The Complainant is British Telecommunications plc of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented internally.
The Respondent is Whoisguard Protected, Whoisguard, Inc of Panama City, Panama / David Brown, of Birmingham, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 4, 2016. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 7, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 10, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on the same date.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 5, 2016.
The Center appointed Steven A. Maier as the sole panelist in this matter on December 12, 2016. 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 is a public limited company incorporated under the laws of England and Wales. It is a provider of communications services including Internet services.
The Complainant is the owner of registrations in numerous territories for the trademark BT. These registrations include European Union Trade Mark number 001879055 for BT registered on May 16, 2002 in numerous classes for goods and services including Internet information and services in Classes 36, 38 and 39.
The disputed domain name was registered on July 22, 2016. 5. Parties' Contentions A. Complainant
The Complainant states that it is one of the world's leading communications companies, providing services in 170 countries. It submits that its name and mark BT is a "household name" in the United Kingdom and that it contributes around GBP 3 billion annually to the United Kingdom exchequer.
The Complainant submits evidence that it is the owner of over 1,000 trademark registrations worldwide incorporating the mark BT.
The Complainant states that in 1996 it launched a residential, mass-market Internet service under the brand BT Internet. It submits that customers were allocated email addresses ending in "@" and that millions of such email accounts remain in use. The Complainant states that, as result of this activity, the name and mark BT INTERNET has obtained a high degree of recognition and goodwill.
The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. It submits that the disputed domain name constitutes a misspelling of the name "BT Internet" and is confusingly similar to both the Complainant's BT and BT INTERNET trademarks.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has never authorized the Respondent to use its BT or BT INTERNET trademarks and that the Respondent has not been commonly known by the disputed domain name. The Complainant states that in August 2016 it was alerted by the Royal Bank of Scotland to a serious fraud attempt being perpetrated via the disputed domain name, in the nature of an "Invoice Redirection attack". The Complainant submits that this cannot constitute a legitimate use of the disputed domain name and that the Respondent cannot show any other rights or legitimate interests in the disputed domain name in circumstances where that name constitutes a deliberate misspelling of the Complainant's trademark.
The Complainant contends that the disputed domain name has been registered and is being used in bad faith. The Complainant repeats its allegations referred to above. It contends that, given the nature and the use of the disputed domain name, it can only be concluded that the Respondent has attempted to benefit in bad faith from the goodwill and reputation in the Complainant's trademarks. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel is satisfied that, by virtue of its substantial trading since 1996 under the name and mark BT INTERNET and the widespread use of email addresses bearing the suffix "@", the Complainant has obtained rights in the nature of unregistered trademark rights in the name and trademark BT INTERNET for the purposes of the Policy. The Panel finds that disputed domain name constitutes an obvious misspelling of the Complainant's trademark BT INTERNET and is confusingly similar to that trademark. The Panel therefore concludes that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
In the view of the Panel, the Complainant's submissions referred to above give rise to a prima facie case for the Respondent to answer that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not participated in this administrative proceeding and has not provided any explanation for the registration or use of the disputed domain name, whether in accordance with any of the criteria set out in paragraph 4(c) of the Policy or otherwise. Furthermore, the Complainant has submitted evidence, which the Respondent has not contradicted, that the Respondent has used the disputed domain name for the purposes of a fraudulent website. Such use would not give rise to any rights or legitimate interests and, having no other evidence of any rights or legitimate interests on the Respondent's part, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The disputed domain name constitutes an obvious misspelling of the Complainant's trademark BT INTERNET and the Respondent uses it to impersonate the Complainant; the Panel is unable to conceive of any legitimate purpose to which the Respondent could put the disputed domain name. Furthermore, in the light of the Complainant's uncontradicted allegations of the dishonest use to which the disputed domain name has been put, the Panel infers that the Respondent registered the disputed domain name in the knowledge of the Complainant's trademark BT INTERNET and with the intention of misrepresenting a legitimate connection with that trademark. The Panel finds further that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of that website (paragraph 4(b)(iv) of the Policy). The Panel concludes in the circumstances that the disputed domain name has been registered and is being used in bad faith. 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 disputed domain name be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: December 26, 2016
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