The Complainant is BT España Compañía de Servicios Globales de Telecomunicaciones, S.A.U. of Madrid, Spain (“BT”), represented by Luis Argüello Álvarez, Spain.
The Respondents are Lorraine Harris of Alcossebre (Castellón), Spain, Inland Trader Ontiyent, S.L. (“Inland Trader”) of Valencia, Spain, non organization of Valencia, Spain (the “Respondents”), represented by Martinez Sanz Abogados, Spain. 2. The Domain Names and Registrar
The disputed domain names and are registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2012. On April 27, 2012, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain names. On April 27, May 2 and May 4, Tucows Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on May 7, 2012 providing the registrant and contact information disclosed by the Registrar for each one of the disputed domain names and inviting the Complainant to submit an amendment to the Complaint adding the names of both registrants disclosed and demonstrating that both registrants are in fact the same entity. The Complainant filed an amendment to the Complaint on May 9, 2012.
The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on May 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2012. The Response concerning the disputed domain name was filed with the Center on May 31, 2012.
The Center appointed Luis H. de Larramendi as the sole panelist in this matter on July 17, 2012. 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. 4. Factual Background
The Complainant provides inter alia telecommunication services and is the owner of Spanish trademark registration No. 2754295 BT MOVIL (fig.), filed on February 8, 2007 and granted on August 1, 2007 in respect of services in Class 38.
The Complainant also invokes Community trademarks Nos. 171264 BT (fig.), filed on April 1, 1996 and granted on October 20, 1998 in respect of goods and services in Classes 9, 38 and 42, 3116721 BT (fig.), filed on April 1, 2003 and granted on April 11, 2005 in respect of goods and services in Classes 9, 16, 35, 36, 38, 41 and 42, and 7375371 BT (word), filed on October 29, 2008 and granted on December 1, 2009 in respect of services in Class 36. These Community trademarks stand in the name of the Complainant’s parent company, British Telecommunications PLC.
The two domain names at issue were registered on 30 August 2009. The domain name has no content at present. The domain name hosts a website entitled "BT PROBLEMS IN SPAIN... SUBMIT YOURS!". 5. Parties’ Contentions A. Complainant
- The Complainant invokes the trademark registrations mentioned above and also submits a list of other Community registrations of the BT mark held by the BT Group.
- The disputed domain names are confusingly similar to those trademarks, given the generic nature of the added elements "Spain" and "in Spain".
- The Respondents have no rights or legitimate interests in respect of the disputed domain names, as they registered them only after they had begun negotiations with BT to be one of BT’s traders in Spain.
- By signing the trader agreements with BT the Respondents undertook not to infringe BT´s prior trademark rights and not to register any trademarks or domain names that could breach BT’s prior rights.
- The Respondents continued to hold and use the disputed domain names despite having received warnings from the Complainant.
- The Respondents registered the two domain names only after they had begun negotiations with BT to be a trader in Spain and only two days before the Respondents signed their first trade agreement with BT.
- All attempts made by BT to resolve this matter amicably have met with no positive response from the Respondents.
- By using the disputed domain names the Respondents are intentionally trying to impair BT’s gain in the Spanish market, reducing the number of clients and creating confusion in the business as to the marks.
For these reasons the transfer of the disputed domain names to the Complainant is requested. B. Respondents
- The disputed domain name was registered by Sue O’Brien. BT España was aware that she was using it in connection with the sale of BT products, acting as sub-agent of Inland Trader/Lorraine Harris. The Respondents Lorraine Harris and Inland Trader deny all responsibility as regards the disputed domain name and focus in their defence on their disputed domain name .
- The Respondents Lorraine Harris and Inland Trader acknowledge that the disputed domain name is confusingly similar to the trademarks of the Complainant but add that they at all times acted as a BT authorised agent.
- The disputed domain name was registered solely to fulfil the contract between the parties for the marketing and sale of BT products in Spain. Before there was any notice of the dispute, use of the disputed domain name was made in connection with a bona fide offering of BT services.
- The Respondents Lorraine Harris and Inland Trader acted at all times with the knowledge and in accordance with the guidelines of Gabriel Castelló, BT area manager.
- It was a common practice among BT agents to use the letters BT in their domain names.
- As an authorised BT agent, the Respondents Lorraine Harris and Inland Trader had a legitimate interest in the disputed domain name .
- The disputed domain name has not been used since the termination of the BT contract in March 2011.
- The Respondents Lorraine Harris and Inland Trader registered the disputed domain name under the guidance of BT España area manager Gabriel Castelló in order to sell and market BT products. The disputed domain name was therefore registered in good faith.
- The Respondents Lorraine Harris and Inland Trader have made contact with BT Corporate seeking instructions in connection with this domain name.
- Although they expressly dispute the contentions of the Complainant, as the Respondents Lorraine Harris and Inland Trader are no longer authorised BT agents they agree to transfer the disputed domain name to BT. 6. Discussion and Findings Concerning the ownership of the disputed domain names
In their reply the Respondents Lorraine Harris and Inland Trader acknowledge that they are the holders of the disputed domain name but deny that they are the “holders” of the other disputed domain name . The Complainant has directed the Complaint against both those domain names, arguing that they are in practice held by the same party. It bases this assertion on knowledge gathered from its business relations with the Respondents and on the content of the website ”www.”.
While the true “ownership” of the disputed domain names may not be clear even though both were registered at the same time, the Panel notes that the Response acknowledges control of the disputed domain name and (while purporting to disclaim responsibility) acknowledges that the disputed domain name was registered by its agent (Complainant also submits into evidence agreements and correspondence showing an element of common control). Additionally, this Panel has ascertained that the Complaint and all the information relating to this proceeding was, at all events, properly sent to the contact addresses appearing in the particulars of the two disputed domain names, thus ensuring that the holder or holders of those domain names had the opportunity to present its or their case in accordance with Paragraph 10 of the Rules:
“(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.”
The information on the “true ownership” of the disputed domain name is particularly unclear; nevertheless, it is clear that it was registered by an agent of Respondent. As mentioned above, however, notice of the proceeding was duly sent to the contact address appearing on the register and it is to be noted that any problem arising out of incorrect or false information on the holder of a domain name may be attributed to that holder, as it is the responsibility of the registrant to ensure that the contact information provided is true and accurate. Respondent’s consent to transfer
At the end of their reply to the Complaint the Respondents expressly agree to transfer the disputed domain name to the Complainant, even though they dispute the Complainant’s arguments and contentions.
In the light of this circumstance, is it necessary for the Panel to proceed to a reasoned decision? This question was addressed in Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320:
“The panel in Bharat Sanchar Nigam Limited (BNSL) v. Domain Hostmaster,WIPO Case No. D2007-1800 reviews the position as follows:
“As analyzed by the Panel in The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132, panels, when faced with a “unilateral consent to transfer,” have taken three different approaches. Some panels have granted the relief requested on the basis of Respondent's consent without a review and analysis of the facts supporting the claim. Williams Sonoma, Inc. v. EZ Port,WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri,WIPO Case No. D2000-0195. Others have held that the consent to transfer is effectively a concession that the three elements of the Policy have been satisfied, and ordered transfer on this basis. Qosina Corporation v. Qosmedix Group,WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB,WIPO Case No. D2000-1398. Still other panels have proceeded to analyze whether the evidence submitted satisfies the three elements of the Policy. Société Française du Radiotéléphone-SFR v. Karen,WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co.,WIPO Case No. D2003-0745.
[…]
How panels have approached the issue has depended in most cases on the circumstances under which the respondent came to acquire the domain name in issue and how the respondent has been using it. If there has been a reason to suspect the respondent's motives and/or a reason to ensure that the respondent's bad faith conduct is not swept under the carpet, some panels have felt it appropriate to proceed to a decision (President and Fellows of Harvard College v. Texas International Property Associates, NA NA,WIPO Case No. D2008-0597).”
In the decision itself it is noted that Paragraph 15(a) of the Rules provides that:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy, having set out the three elements of a compliant complaint concludes: “In the administrative proceeding, the complainant must prove that each of these three elements is present.”
Taking those provisions together, the Panel believes that in this case he must satisfy himself that those three elements are in fact present. Further, there are decisions in which the Panel has taken the view that once a complainant has invoked the Policy and paid the fee, it is entitled to get what it paid for (Sanofi-aventis v. Standard Tactics LLC,WIPO Case No. D2007-1909; Davis+Henderson, Limited Partnership v. Whois Privacy Protection Service, Inc./Demand Domains Inc.,WIPO Case No. D2008-1162).
Finally, proceeding to a proper consideration of the three elements of paragraph 4(a) of the Policy reduces the risk of an injustice (e.g., the transfer of a domain name to a complainant with no relevant trade mark rights).
In this particular case, moreover, the Respondents Lorraine Harris and Inland Trader state that they are not the holders of one of the disputed domain names. In principle, therefore, their acquiescence in the claims of the Complainant would not extend to the disputed domain name . This is a further reason why it is appropriate to undertake, albeit briefly, an analysis of the case in the light of the requirements laid down in paragraph 4(a) of the Policy to the effect that, for the Complaint to succeed, it is necessary that:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered in bad faith and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has evidenced its rights in the BT trademarks, which may be deemed well known, and the Respondents have themselves acknowledged those rights.
The added elements “Spain” and “in Spain” are merely descriptive and the Panel therefore considers the disputed domain names to be confusingly similar to the earlier trademarks of the Complainant.
As the Panel held in Sociedad Española del Acumulador Tudor S.A. v. Asesoria Materiales Exportacion S.L.,WIPO Case No. D2005-0621:
“The disputed domain names , and entirely incorporate Complainant’s trademark TUDOR. The mere addition of the generic term ‘batteries’ in English, Spanish and French, i.e. ‘batteries’, ‘baterias’ and ‘batteries’ does not per se render the said disputed domain names distinctive, when compared to such trademark, especially considering precisely that the said trademark distinguishes batteries. See, mutatis mutandis, Quixtar Investments, Inc. v. Smithberger and Quixtar-IBO,WIPO Case No. D2000-0138; GA Modefine S.A. v. Mark O’Flynn,WIPO Case No. D2000-1424. See also PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services,WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja, Caso WIPO Case No. D2000-1409 and America Online, Inc. v. Chris Hoffman,WIPO Case No. D2001-1184”.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondents contend that in registering and using the disputed domain names they had rights and legitimate interests given that they were agents and distributors for the Complainant in Spain.
With regard to the question of whether a reseller can have rights or legitimate interests in the disputed domain name, the majority of panellists take the view that the test as to what constitutes a bona fide offering of goods should be as set out in Oki Data Americas, Inc v. ASD, Inc, WIPO Case No. D2001-0903. That is:
- The Respondent must actually be offering the goods or services at issue;
- The Respondent must use the site itself to sell only the trademarked goods;
- The site must accurately disclose the registrant’s relationship with the trademark owner; and
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
There is, however, as the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) notes in paragraph 2.3, a contrary, so-called minority view, which is that, without the express permission of the trademark holder, the right to resell the trademark holder’s products does not create a right to use the trademark as a basis for a domain name. The European Court of Justice decision in BMW v. Deenik would indicate that this approach is appropriate under European trademark law and, indeed, it is an approach which – generally – this Panellist prefers.
In this case the Panel is of the opinion that it cannot be considered that the Respondents have made a bona fide offering of the goods and services for two essential reasons:
1. The registration of the two disputed domain names took place when the Respondents were in negotiations with the Complainant with a view to being one of its agents in Spain.
2. As the Complainant shows in Annex 3 of the Complaint, in the agreement the Respondents undertook not to infringe the trademark rights of the Complainant and, specifically, not to register the distinctive signs in their name either as trademarks or in any other form.
The Panel therefore considers that it is not to be gathered from the circumstances of the case that the contractual relations between the parties entitled the Respondents to register in their name the disputed domain names.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The parties hold very different opinions concerning the conduct of each within their contractual relations and on whether there are or are not reasons to warrant the termination of the agreement on the part of the Complainant.
It was noted in The T, LLC v. Jeffrey S. Poploff,WIPO Case No. D2000-1470, that:
“This Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting. To invoke the Policy, a Complainant must show that the domain name at issue is identical or confusingly similar to a mark in which the Complainant has rights, that the Respondent lacks rights or a legitimate interest in the domain name, and that the Respondent registered and used the name in bad faith. Policy ¶ 4(a). To attempt to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy”.
This proceeding is naturally not the appropriate context for the examination of the contractual relations between the parties or of the extent to which each may have complied or failed to comply with their contractual obligations. However, the arguments and documents submitted by the Parties do permit the Panel to assess the third of the requirements laid down in paragraph 4(a) of the Policy, namely, the existence of bad faith in the registration and use of the disputed domain names.
On the one hand, under the agreement between the parties the Respondents were expressly forbidden, as previously mentioned, to register in their name the trademarks of the Complainant in any form.
On the other, the registration of the disputed domain names took place while the parties were negotiating their agreement. The registration thereof by the Respondents in those circumstances can only be interpreted as a form of conduct aimed at bringing pressure to bear on the Complainant. This is a clear indication of bad faith.
The Panel notes that the disputed domain name is inactive; still, non-use in these circumstances is in bad faith, and moreover, the Complainant has consented to its transfer. As to the disputed domain name , the site once redirected to a reseller site but now appears as a “complaint” site; however, in light of the above history, the Panel views this as pretextual use to hide the Respondent’s bad faith.
Consequently, without entering into the remainder of the contentions of the Parties, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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 disputed domain names and be transferred to the Complainant.
Luis H. de Larramendi
Sole Panelist
Dated: 31 July 2012
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