WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Telus Corporation v. Manuel Pitkov

Case No. D2018-2013

1. The Parties

The Complainant is Telus Corporation of Scarborough, Canada, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America (“United States”).

The Respondent is Manuel Pitkov of Lasalle, Quebec, Canada.

2. The Domain Name and Registrar

The disputed domain name <manage-mytelus.com> is registered with Shinjiru Technology Sdn Bhd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2018. On September 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 5, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2018.

The Center appointed Cherise Valles as the sole panelist in this matter on October 2, 2018. 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 is Canada’s fastest-growing national telecommunications company, with USD 13.8 billion of annual revenue and 13.1 million subscriber connections. The Complainant provides a wide range of communications products and services, including wireless, data, Internet protocol, voice, television, entertainment, video and home security, and it is Canada’s largest healthcare IT provider. It is a public company traded on the Toronto Stock Exchange and the New York Stock Exchange. The Complainant was recognized as Canada’s highest-ranked national communications provider for customer service in 2016.

The Complainant owns a number of trademarks in jurisdictions around the world for the term TELUS, including the following:

- Canadian trademark No. TMA484042 for TELUS, registered on October 15, 1997, in classes 38 and 42;

- Canadian trademark No. TMA421361 for TELUS, registered on December 24, 1993, in class 35;

- United States trademark No. 2396640 for TELUS, registered on October 24, 2000, in classes 37, 38 and 42;

- United States trademark No. 3613014 for TELUS, registered on April 28, 2009, in class 35;

- United States trademark No. 3543607 for TELUS, registered on December 9, 2008, in classes 35, 37 and 42;

- Canadian trademark No. TMA482089 for the TELUS logo, registered on September 5, 1997, in classes 9, 35, 37, 38, 41 and 42;

- Canadian trademark No. TMA490554 for the TELUS logo, registered on February 26, 1998, in classes 35, 37, 38, 41 and 42; and

- United States trademark No. 3963126 for the TELUS logo, registered on May 17, 2011, in class 36.

The Complainant owns the domain name <telus.com>, registered on December 13, 1994, which it uses in connection with its primary website, and <mytelus.com> registered on November 7, 1999.

The disputed domain name was registered on August 15, 2018.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

- The disputed domain name is identical to the Complainant’s registered trademark, TELUS, in light of the fact that it wholly incorporates the Complainant’s mark.

The Respondent lacks rights or legitimate interests in the disputed domain name.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.

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

- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:

(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.

The Complainant is the owner of multiple registrations in jurisdictions worldwide for the trademark TELUS, as indicated in Section 4 above.

The disputed domain name contains the Complainant’s TELUS trademark in its entirety. Previous panels have held that the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy. See, e.g., Oki Data Americas, Inc. v. Asdinc.com, WIPO Case No. D2001-0903.

Previous panels have held that the Top-Level Domain “.com” is generally irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark as it is a functional element. The inclusion of a hyphen in the disputed domain name is also irrelevant. Previous panels have held that punctuation such as hyphens would not avoid a finding of confusing similarity. See, e.g., Six Continents Hotels, Inc. v. Helen Siew, WIPO Case No. D2004-0656.

The addition of the generic words “manage” and “my” does not avoid confusing similarity between the disputed domain name and the Complainant’s TELUS trademark, as the TELUS trademark is nevertheless recognisable within the disputed domain name. Previous panels have established that adding a descriptive term to a complainant’s mark would not prevent a finding of confusing similarity under the first element. See, e.g., Eurodrive Services and Distribution N.V v. Transure Enterprise Ltd, Host Master and Above.com Domain Privacy, WIPO Case No. D2012-1453. See also section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Taking into account the inclusion of the Complainant’s TELUS trademark in full in the disputed domain name, and the inclusion of generic words and punctuation, the overall impression of the designation of the disputed domain name is that of being connected to the Complainant’s TELUS trademark.

In the light of the foregoing, the Panel finds that the disputed domain name <manage-mytelus.com> is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):

“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial 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 Respondent did not submit a response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

Previous panels have established that in order to shift the burden of production to the Respondent, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064.

The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Complainant’s TELUS trademark in any manner (which the Complainant has been using for 28 years). The Respondent has never been commonly known by the name of the disputed domain name. This fact on its own can be used as evidence of the Respondent’s lack of rights or legitimate interests in the disputed domain name.

The disputed domain name has not been used in connection with bona fide offerings of goods or services. The Respondent is using the disputed domain name in connection with a website that has been flagged by Google as a “[d]eceptive site” because it falsely appears to be a website for the Complainant which includes a login page to collect usernames and passwords from the Complainant’s customers as part of an apparent phishing scam. Previous panels have found that using a complainant’s trademark in connection with an unaffiliated website that falsely appears to be associated with the complainant does not constitute a bona fide offering of goods or services. See, e.g., LinkedIn Corporation v. Contact Privacy Inc. Customer 0138656558 / Scott Offord, Bytes and Sites Inc, WIPO Case No. D2016-1171. The Respondent’s use of the disputed domain name for a phishing scam shows that the Respondent is not engaged in a bona fide offering of goods or services.

By using the disputed domain name in connection with a website that falsely appears to be associated with the Complainant (which website contains an unauthorized reproductions of the Complainant’s TELUS logo, along with a form that requests users’ email address and passwords), the Respondent is engaged in misleading activities by conveying the false impression that Internet visitors are logging into a website associated with the Complainant. Previous panels have found a lack of rights or legitimate interests in a disputed domain name where a respondent uses a disputed domain name to impersonate a complainant in an effort to obtain personal information from Internet users. See, e.g., Terex Corporation v. Williams Sid, Partners Associate, WIPO Case No. D2014-1742.

In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct;

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.

Previous panels have found that registration of a disputed domain name so obviously connected with a complainant suggests opportunistic bad faith. See Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.

The disputed domain name was registered 28 years after the Complainant first used its TELUS mark. Given the Complainant’s reputation (especially in Canada where the Respondent resides), the Respondent was or should have been aware of the mark prior to registering the disputed domain name. The Respondent must have been aware of the Complainant’s TELUS trademark when he registered the disputed domain name, and must have registered it to disrupt the Complainant’s relationship with its customers or potential customers, or to attract Internet users for potential gain, both of which constitute evidence of registration and use in bad faith under the Policy. See Pancil, LLC v. Jucco Holdings, WIPO Case No. D2006-0676.

By using the disputed domain name to convey the false impression that Internet visitors are logging into a website for (or associated with) the Complainant, the Respondent clearly is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s TELUS trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Previous panels have held that such circumstances create bad faith. See, e.g., The Prudential Assurance Company Limited v. Domain Place, domainplace, WIPO Case No. D2009-1014

Finally, the Respondent’s use of the Complainant’s TELUS logo on the disputed domain name increases the likelihood of confusion between its website and that of the Complainant. Previous panels have held that use of a complainant’s logo on a respondent’s website is evidence of bad faith. See Construction Skills Certification Scheme Limited v. Mara Figueira, WIPO Case No. D2010-0947.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <manage-mytelus.com> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: October 12, 2018