World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

British Telecommunications plc v. Tony Strong

Case No. D2011-0534

1. The Parties

The Complainant is British Telecommunications plc of London, United Kingdom of Great Britain and Northern Ireland, represented by Miles Beckingham, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Tony Strong of Huddersfield, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <systemsbt.com> (the “Domain Name”) is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2011. On March 24, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Domain Name. On March 24, 2011, Tucows Inc. 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” 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 Respondent of the Complaint, and the proceedings commenced on March 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2011.

The Center appointed Alan L. Limbury as the sole panelist in this matter on April 21, 2011. 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 (uncontested facts)

The Complainant provides telecommunications services in 170 countries. Since 1991 it has used the trade mark BT, described in the United Kingdom Court of Appeal in British Telecommunications plc v. One In a Million Limited as a “well known household name” referring exclusively to the Complainant. It has numerous registered trade marks, including United Kingdom registered trademark BT, No. 1457046 registered on February 26, 1991 in respect of, inter alia, signaling systems, communication systems and electronic messaging and information systems, all included in Class 37.

The Complainant is also the registered proprietor of United Kingdom trade mark No. 2298330 VERSATILITY, registered on April 18, 2002.

The Respondent is permitted by the Complainant to offer repair services for BT VERSATILITY systems.

The Domain Name was registered on May 4, 2009. As at the date of the Complaint, it resolved to a web page headed “www.systemsbt.com”, with the sub-heading “The UK’s BT Versatility Specialists”.

5. Parties’ Contentions

A. Complainant

The Complainant says the Domain Name is confusingly similar to its very well known BT mark and that the Respondent has no rights or legitimate interest in the Domain Name, which was registered and is being used in bad faith.

As to legitimacy, the Complainant says it has not licensed or otherwise authorised use of its BT trade mark to the Respondent who is not commonly known by the initials “BT”. Given the “household name” status of that trade mark, the purpose of the Domain Name is designed to create an impression of an association with the Complainant. The Complainant has no evidence of any prior bona fide use by the Respondent which would afford him any rights to the distinctive “BT” part of the Domain Name. There is no bona fide offering of any goods or services by the Respondent under the Domain Name. The impression given to potential customers by the combination of the Domain Name and web page title reference is that the Respondent’s services are authorized or approved by the Complainant. The Complainant does not dispute that the Respondent is permitted to offer repair services for BT VERSATILITY systems, but the manner of use of the BT and VERSATILITY names on the website, taken together with the use of the Domain Name, is clearly intended to confuse customers into the mistaken belief that the services are in some way “official” or have been approved or authorized by the Complainant. The Domain Name has not been chosen in view of a perceived value in any dictionary or generic term but rather because of the perceived value of the Complainant’s trade mark. The use of both the BT and the VERSATILITY trade marks in the main body of the website is a further indication that the Respondent has no legitimate or bona fide claim to the Domain Name and that a misleading diversion of customers is taking place for the purpose of making a commercial gain for the Respondent.

As to bad faith, the Complainant says that, given the extent of the use and reputation of the trade mark BT by the Complainant, and the lack of evidence of actual or intended good faith use by the Respondent of the Domain Name, and use in connection with the VERSATILITY trade mark on the corresponding website, the original registration and any use by the Respondent would be illegitimate and in bad faith. Considering that the registration of the Domain Name is trading on the Complainant’s goodwill, the use of the Complainant’s trade mark in these circumstances, together with the fact that the Respondent must have known of the reputation of the Complainant’s trade mark, is a clear attempt to attract customers to the Respondent’s website for commercial gain via creation of a likelihood of confusion as to the provenance of the repair services in question. Furthermore, by holding and using the Domain Name, the Respondent is denying the Complainant the ability to use its own trade mark alongside a descriptive/generic term for legitimate purposes. In correspondence the Respondent claimed (only after receiving notification of the Complainant’s rights) that the Domain Name had been selected because it stands for “Systems By Tony”. This stretches credulity because the Respondent only offers servicing and maintenance for the Complainant’s BT VERSATILITY systems and the choice of name is clearly no coincidence. In any event, the trade mark and common law rights the Complainant has in the BT name in the field of communications renders this a moot argument. This was all communicated to the Respondent whose response was to ask for “compensation” for the cost of setting up a new company and website, a solution which the Complainant did not consider acceptable.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:

(i) the Domain Name is 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 Name; and

(iii) the Domain Name was registered and is being used in bad faith.

These elements are discussed below.

A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman, WIPO Case No. D2000-1080 and Alta Vista Company v. Grandtotal Finances Limited et al., WIPO Case No. D2000-0848.

A. Identical or Confusingly Similar

The Complainant clearly has rights in the BT mark. The prefix “systems” in the Domain Name does nothing to detract from the distinctiveness of the mark. The gTLD “.com” is to be ignored: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. Accordingly the Panel finds the Domain Name to be confusingly similar to the Complainant’s BT mark.

The Complainant has established this element of its case.

B. Rights or Legitimate Interests

The Complainant’s BT mark is a distinctive, household name: see British Telecommunications and Another v.One In A Million Ltd and Others [1999] 1 WLR 903 (Court of Appeal). The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interest in the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that he does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited. The Respondent has made no attempt to do so.

In particular, the Respondent has not denied having knowledge of the Complainant’s mark when registering the Domain Name. Use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services: Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 <madonna.com>. Although the Respondent is permitted by the Complainant to repair the Complainant’s BT VERSATILITY systems, in this Panel’s view this does not entitle the Respondent to incorporate the Complainant’s mark in a domain name that is used in such a way as to represent that the Respondent’s services are those of the Complainant.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interest in the Domain Name.

The Complainant has established this element of its case.

C. Registered and Used in Bad Faith

For the reasons just given, having regard for the reputation of the Complainant’s BT mark, the Panel finds that the Respondent had actual knowledge of the Complainant’s trade mark rights when registering the Domain Name and did so intending misleadingly to trade off the Complainant’s reputation. The Respondent has used the Domain Name in an attempt to profit from the confusion of potential customers of the Complainant.

Accordingly the Panel finds the Domain Name was registered and is being used in bad faith.

The Complainant has established this element of its case.

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, <systemsbt.com> be transferred to the Complainant.

Alan L. Limbury
Sole Panelist
Dated: May 1, 2011

 

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