TPG Telecom Limited v Luis Alberto Laichter

WIPO Case No. D2024-3432

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

TPG Telecom Limited v. Luis Alberto Laichter

Case No. D2024-3432

1. The Parties

The Complainant is TPG Telecom Limited, Australia, represented by Bird & Bird LLP, Australia.

The Respondent is Luis Alberto Laichter, Argentina.

2. The Domain Names and Registrars

The disputed domain names <tpgtelecom.app>, <tpgtelecom.biz>, <tpgtelecom.network>, and

<tpgtelecom.online> are registered with Spaceship, Inc. (the “Registrar”).

The disputed domain name <tpgtelecom.business> is registered with Sav.com, LLC. (the “Registrar”)

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2024. On August 22, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 22, 2024 and August 25, 2024, the Registrars

transmitted by email to the Center its verification response confirming that the Respondent is listed as the

registrant and providing the contact details.

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 4, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2024.

The Center appointed Angelica Lodigiani as the sole panelist in this matter on October 1, 2024. 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

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4. Factual Background

The Complainant is an Australian company resulting from the merger, in 2020, between Vodafone Hutchison mobile telecommunication services to customers across more than 5,700 mobile sites, and approximately 35,000 km of metropolitan, inter-capital and subsea cable systems. For the 2023 financial year, the Complainant’s group service revenue amounted to AUD 4.632 million. The Complainant is the second largest telecommunication company listed on the Australian Securities Exchange with a current market capitalization of USD 8.4 million.

Australia Pty Limited and TPG Corporation Limited (subsequently named TPG Telecom Limited). The

The Complainant is the owner of the following trademarks consisting in, or including the word “tpg”:

- TPG (word), Australia registration No. 2145024, registered on December 23, 2020, covering goods
and services in classes 9 and 38;

- TPG (figurative), Australia registration No. 2224669, registered on November 1, 2021, covering goods
and services in classes 9 and 38;

- TPG TELECOM (word), Australia registration No. 2145022, December 23, 2020, covering goods and
services in classes 9 and 38;

- TPG TELECOM (figurative), Australia registration No. 2145026, December 23, 2020, covering goods
and services in classes 9 and 38;

The Complainant is also the owner of the domain name <tpgtelecom.com.au>, registered in 2016 through one of the Complainant’s subsidiaries.

The disputed domain names are the following:

Domain Name	Creation Date	Registrant
<tpgtelecom.network>	April 2, 2024	Luis Laichter
<tpgtelecom.app>	April 2, 2024	Luis Laichter
<tpgtelecom.biz>	April 2, 2024	Luis Laichter
<tpgtelecom.online>	April 2, 2024	Luis Laichter
<tpgtelecom.business>	April 2, 2024	Luis Alberto Laichter

The disputed domain names resolve to a website at “ promoting management, acquisition and other domain name services.

5. Parties’ Contentions
A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

Notably, the Complainant contends that the disputed domain names are identical to the Complainant’s TPG TELECOM mark, since they reproduce it entirely. Moreover, the disputed domain names are confusingly similar to the Complainant’s TPG mark, since they incorporate this trademark followed by the descriptive word “telecom”. The addition of this word to the disputed domain names cannot prevent a finding of

confusing similarity.

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The Complainant further maintains that the Respondent lacks rights or legitimate interests in the disputed domain names. The Complainant did not authorize the Respondent to use the TPG and TPG TELECOM marks. Moreover, there is no evidence that the Respondent was ever known by, or otherwise had any

legitimate interest in, the TPG TELECOM mark. The Complainant points to the fact that the Respondent has recently been the respondent in another UDRP case, between the same parties, involving the domain name <tpgtelecom.net>, which ended with the transfer of the domain name to the Complainant (WIPO Case No. D2024-1098). Finally, according to the Complainant, the disputed domain name is not used in connection with a bona fide offering of goods or services or for some other noncommercial or legitimate use, without intent to misleadingly divert consumers or to tarnish the Complainant’s trademarks for commercial gain. The disputed domain names resolve to a website at “ advertising domain name management, acquisition and other services. Although the use of a privacy service hides the identity of the owner of the domain name <seblanc.com>, the Complainant believes that the corresponding website belongs to the
Respondent. First, the Respondent’s email address includes the surname of the Respondent. Second, at
the time of the WIPO Case No. D2024-1098, the domain name <tpgtelecom.net> redirected to the
“ website, which contained the following statement: “The Owner of this domain is
Seblanc. This domain is for sale. Please contact the following email. Executive Director
[…]@seblanc.com.” After the decision, the Respondent removed all its contact details from the
“ website, replacing them with an online contact form. The use of the disputed domain
names to redirect users to the Respondent’s website does not support a claim to rights or legitimate
interests, according to the Complainant.

Lastly, the Complainant contends that the Respondent registered and is being using the disputed domain names in bad faith.

The Complainant submits that the Respondent had actual or constructive knowledge of the Complainant’s marks when it registered the disputed domain names. The TPG and TPG TELECOM marks are distinctive and enjoy significant reputation. Furthermore, the generic Top-Level domain names (“gTLDs”) for the

disputed domain names correspond to the Complainant’s area of business. Therefore, the Respondent deliberately selected the gTLDs for the disputed domain names having the Complainant’s business and trademarks in mind.

The Complainant also points out that the Respondent registered the disputed domain names after receiving notice of the previous UDRP dispute. Therefore, the Respondent registered the disputed domain names being aware of the Complainant’s rights in the TPG TELECOM mark. During the pendency of the previous UDRP dispute, the Respondent offered the disputed domain names, along with the already challenged

domain name <tpgtelecom.net> and other “tpgtelecom” domain names to the Complainant. Accordingly, the Complainant maintains that the only reason for the Respondent to register the disputed domain names was to broker their sale to the Complainant. This is also confirmed by the fact that the WhoIs for the disputed domain name <tpgtelecom.business> displays the wording “This domain is for sale” under the “registrant organization”, “administrative organization” and “tech organization” fields. Such a circumstance is a strong indication of the fact that the Respondent acquired this, and the other, disputed domain names for selling them for profit.

The Complainant further submits that the Respondent is the owner of numerous other domain names, some of which correspond to well-known third party’s trademarks. The Complainant has also been the subject of previous UDRP disputes, decided in the Complainant’s favor. Consequently, the Complainant maintains that the Respondent has engaged in a pattern of conduct involving speculative registration of domain names.

Finally, the disputed domain names resolve to a website where the Respondent advertises its domain name management, acquisition and other services and there is no obvious justification for such use.

B. Respondent

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

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6. Discussion and Findings
A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The Panel finds the TPG TELECOM mark is recognizable within the disputed domain names. Accordingly, the disputed domain names are identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant

evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.

The Complainant has no relationship with the Respondent and did not authorize the Respondent to make use of its TPG and TPG TELECOM marks in any manner, including as part of the disputed domain names. Moreover, the Respondent does not appear to have been commonly known by the disputed domain names.

The disputed domain names are identical to the Complainant’s TPG TELECOM trademark and carry out a high risk of implied affiliation. WIPO Overview 3.0, section 2.5.1. The Respondent has registered the disputed domain names under the gTLDs “.network”, “.app”, “.biz”, “.online”, and “.business”, which correspond to the Complainant’s area of trade, or are associated with the Complainant. The Respondent is therefore impersonating or suggesting sponsorship or endorsement by the Complainant and is seeking to take advantage of the Complainant’s mark. WIPO Overview 3.0, section 2.14.1.

The Respondent is using the disputed domain names to resolve to a website that presumably belongs to the Respondent. This website promotes domain name management and acquisition services, as well as other services in the domain name field. The use of a misleading domain name, corresponding to a third party’s trademark, in order to promote the user’s business activity cannot amount to a bona fide offering of goods or services, or to a noncommercial or fair use of the domain name.

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Moreover, soon after the registration of the disputed domain names, and in the pendency of another UDRP dispute, between the same parties and for a domain name identical to the disputed domain names, albeit under a different gTLD, the Respondent contacted the Complainant and offered the disputed domain names, as well as other <tpgtelecom> domain names for sale. Therefore, the Panel finds that the Respondent has targeted the Complainant and attempted to gain an unfair economic advantage from the registration of the disputed domain names. The Respondent has engaged in a pattern of trademark-abusive domain name registrations, which cannot confer to the Respondent rights or legitimate interests in the disputed domain names.

For all the aforementioned reasons, the Panel finds that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel finds that the Respondent was certainly aware of the Complainant’s marks when it registered the disputed domain names. The Respondent registered the disputed domain names after receiving notification of a previous UDRP complaint, filed by the Complainant, involving the same trademarks and an almost identical domain name. Hence, there are no doubts that the Respondent was

aware of the Complainant’s earlier registered marks when it registered the disputed domain names. When along with the one subject to the pending UDRP dispute, and other “tpgtelecom” domain names also in the Respondent’s name. In its offer to the Complainant, the Respondent maliciously pointed out that only the domain name <tpgtelecom.net> had been contested through an UDRP proceeding and that filing another UDRP proceeding for the remaining “tpgtelecom” domain names would have costed to the Complainant a higher amount than the purchase price requested for the transfer of all the proposed “tpgtelecom” domain names.

being notified of the previous UDRP dispute, rather than collaborating to settle the matter amicably, the

Furthermore, the WhoIs for the disputed domain name <tpgtelecom.business> displays the wording “This domain is for sale” under the “registrant organization”, “administrative organization” and “tech-oganization” fields, which is further evidence of the speculative intent of the Respondent. The Panel therefore finds that the Respondent registered and used the disputed domain names in bad faith, to target the Complainant and its marks in order to sell the disputed domain names to the Complainant at an undue profit. The

Complainant has shown that the Respondent is the owner of numerous other domain names, including domain names incorporating well-known third parties’ trademarks, and that the Respondent has previously been the subject of adverse findings in at least three other WIPO UDRP cases, one of which involving the Complainant and an almost identical domain name. Hence, it appears to the Panel that the Respondent has shown a pattern of conduct of speculative domain name registration.

Lastly, the Panel finds that the Respondent has also been using the disputed domain names to divert consumers to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks for commercial gain, inducing them to believe that the Respondent’s website belongs to the Complainant or to a company part of the Complainant’s group.

For all the aforementioned reasons, the Panel finds that the Complainant has established the third element of the Policy.

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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 names <tpgtelecom.app>, <tpgtelecom.biz>, <tpgtelecom.business>,

<tpgtelecom.network>, and <tpgtelecom.online> be transferred to the Complainant.

/Angelica Lodigiani/
Angelica Lodigiani
Sole Panelist
Date: October 15, 2024