The Complainant is British Telecommunications public limited company, of London, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by BT Legal, UK.
The Respondent is Joshua Stone, Openreach Telecom Ltd., of London, UK. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 2, 2015. The Center transmitted its request for registrar verification to the Registrar the same day. The Registrar replied on February 3, 2015, confirming that the Domain Name is registered with it, that the Respondent is the current registrant, that the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP") applies, that the Domain Name will expire on October 10, 2015, that a registrar lock has been applied to the Domain Name and will be maintained until its expiry, that the registration agreement is in English, and that the Domain Name was registered on October 11, 2013. The Registrar also provided the full contact details held on its WhoIs database in respect of the Domain Name.
The Center informed the Complainant on February 4, 2015, that it had not received Annex 8 to the Complaint and requested a copy of this Annex. The Complainant sent this Annex to the Center on February 6, 2015.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 9, 2015. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 1, 2015. The Respondent sent an email to the Center on February 9, 2015, asking "For what is the complaint? Why we need to pay 2000$? What is this in fact?", but did not submit any response.
The Center appointed Jonathan Turner as the sole panelist in this matter on March 5, 2015. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complies with applicable formal requirements, has been duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance the UDRP, the Rules and the Supplemental Rules. 4. Factual Background
The Complainant is a leading provider of communications services, particularly in the UK. Its infrastructure division is called "Openreach" and was established as a separate division in 2006 to ensure that competing providers of telecommunications services have equal access to the Complainant's local network in the UK. The Openreach division installs and maintains wiring and cabling telephone from exchanges to customers' premises throughout the UK. The "Openreach" name is used extensively in its operations, including on its 33,000 vans circulating daily on British roads. The Complainant has registered the word mark OPENREACH (registered on May 21, 2008), a logo of "openreach" (registered on February 24, 2006) and a depiction of a van bearing the name "openreach" (registered on March 9, 2007) as UK and Community trademarks.
The Registrar's WhoIs database identifies the registrant, and administrative, technical and billing contacts for the Domain Name as "Joshua Stone, OpenReach Telecom Ltd", in each case with the same address in London. A company was registered under the name "Openreach Telecom Limited" in the Companies Registry for England and Wales on September 17, 2013 with its registered office at the same address. The Complainant wrote to this company on October 25, 2013 and November 13, 2013 at this address, asking it to change its name and to undertake not to conduct any trade in the UK communications field under the name "Openreach". The Complainant did not receive any reply to these letters. The Complainant then submitted an application to the Company Names Tribunal on November 27, 2013 to require Openreach Telecom Limited to change its name because of its similarity to the name of the Complainant's infrastructure division. By a decision of May 6, 2014 the Company Names Tribunal ordered Openreach Telecom Limited to change its name. However, the Respondent continued to use the name "Openreach Telecom Ltd" on its website at the Domain Name.
On January 5, 2015 a person with an address in Tallinn complained to the Complainant that he or she had ordered a telephone on the website at the Domain Name and paid 400 Euros for it, but it had not arrived. The person who made the complaint commented "Are you aware of this site …. It uses your name for scam …. Can you do something about it? Its your brand image they are using to make consumers trust them".
The Domain Name was registered on October 11, 2013. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the mark OPENREACH in which it has registered and unregistered rights. The Complainant points out that the Domain Name differs from this mark only in the addition of the descriptive term "telecom" and the generic Top Level Domain suffix, ".biz".
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. It states that it has not licensed or authorized the Respondent to use its OPENREACH mark. It notes that the Respondent is not connected in any way with its business. It points out that the Respondent must have known of its use of this mark in the UK telecommunications field and that the Respondent's purpose in registering and using the Domain Name cannot have been legitimate.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. It submits that by using the Domain Name the Respondent is intentionally attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's mark as the source of that website. The Complainant adds that the Respondent's use of the Domain Name is bringing its name into disrepute and damaging its business.
The Complainant requests a decision that the Domain Name be transferred to it. B. Respondent
As noted above, the Respondent did not formally reply to the Complainant's contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is appropriate to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent's default in failing to file a substantive response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed. A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered and unregistered rights in the mark OPENREACH.
The Panel further finds that the Domain Name is confusingly similar to this mark, from which it differs only in the addition of the descriptive term "telecom" and the generic Top Level Domain suffix. The addition of the descriptive term "Telecom" does nothing to avoid confusion and it even increases the likelihood of confusion given that "Openreach" is a division of the Complainant which is widely known under its name "British Telecom". As has been held in numerous decisions, the generic Top Level Domain suffix is typically discounted when comparing a domain name with a mark.
The customer complaint described in section 4 above provides further confirmation of the confusing similarity of the Domain Name to the Complainant's mark.
The first requirement of the UDRP is satisfied. B. Rights or Legitimate Interests
The Panel considers that the Respondent has not used the Domain Name for a bona fide offering of goods or services. On the contrary, the Panel finds that the Respondent's use of the Domain Name has been in bad faith in order to profit from deceiving consumers into believing that the Respondent is part of the Complainant's reputable business, to which they can safely pay money for goods to be supplied.
It is evident that the Respondent has not been commonly known by the Domain Name so as to acquire a right or legitimate interest in it. Nor has the Respondent made legitimate non commercial or fair use of the Domain Name. The Respondent's use of the Domain Name has been illegitimate, commercial and unfair, obtaining orders and payment by deception for goods which it does not deliver.
On the evidence there is no other basis on which the Respondent could claim any rights or legitimate interests in respect of the Domain Name. The Panel concludes that the Respondent has no such rights or legitimate interests. The second requirement of the UDRP is satisfied. C. Registered and Used in Bad Faith
The Panel finds that the Respondent has been using the Domain Name to mislead Internet users into believing that the Respondent is part of the Complainant's legitimate business to which they can safely entrust payment in advance for goods to be delivered. Thus, by using the Domain Name the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's OPENREACH mark as to the source, sponsorship, affiliation or endorsement of its website.
In accordance with paragraph 4(b)(iv) of the UDRP this constitutes evidence of registration and use of the Domain Name in bad faith. There is no material on the file controverting this presumption.
The Panel concludes that the Domain Name was registered and is being used in bad faith. All three requirements of the UDRP are satisfied and it is appropriate to order that the Domain Name be transferred to the Complainant. 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 Domain Name be transferred to the Complainant.
Jonathan Turner
Sole Panelist
Date: March 19, 2015
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