telstrabigpond.com

WIPO Arbitration and Mediation Center

The Complainant is Telstra Corporation Limited of Melbourne, Victoria, Australia, represented by Mallesons Stephen Jaques of Australia.

The Respondent is [email protected] 987654321 of Hong Kong, SAR of China.

The disputed domain name is <telstrabigpond.com> which is registered with OnlineNic, Inc. dba China-Channel.com (the "Registrar").

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.

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 Australiawith 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>.

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:

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]

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 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]

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.

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.

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 Complainantregarding 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.

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.

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.

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)