Telstra Corporation victorious in typosquatting case
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In Telstra Corporation Limited v E-Promote (June 6 2008), a Domain Name Commission expert has ordered that the domain names 'telstaclear.co.nz', 'telsraclear.co.nz' and 'telstarclear.co.nz' be transferred to Telstra Corporation Limited.
In June 2006 New Zealand instituted a dispute resolution service for '.nz' domain names similar to the Nominet system in the United Kingdom. Approximately 30 disputes have been decided by experts appointed by the dispute resolution service and numerous others have been resolved without the need to appoint an expert.
Telstra is a leading Australasian telecommunications and multi-media company. It has provided telecommunications goods and services under the trademark TELSTRA CLEAR in New Zealand since December 2001. Telstra also owns the trademarks TELSTRACLEAR, TELSTRA and CLEAR, as well as over 250 domain names incorporating the word 'Telstra'. In New Zealand, its principal domain name is 'telstraclear.co.nz'.
In April 2008 Telstra lodged a complaint in relation to the registration of 'telstaclear.co.nz', 'telsraclear.co.nz' and 'telstarclear.co.nz' by E-Promote (San Francisco).
E-Promote filed no response to the complaint, but was no stranger to the '.nz' dispute resolution procedure, having been the subject of 10 previous domain name disputes (including 'huggies.co.nz', 'thaiairways.co.nz' and 'umbro.co.nz'). E-Promote filed no evidence or submissions.
The expert had no difficulty finding that Telstra had rights in respect of trademarks that are similar to the disputed domain names. In addition, Telstra was required to show that the domain name registrations were unfair because:
- they were registered or acquired in a manner which took unfair advantage of, or were unfairly detrimental to, Telstra's rights; or
- they have been or are likely to be used in a manner which takes unfair advantage of, or were unfairly detrimental to, Telstra's rights.
The expert held that the registration of the domain names at issue was a typical case of typosquatting. According to the expert, the inference that the domain names had been registered with slight misspellings of Telstra's trademarks in the hope that some traffic would be directed to E-Promote’s websites was inescapable. The fact that E-Promote operates 'click-through' websites - presumably for a fee - was said to be further evidence of bad faith, as well as the fact that it had been the subject of many other successful complaints.
Kate Duckworth, Baldwins, Wellington
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