WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
British Telecommunications, plc v. Compulab Ltd.
Case No. D2007-1803
1. The Parties
The Complainant is British Telecommunications, plc, of London, United Kingdom of Great Britain and Northern Ireland, represented internally.
The Respondent is Compulab Ltd., Scaldwell, Northampton, United Kingdom of Great Britain and Northern Ireland, and Zagreb, of Croatia
2. The Domain Names and Registrar
The disputed domain names, and (the “Domain Names”), are registered with Easyspace (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2007. On December 6, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 10, 2007, the Registrar 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2008, but by agreement between the parties that date was put back by 14 days to January 15, 2008. The Response was filed with the Center on January 16, 2008. While this appears to be out of time, the Complainant takes no point on it and the Panel admits it into the proceeding. The covering email is timed at 00.47 hours, which may be Geneva time, in which case the document would have been sent on January 15, 2008 UK time, the email seemingly having originated from the United Kingdom.
The Center appointed Tony Willoughby as the sole panelist in this matter on January 30, 2008. 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 7.
The Response commences with a complaint that the first copy of the Complaint received by the Respondent (dated December 10, 2007) was received by post and was not preceded by the Complaint Transmittal Coversheet, which advises that there is no duty upon the Respondent to act “at this time”. That coversheet was attached to the Complaint, as one would expect of a document thus described. The Respondent appears to be under the impression that he should have been warned in advance of receipt of the Complaint, thereby giving him a bit more time to prepare his response.
The Panel has examined the documentation put out by the Center and has been unable to discern any procedural deficiency. The fact is that the Respondent was properly notified of the Complaint by the Center and the Complainant agreed to his request for a 14-day extension of time for the Response. Even allowing for the festive season, the Panel is satisfied that the Respondent has had ample time to respond to the Complaint.
4. Factual Background
The Complainant is one of the world’s leading providers of telecommunications services and is a household name in the United Kingdom commonly referred to by its initials “BT”, a trading style which it has used continuously for years.
The Complainant is the registered proprietor of a large number of trademark registrations of or including the acronym, “BT”, an early example of which is UK registration number 1282145 dated October 1, 1991 in class 38 for telecommunication and related services.
The Respondent registered the Domain Names on February 25, 2004 () and November 5, 2007 (). The Domain Names are currently connected to a solitary webpage indicating a forthcoming service to be provided under and by reference to the name BT SUPPORT - Broadband Technical Support.
On October 2, 2007 the Complainant wrote to a Mr. O’Neill, the administrative and technical contact for the Domain Name, , the other of the Domain Names not at that stage having been registered. The Complainant drew attention to its rights and to the risk of confusion. The letter pointed out that broadband services are at the heart of the Complainant’s business. The Complainant sought transfer of the Domain Name. The letter also embraced another of the Respondent’s domain names, , which was then connected to a parking page with links to other sites offering other services unconnected with the parties.
Mr. O’Neill is a self-styled “Internet Strategist”, a director of the Respondent (an English company), resident in the United Kingdom and the prime mover behind the Respondent. Mr. O’Neill signed the Response. References to the Respondent are effectively references to Mr. O’Neill.
On November 5, 2007 the Respondent replied, disputing the Complainant’s claim and indicating that he had that day registered , the other of the Domain Names. On November 19, 2007, there was a further exchange of emails between the parties, but it did not advance the matter.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Names are confusingly similar to its BT registered trademark. It further contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. Finally, it contends that the Respondent registered the Domain Names and is using the Domain Names in bad faith.
Essentially, the Complainant’s case is that the Respondent registered the Domain Names knowing of the Complainant’s rights, knowing of the risk of confusion among Internet users and with the intention of benefiting commercially from that confusion to the detriment of the Complainant. The Complainant points to the use that the Respondent has made of the domain name.
B. Respondent
The Response commences with a detailed discourse on whether domain names are trademarks. The Respondent goes on to express outrage at the suggestion that anyone could confuse the site connected to the Domain Name with the Complainant.
The Respondent refers to the Complainant’s civil case against One In A Million, which is cited in the Complaint, and distinguishes his position from that of the defendants in that case. He also expresses the view that a 10 year old authority of the Court of Appeal is hardly likely to be relevant today. The Respondent points out that unlike the defendants in the One In A Million case he has not attempted to extort money from anybody.
The Respondent queries the extent of the Complainant’s rights in the acronym “BT” and points out that it has other meanings e.g. “but” in text messaging language. The Respondent points out that there are numerous examples of circumstances where names may be both trademarks and ordinary dictionary words and that in the case of acronyms; numerous different entities may have justifiable reasons for using the same acronym.
However, the main thrust of the Response is that the Domain Names, for a variety of reasons, do not infringe the Complainant’s trademark rights.
The Respondent then goes on to attack paragraph 4(c) of the Policy as a sensible basis for determining whether or not the Respondent has rights or legitimate interests in respect of the Domain Names.
The Respondent objects to the suggestion that his webpage is intended to look like the Complainant’s and asserts that there is no risk of anyone believing his webpage to have any connection with the Complainant. The Respondent also objects to the suggestion that he should be deprived of his Domain Names on the basis that his site has been static for some time. He states that he has been working on a number of other jobs and cannot be expected to do everything at once. He says, “there is no reason why BTSupport cannot be a brand of the future.”
The Respondent asserts that he has every right to set up a webpage on Broadband. He is an IT and domain name professional. He has several hundred domain names, about 250 of which “have a business idea behind them which [he wishes] to develop”. He says however that he has handed most of his domain names over to a parking service for advertising purposes. He claims that these are all perfectly reasonable, lawful activities.
As to his motives for registering the Domain Names, the Respondent has this to say:
“BTSupport was bought purely to develop into a free technical support site for the domestic market who do not understand Broad Band. It is not to sell Broad Band products or be in competition with BT or anyone. It is planned to be a public service website.”
As to the use, which the Respondent has made of the domain name, the Respondent says that it was a mistake. He thanks the Complainant for drawing it to his attention. He terminated the use complained of as soon as it was drawn to his attention.
The Response concludes as follows:
“I did not hijack this domain or cybersquat. The domain market and the Internet has moved forward since [the Complainant’s] case against One in a Million, notwithstanding the fact that that case was blatant, obvious and involved extortion. I bought this domain 4 years ago with a view to developing it as part of my domain portfolio and as my Internet project and Internet presence and initiatives, for which I have many. I did not contact BT to sell the domain or make financial profit. I have tried to make it clear that this is not a BT related site. BT has not provided any evidence for any of the complaints and has provided weak and unsubstantiated arguments and based on all of the above I request their complaint be dismissed without action.”
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove that:
(i) The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered in bad faith and are being used in bad faith.
B. Identical or Confusingly Similar
Under this heading the Respondent devoted much of his efforts to arguing that his registration of the Domain Names and his design of webpage could not conceivably cause any confusion and could not conceivably constitute trademark infringement.
The Panel’s task is not to assess whether the Respondent’s activities constitute trademark infringement. Nor is the Panel concerned with the Respondent’s webpage. The Panel’s sole task under this head is first to assess whether the Complainant has trademark rights and then to assess whether the Domain Names are identical or confusingly similar to the Complainant’s trademark.
The Respondent has not disputed the Complainant’s rights in respect of its registrations of the acronym, “BT”. Indeed, in his letter to the Complainant dated November 5, 2007 the Respondent starts out by saying: “I accept and agree that BT is a trademark in the UK …”, as of course it is, and it is a very well-known trademark of the Complainant. In the same letter he goes on to say: “yes BT is synonymous with [the Complainant].”
The Panel is thus left to determine whether or not the Domain Names are confusingly similar to the Complainant’s trademark, “BT”.
Absent the generic domain suffix, each of the Domain Names comprises the Complainant’s trademark “BT” and the word ‘support’. Is the word, ‘support’, so distinctive that it renders the letters “BT” insignificant and the overall name, ‘btsupport’ non-confusing?
The Panel does not think so. ‘Support’ is a term widely used on websites to indicate the support the website proprietor is offering to online visitors. BT is a very well-known trademark in the UK and the Panel is in no doubt that a significant (i.e. not insignificant) proportion of Internet users will see the Domain Names as indicative of support being offered by the Complainant. The fact, if it be a fact, that visitors will realize that they are on someone else’s site when they get there, is irrelevant to the issue to be addressed under this head.
The point is well made, albeit somewhat grudgingly, by the Respondent in paragraph 10 of the Response when he says: “There could be a slight argument that in a publication if someone saw the domain name, , that they may think it is a BT website.”
The Panel takes the view that, far from being a slight argument, it is a very strong argument and it can be translated from ‘publications’ to the Internet. A user believes the Domain Names to indicate a website of the Complainant and visits the website connected to the Domain Names believing it to be a website of the Complainant. The confusion will have occurred at that stage. The fact that on reaching the site the visitor is disabused is, as already indicated, irrelevant.
The Panel refers to the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, which is to be found on the WIPO website, and in particular to the answer to Question 1.2, namely:
1.2 Is the content of a website relevant in determining confusing similarity?
Consensus view: The content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity. This is because trademark holders often suffer from “initial interest confusion”, where a potential visitor does not immediately reach their site after typing in a confusingly similar domain name, and is then exposed to offensive or commercial content. The test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion.
Relevant decisions: Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic WIPO Case No. D2000-1698, Transfer Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.WIPO Case No. D2001-0110, Transfer Dixons Group Plc v. Mr. Abu AbdullaahWIPO Case No. D2001-0843, Transfer AT&T Corp. v. Amjad KausarWIPO Case No. D2003-0327, Transfer
The Panel finds that the Domain Names are confusingly similar to a trademark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Panel strongly suspects that the Respondent’s tirade against the Complainant in relation to this head of the Complaint arises from a misunderstanding. In addressing this head the Complainant focuses on paragraph 4(c) of the Policy. The elements of paragraph 4(c) of the Policy are a non-exhaustive list of the matters, which a respondent can bring forward to demonstrate that he has relevant rights or legitimate interests in respect of the domain name or names in issue.
However, the onus is on the Complainant to prove each element of paragraph 4(a), including the negative required under paragraph 4(a)(ii) of the Policy that the Respondent has no relevant rights or legitimate interests. Accordingly, the elements of paragraph 4(c) are an obvious starting point for the Complainant.
Under this head, because it involves proof of a negative and in relation to matters which are often known only to the Respondent, the obligation is on the Complainant to make out a prima facie case. It is then for the Respondent to answer it if he can.
The Complainant’s case is that its trademark is a household name, that the Domain Names are confusingly similar to it and that nobody could select a name such as ‘BTSupport’ without appreciating the very serious risk of resulting confusion if used as a domain name connected to an active website in the telecommunications field. The Complainant contends that plans of that kind cannot give rise to a right or legitimate interest in respect of the Domain Names. The Panel regards that as a strong prima facie case and not least because the Respondent is an expert in the very fields in question, namely domain names and IT.
Accordingly, the Panel now looks to see what is the Respondent’s answer, using paragraph 4(c) as the starting point.
Paragraph 4(c)(i) of the Policy deals with a situation where a respondent is using or produces evidence to show that he is planning to use the domain name in relation to a bona fide business. A static holding webpage and a bare assertion as to the Respondent’s intentions is not enough. The Respondent has produced no hard evidence of any kind to demonstrate the nature of his plans. He contends that he proposes to use the Domain Names to provide Internet users with Broadband Technical Support (hence the Domain Names), but there is nothing before the Panel to show that he has access to the relevant expertise, let alone any plans to disseminate it.
Paragraph 4(c)(ii) covers a situation where the Respondent is known by the domain name in issue or a name corresponding to the domain name in issue. That is not the case here.
Paragraph 4(c)(iii) covers a situation where a respondent is making fair use of the domain name in issue. Here there is no use of the Domain Names having any bearing on the style or nature of the Domain Names. The Domain Names simply resolve to an inactive holding page.
The Panel finds that the Response is an inadequate answer to the Complainant’s prima facie case under this head. The Respondent has no rights or legitimate interests in respect of the Domain Names.
D. Registered and Used in Bad Faith
The Complainant’s case is that the Respondent registered the Domain Names knowing of the Complainant’s rights, knowing of the risk of confusion among Internet users and with the intention of benefiting commercially from that confusion to the detriment of the Complainant.
The Respondent denies the Complainant’s allegations asserting:
“BTSupport was bought purely to develop into a free technical support site for the domestic market who do not understand Broad Band. It is not to sell Broad Band products or be in competition with BT or anyone. It is planned to be a public service website.”
The Respondent goes on to say that he did not contact the Complainant with a view to selling the Domain Names to the Complainant and he accurately states that as a generality there is nothing objectionable per se in registering domain names and not using them, nor is it objectionable to connect them to parking pages.
A propos his website (the website to which the Domain Names are connected) he says: “I have tried to make it clear that this is not a BT related site.” Why was it necessary for him to do this? There can be only one answer and that is that the Domain Names are liable to cause confusion as the Respondent has himself acknowledged in paragraph 10 of the Response: “There could be a slight argument that in a publication if someone saw the domain name, , that they may think it is a BT website.” As indicated above, the only aspect of that statement, with which the Panel would take issue, is the qualification ‘slight’, “BT” being a household name in the United Kingdom.
This inevitably leads to the question: “Why?” Why did the Respondent, a self-proclaimed IT and domain name professional, knowingly select for his portfolio of domain names, names which he recognized gave rise to a risk of confusion with the Complainant? He says that his site is so different from any site of the Complainant that visitors will immediately appreciate that they are at a site not associated with the Complainant. Nonetheless he will have attracted a significant proportion of them to his site in the belief that the site is a site of the Complainant. Moreover, the Panel is far from satisfied that the appearance of the Respondent’s site will have the distinguishing effect that he claims for it. True, it is not a recognizable “BT” livery, but the name “BTSupport” is written large in the middle of the page with “Broadband Technology Services” in smaller lettering beneath it. In the Panel’s view, the power of the BT trademark is such that many people may not notice the fact that the name is an acronym for what follows below it. Those that do notice are at least as likely as not to think that it is a new service of the Complainant or a service outsourced or licensed by the Complainant.
The Respondent asserts that his plans are to use the site for a public service, non-profit making enterprise. While this may be so, the Panel notes that the Respondent’s business interests are based on his portfolio of domain names and the Panel finds it difficult to believe that the Respondent does not plan to use the site to the advantage of his commercial enterprises in some way.
The Complainant is suspicious as to the Respondent’s true intentions. The Panel is also suspicious in that regard. The Respondent has come forward with nothing in the way of evidence to support his assertions. While it is for the Complainant to prove all the elements of paragraph 4(a) of the Policy, one would expect an “innocent” respondent to contest the allegations, not merely with words of outrage, as the Respondent has done, but with evidentiary support to add substance to the outrage. Additionally, the connecting of the domain name to a page featuring advertising links to other sites, while categorized by the Respondent as a mistake, does not give cause for comfort. Nor, of course, does the Respondent’s comment in the Response, “there is no reason why BTSupport cannot be a brand of the future.”
In all the circumstances, the Panel finds that the Domain Names were registered and are being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
Finally, it should be noted that in the Response, the Respondent prays in aid on a number of occasions the Nominet DRS Appeal Decision involving the domain name, . The Panel happens to have been the presiding panelist in that case. It can be distinguished on a number of grounds. For example, in that case, the respondent denied knowledge of the trademark at time of registration of the domain name and there was nothing before the panel to suggest otherwise, whereas in this case the Respondent was very well aware of the trademark at all material times. The domain name in that case had an ordinary dictionary meaning distinct from the trademark, whereas in this case the overpowering element of the Domain Names is the Complainant’s trademark and the Respondent recognizes the scope for confusion, at any rate to a degree. It was a very different case and of no assistance to the Respondent.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, and , be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Dated: February 13, 2008
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