Australian telecom firm TPG tries reverse domain name hijacking

TPG Telecom Limited files dispute in abuse of the Uniform Domain Name Dispute Resolution Policy (UDRP).

A World Intellectual Property Organization panelist has found TPG Telecom Limited, a major Australian telecommunications firm, to have attempted reverse domain name hijacking.

The firm filed a cybersquatting dispute against TPG.one.

That domain points to the website for the German firm The Platform Group. Its website is the-platform-group.com.

TPG Telecom makes a couple of outlandish claims in its case, which panelist Nick Gardner called out.

First, it stated:

Given the distinctive nature of the marks ‘TPG’ and ‘TPG Telecom’, and the Complainant’s significant reputation and rights in the marks, there can be no legitimate basis upon which the Respondent registered the Domain Name, other than to disrupt the Complainant’s business and/or for commercial gain. In this regard, ‘TPG’ is a coined mark, with no inherent meaning in relation to the telecommunications, online and network services provided by the Complainant.

TGP is clearly not a “coined” mark, as Gardner explained:

The Panel does not think this is correct. TPG is not a coined mark – “Vodafone” is an example of a coined mark – TPG is a three letter acronym. The Complainant’s own use of it can be traced back to it being an acronym for Total Peripherals Group. There are any number of legitimate reasons why a third party might use that acronym. The Respondent has cross referred to “www.acronymfinder.com” which shows around 40 page 7 different uses of that acronym – regarding half of which are organisations whose name could be so represented – for example Transports Publics Genevois, which is the Geneva public transport authority. Given the Respondent is named The Platform Group there is a clear and very obvious reason why it had a legitimate basis for registering the Disputed Domain Name.

Then, TPG tried to argue that the reason the Respondent registered the domain was to trade on the telco’s goodwill:

To the extent that there is any affiliation between the Respondent and The Platform Group (which is unclear), an inference of use in bad faith can still be drawn since the Respondent is using the Domain Name to exploit the goodwill of the Complainant’s reputable ‘TPG’ and ‘TPG Telecom’ marks to attract consumers to The Platform Group Website for commercial gain by creating a likelihood of confusion…

Gardner wrote:

Again, the Panel does not think this is correct. The Panel cannot conceive of any plausible advantage a bona fide German firm offering IT platforms to European businesses could gain by creating confusion with a view to attracting clients of an Australian telecoms firm.

He went on to find reverse domain name hijacking, writing:

In the view of the Panel this is a Complaint which ought to never have been launched. Anyone who inspected the Respondent’s Website ought to have immediately realised that it was a bona fide website operated by a sizable and well-established German firm. It was self-evident the Disputed Domain Name was an acronym for that firm’s name. Given there is no evidence that the Complainant has any reputation outside Australia and there is no evidence that the Respondent’s website was targeting the Complainant it ought to have been apparent at that initial stage that any complaint was without merit and would inevitably fail. In all the circumstances the Panel agrees with the Respondent that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Bird & Bird represented the Complainant.