## Facts

- Telstra Corporation Limited, an Australian telecommunications company, owned multiple registered TELSTRA trademarks and domain names incorporating “telstra.”
- Nuclear Marshmallows registered the domain name `<telstra.org>` through Network Solutions, Inc.
- The registrant used an unidentifiable business name and provided contact details that did not reliably identify a real entity; the listed contact was Michael Jenkins.
- Telstra filed a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) with the WIPO Arbitration and Mediation Center.
- The respondent did not submit a response and was in default.
- At the time of the proceeding, `<telstra.org>` was not actively used for a website or other evident online service.

## Issues

1. Whether `<telstra.org>` is identical or confusingly similar to a mark in which Telstra has rights under UDRP ¶ 4(a)(i).
2. Whether the respondent lacked rights or legitimate interests in `<telstra.org>` under UDRP ¶ 4(a)(ii).
3. Whether `<telstra.org>` was registered and is being used in bad faith under UDRP ¶ 4(a)(iii), including whether passive holding can satisfy “use in bad faith.”

## Decision

- The panel found `<telstra.org>` identical to Telstra’s TELSTRA mark, with “.org” disregarded for comparison.
- The panel found the respondent had no rights or legitimate interests in the domain name, citing the lack of authorization and the absence of evidence of bona fide or fair use.
- The panel found the domain name was registered and used in bad faith despite inactivity, based on the mark’s notoriety, the absence of any plausible good-faith use, concealment/inaccurate contact information, and the respondent’s failure to explain its conduct.
- The panel ordered transfer of `<telstra.org>` to Telstra.

## Legal Principles

- Under the UDRP, the complainant must prove (1) identical/confusing similarity, (2) no rights or legitimate interests, and (3) bad-faith registration and use.
- A top-level domain suffix (e.g., “.org”) generally does not distinguish a disputed domain name from a trademark for purposes of identity/confusing similarity.
- Lack of response and lack of evidence of actual or contemplated good-faith use can support a finding that a respondent lacks rights or legitimate interests.
- “Use in bad faith” is not limited to affirmative misuse; in appropriate circumstances, inaction or “passive holding” can constitute bad-faith use when the surrounding facts show targeting of the complainant’s mark and no credible lawful use.

## Conclusion

The panel ordered transfer of `<telstra.org>` after finding that the respondent registered a domain identical to a well-known trademark, lacked any legitimate interest, and acted in bad faith even without active use, establishing that passive holding may satisfy the UDRP bad-faith “use” requirement when the circumstances indicate abusive registration.


Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (WIPO Arb. & Mediation Ctr. 2000)