages directories and Yellow Pages directories, which previously were accessible only through separate sites located respectively at <www.whitepages.com.au> and <www.yellowpages.com.au>.

The complainant is the owner of many domain names containing the word "TELSTRA" including the following:

<telstra.com>; <telstra.net>; <telstra.org>; telstra.com.au>; telstra-inc.com>; and <telstrainc.com>.

The complainant states that Pacific Century CyberWorks ("PCCW"), is the Hong Kong-listed technology flagship of the Pacific Century Group, and is one of Asia’s leading integrated communications companies. PCCW has a strong global presence, with 17,000 employees in 25 offices in 18 countries around the world. PCCW operates NOW (Network of the World), a fully-converged TV-and-satellite Internet service, with a potential reach of more than 135 million cable television households under the AsiaSat3 footprint.

On April 13, 2000 Telstra and PCCW first announced a strategic Pan-Asian Alliance. They reached agreement in principle on the various aspects of an alliance that included:

(a) a merger of some of Telstra’s businesses and assets with businesses and assets from PCCW to create a 50:50 joint venture operating a global Internet Protocol backbone business.

(b) Telstra will purchase a stake in the mobiles business of PCCW.

(c) Telstra will invest in a 50:50 Internet data centre joint venture with PCCW.

With this alliance, Telstra and PCCW intend to establish a mobiles/wireless company, an Asia/Pacific Internet protocol backbone company offering regional and global reach and an internet data centers joint venture. This transaction will result in many of Telstra’s existing offshore operations being transferred into the IP backbone company and its future international growth in wholesale and mobile telecommunications being driven primarily through these joint venture companies. Evidently, these plans were extensively discussed in the media

The respondent registered <telstra-pccw.com> on September 7, 2000.

Upon becoming aware of the Domain Name registration, the complainant contacted PCCW to check whether it had authorised the registration. PCCW has advised the complainant that PCCW did not authorise registration of the Domain Name and further, that the complainant has its support in retrieving this Domain Name from the respondent.

The Domain Name currently resolves to a "free parking" style web site provided by its internet service provider/web host.

The complainant alleges the following:

"TELSTRA" is one of the best known brands in Australia and, has substantial operations in many overseas countries where it is working toward achieving world wide recognition through sponsorship and advertising. The products and services referred to above are all offered under or by reference to the trade mark "TELSTRA" (alone, or in combination with other trade marks such as Telstra ShopÒ , MobileNetÒ , White PagesÒ and BigPondÒ ).

The complainant says that it regularly advertises its services and products in all media and alleges they have spent in excess of 208 million dollars for the years 1999-2000. Their promotions in recent years has involved a number of campaigns advancing the Telstra name around Australia as being a major sponsor of many sporting, cultural and entertaining events around Australia. The "TELSTRA" trade marks are heavily promoted through advertising and sponsorship in Australia and overseas (for example through its sponsorship of the 2000 Olympic and Paralympic games).

The complainant alleges that Telstra’s web sites have received between 11 million and 22 million hits per month throughout the year 2000. During September 2000,thetelstra.com site was the fourth most frequently visited web site in Australia.

It is asserted that the word "TELSTRA" is an invented or coined word. The Domain Name incorporates the complainant’s trade mark "TELSTRA" and the relevant part of the Domain Name, has no meaning but for its association to the complainant’s trade mark.

Telstra expects to sign the alliance definitive documents with PCCW later this year. The complainant submits that the domain name has been registered and used because of the public announcement made by the complainant of its joint venture with PCCW.

The complainant claims that before the domain name was registered, the respondent did not carry on any business and was not commonly known by the name "Telstra-PCCW" or any other name consisting of TELSTRA.

It is submitted that the word "TELSTRA" is not one that traders would legitimately choose unless they were trying to create a false association with the complainant.The complainant also alleges that the domain name is confusingly similar and that it is the only entity (other than the subsidiaries and licensees) legitimately using Telstra as a trade mark or service mark in Australia or overseas.

No response has been filed.

Para. 4(a) of the Policy requires that the complainant must prove each of the following:

- The domain name is identical or confusingly similar to the trade marks; and

- The respondent has no right or legitimate interest in respect of the domain name; and

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

Para. 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by para. 4(a)(iii) referred to above.

Para. 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in para. 4(a)(ii) referred to above.

It is clear from the evidence that TELSTRA is a trade mark in which the complainant has rights, not just in Australia but in certain overseas areas. The complainant has traded extensively through, inter alia, Australia and the Asia Pacific region and has registered or applied for registration of the TELSTRA trade mark in a large number of overseas countries. It also has an active presence on the World Wide Web. There is clear support for the statement that TELSTRA is one of the best known brands in Australia and has substantial recognition internationally. Likewise, there is an assertion that TELSTRA is an invented or coined word and that the only association it has is with the complainant.

Likewise, the only evidence on record is that PCCW stands for Pacific Century Cyber Works a Hong Kong listed communications company. Also on record and not disputed is that Telstra and PCCW have announced a strategic Asian alliance which was first announced in April 2000, some months before the Domain Name was registered by the respondent.

As a combination of TELSTRA the name of the complainant and PCCW a contraction of its strategic partner, it appears on the evidence, that the complainant and its partner are able to claim trade mark rights in the combination. This combination also has a particular emphasis on TELSTRA that is undisputedly a well-known and protected trade mark. On this basis, it is found the trade mark TELSTRA PCCW is a protectable trade mark to which the domain name is identical.

In the absence of any response, it is difficult to see why the respondent chose the particular domain name, some months after an alliance was announced by the complainant and PCCW. Nor can it be envisaged that PCCW has any meaning other than as a contraction of the name of Pacific Century Cyber Works. In the absence of any reasonable explanation, it is difficult to see what justification the respondent had for registering the Domain Name. Given the considerable reputation and goodwill undoubtedly vesting in at least the TELSTRA part of the mark or name TELSTRA PCCW, it is found that the respondent has no right or legitimate interest in the Domain Name.

Given the reputation and the goodwill in the TELSTRA PCCW name and the public announcement which, it is understood, featured reasonably prominently in South East Asia, it is hard to see how the respondent can claim to have registered the name in good faith. The question of course arises whether the mere holding of the name without use is sufficient to meet this ground. There is no evidence that the respondent has actually used the domain name and accordingly this ground can only be made out if the proposition found in Telstra Corporation Limited v Nuclear Marshmallows, Case Number D2000-0003 is correct. To quote: "….The relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that Respondent is acting in bad faith". In that case inaction was determined to be within the concept of "being used in bad faith".

Taking the surrounding circumstances into account and the lack of any adequate explanation or the denial of bad faith, it is found that this ground is made out.

In view of the above, the domain name should be transferred to the complainant.

Clive Elliott
Sole Panelist

Dated: 1 March 2001