By Frank Baird III, Legal Team
In the Telstra Corporation Limited v. E-Promote decision, an expert at the Domain Name Commission recently ordered that several disputed domain names (telstaclear.co.nz, telstarclear.co.nz, and telsraclear.co.nz) be transferred to TelstraClear Limited from San Francisco’s E-Promote.
Telstra Corporation Limited is a telecommunications and entertainment company based in Australia, and TelstraClear Limited is their New Zealand subsidiary. TelstraClear is the second largest telecommunication provider in New Zealand and has provided goods and services to the island nation since 1996. Telstra is the owner of several trademark registrations in New Zealand for TELSTRACLEAR, TELSTRA, and CLEAR. The company’s principal website is telstraclear.co.nz, and Telstra owns over two-hundred-fifty domain names incorporating ‘Telstra.’
The Commission’s expert found that Telstra had rights in trademarks that were similar to the disputed domain names. To establish unfair registration, Telstra had to show the following: (1) the domains were registered or acquired in a manner which took unfair advantage of, or were unfairly detrimental to, Telstra’s rights, or (2) the domains have been or were likely to be used in a manner which takes unfair advantage of Telstra’s rights.
The expert concluded the disputed domains were typical typosquatting, stating that it was clear that E-Promote registered the domain names with slight misspellings of Telstra’s trademarks hoping to direct traffic to their website. The fact that E-Promote had been the subject of many other successful complaints and because of their operation of ‘click-through’ websites, helped establish a finding of bad faith.
Source: Sedo.com -- Reprinted with permission -- August 12, 2008