World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

British Telecommunications plc v. WhoisGuard Protected, Namecheap, Inc. / Jon Burches

Case No. DCO2011-0018

1. The Parties

1.1 The Complainant is British Telecommunications plc of London, United Kingdom of Great Britain and Northern Ireland, represented by an internal representative.

1.2 The Respondents are WhoisGuard Protected of Westchester, California, United States of America, Namecheap, Inc. of Los Angeles, California, United States of America and Jon Burches of “Springfield”.

2. The Domain Name and Registrar

2.1 The disputed domain name <btopenworld.co> (the “Domain Name”) is registered with eNom (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2011. The Complaint as originally filed named “Whois Guard” as Respondent. “WhoIs Guard” is the name of the “privacy service” of the Registrar and was the name recorded on the publically available WhoIs record for the Domain Name at that time.

3.2 On March 10, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing the underlying registrant for the Domain Name as “John Burches”. However, the details for “Mr. Burches” were clearly at least in part false and contradictory. For example, the telephone number given for the registrant has a United Kingdom code but the number disclosed was “123456790”. The fax number given had a United States code but the number disclosed was “5555555555”. Further, the address given (i.e. 123, Evergreen Terrace, Springfield), may be recognised by many as being on the same fictional street as the Simpsons family in the well-known eponymous cartoon series.

3.3 The Center sent an email communication to the Complainant on March 17, 2011 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 March 21, 2011. However, the amendments made to the Complaint were not extensive. They noted the details disclosed by the Registrar and commented on their fictitious nature. The Complainant did not seek to change the heading of the Complaint and continued to name WhoIsGuard Protected and Namecheap Inc., as Respondent.

3.4 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”).

3.5 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 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2011.

3.6 The Center appointed Matthew S. Harris as the sole panelist in this matter on April 27, 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

4.1 The Complainant is a public limited company incorporated under the laws of England and Wales. It is one of the world's leading providers of communications solutions and services operating in 170 countries. It is very well-known in the United Kingdom and has been recognised by the English Court of Appeal as being a “household name”1. The exact extent of its reputation elsewhere (at least on the limited material before the Panel in these proceedings) is not clear.

4.2 The Complainant has used the name BT continuously since 1991 and the name OPENWORLD since 2000. Exactly what services the term OPENWORLD is used for is not explained, but BT and OPENWORD are used in the combination in the domain name <btopenworld.com>, which is owned by the Complainant. That domain name is used to provide over 500,000 customer email accounts.

4.3 The Complainant has registered worldwide over 1000 trade marks comprising or incorporating the letters BT, covering a wide range of goods and services. It is also the owner of various marks in Europe for the term OPENWORLD. These marks include:

(i) United Kingdom registered trade mark no. 1282145 for the word BT in class 38 filed on October 1, 1986.

(ii) United Kingdom registered trade mark no. 229773 for the word OPENWORLD in classes 9, 16, 35, 36, 38, 39, 41 and 42 filed on April 17, 2000; and

(iii) Community Trade Mark no. 1886050 for the word OPENWORLD in class 35 filed on October 4, 2000.

4.4 According to the available WhoIs data, the Domain Name was first registered on October 25, 2010. No explanation is offered by the Complainant as to how, if at all, the Domain Name has been used since registration. However, at the time of compliance verification by the Center and at the time of this decision no website has operated or does operate from the Domain Name.

5. Parties’ Contentions

A. Complainant

5.1 The Complaint has not been constructed as well as it might have been. The Complainant refers to and evidences its trade mark rights but otherwise the Complaint contains a whole host of factual assertions without supporting evidence.

5.2 It would appear from the Complaint that there has been some contact and/or correspondence between the Complainant and the Respondent, but there is no real explanation of how and that contact came about or what form it took. Nevertheless, the Complainant contends:

(i) That it has established (how is not explained) that the Respondent is based in the United Kingdom.

(ii) That the Respondent claims to have wanted the domain name <btopenworld.com> for his business and to have printed business cards and business stationery using the “btopenworld” name for use in connection with that business. (Whether the reference to “btopenworld.com” is intentional here or is a typographical error and the intention was instead to refer to “btopenworld.co” is not clear).

(ii) That the Respondent has acknowledged in correspondence that “in the region of 10-15,000 emails per month are being delivered to the <btopenworld.co> address instead of to btopenworld.com”.

(iii) That the Respondent “chose not to cooperate” when the Complainant demanded that the various emails he had received be forwarded to the Complainant and that the Domain Name be transferred to the Complainant.

(iv) That in an email of February 24, 2011 the Respondent sought a payment of GBP 2,500 from the Complainant in return for which he would agree not to publicise the dispute, would cease to use the Domain Name and transfer ownership of it to the Complainant and would return emails illegitimately in his possession.

(v) That at some point thereafter the Respondent “agreed to lower his price to GBP 1,000”.

5.3 So far as the requirements of the Policy are concerned, the Complainant, after referring to its registered marks and fame, asserts that the Domain Name is “confusingly similar to Complainant’s trade mark”. Presumably the contention is that the Domain Name is confusingly similar to each of the trade marks upon which it relies.

5.4 It contends that it has not authorised the Respondent’s use of its BT or OPENWORLD trade marks and that the Respondent is not commonly known as “BT” or “BT Openworld”. It claims that given the reputation of its BT mark, the purpose of the Domain Name cannot possibly be legitimate and must be designed to create an impression of an association with the Complainant. It also asserts that there is no bona fide offering of any goods or services by the Respondent under the Domain Name.

5.5 On the question of bad faith registration and use the Complainant contends that by the registration of the Domain Name, the Respondent “is trading on the Complainant’s goodwill”. The alleged offer for sale of the Domain Name for GBP 2,500 is also said to show that the Respondent “was attempting to make a considerable profit from a domain name which it should never have registered or used”.

5.6 The Complainant further refers to the use of the Registrar’s privacy service and the fictitious contact details subsequently disclosed. The “strenuous lengths to which the Respondent has gone to conceal his identity” is also said to evidence bad faith.

B. Respondent

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

6. Discussion and Findings

6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.

6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.

6.4 The Complainant amended the Complaint when informed by the Center of the details provided by the Registrar as to the registrant behind the Registrar’s privacy service. However, it chose not to rename or add Jon Burches as the formal Respondent in the Complaint. For the reasons that are set out in RapidShare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail Berdnikov (Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987), WIPO Case No. D2010-0894, the Panel is of the view that the Complainant was entitled to proceed in this manner.

6.5 Nevertheless, the claims in the Complaint both before and after amendment are clearly directed to the person who has de facto control over the Domain Name. That person is effectively treated as the Respondent in this case and, as is explained in the RapidShare case supra, the Panel considers this legitimate. References to the Respondent in the rest of this decision should be understood accordingly.

A. Identical or Confusingly Similar

6.6 The Domain Name can be sensibly understood as the terms “BT” and “openworld” in combination with the “.com” TLD. Both BT and OPENWORLD are registered trade marks of the Complainant. The Domain Name, therefore, incorporates each of these marks in their entirety.

6.7 The addition of “Openworld” to “BT” does not so detract from that term so as to stop the Domain Name being “confusing similar” (as that term is understood under the Policy; see Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227) to the BT mark. Similarly the addition of “BT” to “openworld” does not detract from that term “openworld” so as to stop the Domain Name being “confusing similar” to the OPENWORLD mark.

6.8 In the circumstances, the Complainant has made out the requirements of the paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.9 The Complainant has adopted the approach of asserting that none of the examples of rights or legitimate interests laid out in paragraph 4(c) of the Policy apply. A common contention of complainants who make such assertions is that the burden of proof then passes to the respondent to show such a right or interest; although, this is not expressly claimed by the Complainant.

6.10 However, the Complainant also puts forward a more positive case. That is that the Respondent has registered the Domain Name to take unfair advantage of the goodwill and reputation that the Complainant has developed in the BT and/or OPENWORLD marks. The Panel accepts that such activity does not provide a right or legitimate interest (see for example, the decision of the three-member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267) and positively suggests that such a right or interest does not exist (see Premier Farnell Corp. v. BlueHost.com, Bluehost Inc / Newark del Peru S.A., WIPO Case No. D2010-2111). Further, the Panel accepts on the balance of probabilities and for the reasons set out under the heading of “Registered and Used in Bad Faith” below that this was the Respondent’s intention in this case.

6.11 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.

C. Registered and Used in Bad Faith

6.12 The Panel has already commented on the fact that a sensible reading of the Domain Name is as the terms “BT” and “Openworld” combined. It might perhaps also be read as “BT”, “open” and “world” together. However, it is difficult to conceive of any other sensible or plausible reading.

6.13 The Panel also accepts the Complainant's contention that its business and at least its BT mark is very well-known in the United Kingdom. Had the Complainant put in evidence that the Respondent was resident in the United Kingdom then that probably would have been sufficient for the Panel to have concluded in this case that the Respondent had knowledge of the BT mark, and possibly the OPENWORLD mark, when registering the Domain Name. However, the Complainant did not provide that evidence. It merely asserts that it “has established that the Respondent is based in the United Kingdom” without further explanation. This Panel is one that has previously accepted that assertions as to fact found in statements in proceedings under the Policy can be treated as “evidence” under the Policy (see, for example, First SBF Holding, Inc. v. XC2, WIPO Case No. D2008-0409). But in this case the Complainant asks too much. A mere assertion that a fact about another party has been “established” without any supporting evidence of that fact and without even any explanation of how that fact was “established” is virtually of no evidential value.

6.14 Luckily for the Complainant, this is not the end of the matter. Crucial here is the nature of the Domain Name itself. It is difficult to conceive of a sensible or ordinary use for the Domain Name with its combination of the terms “BT” and “openworld” (or even “BT” and “open” and “world”) that does not involve any reference to the Complainant’s marks. It is also highly improbable that the Domain Name would have been chosen without such a reference. There might perhaps be uses of the initials BT that do not refer to the Complainant and there might perhaps be references to “open” and ” world” that do not refer to the Complainant. But when these terms are used in combination the intended reference to the Complainant is obvious.

6.15 The next question that arises is, why did the Respondent do this? The answer to that question is not altogether clear given that the limited explanation by the Complainant of how the Domain Name has or has not been used.

6.16 The Complainant contends that the Respondent has offered to sell the Domain Name to the Complainant (although there is no further evidence of this) and the Panel accepts that an offer to sell the Domain Name to the Complainant for GBP 2,500 would constitute evidence of bad faith registration and use possibly within the scope of paragraph 4(b)(i) of the Policy.

6.17 However, ultimately, the Panel is satisfied that whatever the Respondent's exact intentions, the most likely reason for registration was in order in some way or other to take unfair advantage of the reputation and goodwill associated with the Complainant's BT and OPENWORLD marks. This is sufficient for a finding of bad faith registration. The Panel also accepts that the Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003 (a decision cited by the Complainant in the Complaint) is relevant to the bad faith analysis in this case. In Telstra the panel concluded that notwithstanding the fact that the domain name was not being used for any purpose, the mere holding of a domain name in circumstances where it was hard to conceive of any legitimate use2 of the domain name constituted a use in bad faith for the purposes of the Policy. It is similarly hard to conceive of any legitimate use of the Domain Name in this case.

6.18 Another factor that strongly points to bad faith is not just the use by the Respondent of a Privacy Service, but the use of details behind the Privacy Service that are clearly false.

6.19 In the circumstances, the Panel concludes that the Domain Name was registered and has been used in bad faith. The Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

7.1 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 <btopenworld.co> be transferred to the Complainant.

Matthew S. Harris
Sole Panelist
Dated: May 7, 2011


1 See British Telecommunications plc v. One In a Million [1998] EWCA Civ 1272

2 For a further explanation on what is meant by legitimate use in this context, see the three-member panel decision in Mr. Talus Taylor, Mrs. Anette Tison v. Vicent George Warning/Fayalobi Interaction Management, WIPO Case No. D2008-0455.

 

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