As of this posting, the Telstra Corp Ltd v. Nuclear Marshmallows (WIPO D2000-0003, February 18, 2000) case is the most cited WIPO decision, with a whopping 1643 references in WIPO Complaints to date. (This does not account for how many times it has been cited in the National Arbitration Forum cases, which is approximately 406 times.) Regardless, it must be important if so many UDRP Arbitration Panels rely on it.
At the time of the decision, Telstra Corporation Limited was the largest company listed on the Australian Stock Exchange and the largest provider of telecommunications and information services in Australia. Respondent registered the domain “tesltra.org” which, at the time of filing, did not resolve to a web-site or other online presence.
The UDRP Panel quickly found that domain name was identical or confusingly similar to Complainant’s trademark and that the Respondent did not have rights or a legitimate interests in the domain. The most important language came from the Panel’s review of the third requirement, namely “bad faith.”
The Panel noted, “The significance of the use of the conjunction ‘and’ is that paragraph 4(a)(iii) requires the Complainant to prove use in bad faith as well as registration in bad faith. That is to say, bad faith registration alone is an insufficient ground for obtaining a remedy under the Uniform Policy.”
The Panel observed the following relevant information regarding the Respondent:
Prior to the issuing of the Complaint, the Complainant made substantial efforts to identify and contact the Respondent, using the details then current on the Registrar’s registry. During the course of these attempts, some of the contact details of the Respondent changed. The Complaint then renewed its efforts to contact the Respondent, using the changed contact details. These combined efforts disclosed that the street and post box addresses of the Respondent were for persons unassociated with the Respondent, and that the telephone number was for a person unassociated with the Respondent.
Relying upon this information, the Panel found that the Respondent did “not conduct any legitimate commercial or non-commercial business activity in Australia….[took] deliberate steps to ensure that its true identity cannot be determined and communication with it cannot be made….[and that] it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name….”
Another important finding for Complainant’s was the Panel’s discussion regarding Respondent inactivity.
[T]he 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 the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.
The Panel explained that paragraph 4(b) of the Uniform Policy provides a list of circumstances where bad faith could be found. The question the Panel attempted to answer was: What circumstances establish bad faith? The Panel found:
(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries, (ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name; (iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name, (iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and (v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
Ultimately, the Telstra.org case found that passive holding of a domain was bad faith.