WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
British Telecommunications plc v. Whoisguard Protected / BT Sports
Case No. D2013-2071
1. The Parties
The Complainant is British Telecommunications plc of London, United Kingdom of Great Britain and Northern Ireland (“UK”), internally represented.
The Respondent is Whoisguard Protected of Panama City, Panama / BT Sports of Karachi, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <btsportshd.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2013. On December 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 2013, 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 December 6, 2013 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 December 6, 2013.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2013.
The Center appointed Leon Trakman as the sole panelist in this matter on January 7, 2014. 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 one of the world’s leading providers of communications services. The Complainant alleges that its trademark and name BT is widely recognized globally and active in over 170 countries and in particular, in the UK. It alleges that, in the UK, BT is a household name, and provides services globally to large corporate and public sector customers in a wide range of sectors, varying from banking and financial services, consumer packaged goods, logistics, pharmaceuticals and manufacturing. In the UK, the Complainant contends that it contributes approximately GBP 3 billion annually to the UK Exchequer. The Complainant has over 1,000 trademark registrations worldwide incorporating the BT name, covering a wide range of communications goods and services, information and business related services and leisure and entertainment services.
The Complainant maintains further, that it has registered its BT corporate trademark in over 170 countries including the UK, European Community and the United States of America. In addition, it registered its BT SPORT and BT SPORTS trademarks in plain script as well as variations thereof in the UK. The annex to the Complaint indicates that BT SPORT and BT SPORTS trademarks have been registered as of October 5, 2012 and August 29, 2012 respectively. It also registered BT SPORT in Ireland and has filed a community trademark application for BT SPORT. The Complainant has provided copies of the registration certificates for its trademarks and a list of its worldwide trademark registrations.>
The disputed domain name was created on May 13, 2013 and has been used for streaming of live sporting events.
5. Parties’ Contentions
The Complainant alleges that it has used its BT trademark continuously since 1991 and that, prior to that, it was known by the general public and business people as “BT”, as an abbreviation of its house mark, British Telecom. The Complainant provides evidence, including a statement by a prominent judge that the Complainant’s BT trademark was a well known household name (See Lord Justice Albous in British Telecommunications Plc v. One in a Million Ltd., 1 W.L.R  925). The Complainant also refers to a statement made in a survey by Lord Coe, Chairman of London Organising Committee of the Olympic And Paralympic Games (LOCOG) that the Complainant “it is inconceivable that we could deliver the 2012 Games without BT on board.”
The Complainant stresses that on May 9, 2013, it announced a high profile rollout of its BT Sport service. The announcement appeared on all major TV news channels in the UK and Ireland and in all national newspapers, on radio, in newspapers, magazines and online. The purpose of the BT Sport service was to offer a wide range of sports channels which were launched on August 1, 2013. The BT Sport services featured live sporting events, sports related chat shows, comedy shows, documentaries and news. These programs were available on the BT Sport channels called BT Sport1 and BT Sport2 and in high definition (HD) on BT Sport1HD and BT Sport2HD, as well as on BT TV, Sky and Virgin Media. By August 12, 2013, less than two weeks after the launch of BT Sport, subscribers exceeded one million and by August 16, 2013, over 10,000 commercial premises, including pubs, clubs and betting shops had subscribed to BT Sport. The Complainant further states that the number of subscribers had reached two million by the time it filed the Complaint, and that thousands of households viewed BT Sport on their BT mobile devices.
The Complainant alleges that the website to which the disputed domain name resolves is being used to provide access to BT and Sky Sports streams via streams from <hdcast.org>. The Complainant explains that <hdcast.org> is a platform that provides online users with the facility to create and share personal streaming channels and is used for both legitimate and illegitimate purposes. The Complainant further alleges that in effect, the Respondent is using the disputes domain name and the website to which the disputed domain name directs Internet users to offer illegal streaming of live sporting events. By clicking on the appropriate event the user wishes to stream, that website automatically links the user to a hosting server at which that content is available for streaming.
The Complainant also alleges that, due to the privacy protection of the Respondent’s registrant details, it sent a “cease and desist” letter to the “contact us form” provided by the website to which the disputed domain name resolves, but has received no response. The Complainant further alleges that, on October 28, 2013, the Federation against Copyright Theft Limited (FACT) sent DMCA (Digital Millennium Copyright Act) notifications and letters informing the host providers, Black Lotus in the United States and LeaseWeb in the Netherlands, alleging that the disputed domain name infringed the Complainant’s trademark. FACT, acting on behalf of the Complainant, then sent follow up requests that the disputed domain name be removed. The Complainant alleges that no responses were received to any of these requests. On October 28, 2013, FACT, acting on behalf of the Complainant, also sent a notification to Chatango LLC, the company providing a live online chat facility for websites which was being used on the website under the disputed domain name. The Complainant alleges that Chatango LLC failed to respond to this communication.
The Complainant therefore contends that the disputed domain name <btsportshd.com> is identical or confusingly similar to the trademark in which the Complainant has rights in terms of Policy, paragraph 4(a)(i). It argues that the Respondent has no rights or legitimate interests in the disputed domain name in terms of Policy, paragraph 4(a)(ii). It also maintains that the Respondent registered and is using the disputed domain name in bad faith in terms of Policy, paragraphs 4(a)(iii) and 4(b).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <btsportshd.com> is almost identical to programs offered by the Complainant under the designation “BT Sport1HD” and “BT Sport2HD”. The disputed domain name is also confusingly similar to the Complainant’s various trademarks including BT SPORTS. Added to this confusion is the fact that the Respondent uses the Complainant’s BT Sport logo on a website to which the disputed domain name directs users.
Accordingly, the Panel holds that the disputed domain name is, at the very least, confusingly similar to the Complainant’s trademarks and identical to a number of the names under which it provides its BT Sport services except for the addition of non-distinguishing text. The Panel therefore determines that the disputed domain name <btsportshd.com> is identical or confusingly similar to the trademark in which the Complainant has rights in terms of Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel finds no legal relationship between the Complainant and the Respondent. The Complainant has not licensed or otherwise authorized the Respondent to use the Complainant’s trademark. Nor is the Respondent authorized to use the Complainant’s trademarks such as BT SPORT, or BT SPORTS. In addition, there is no evidence on the record that the Respondent has any contractual rights, or any rights arising by other legal relationships, such as through an agency or distributorship agreement, by which to use the Complainant’s trademarks. Lastly, the Respondent has failed to participate in the proceedings to rebut the Complainant’s contentions or demonstrate any rights or legitimate interests in the disputed domain name it might have otherwise.
Accordingly, and in accordance with Policy, paragraph 4(a)(ii), the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name <btsportshd.com>.
C. Registered and Used in Bad Faith
The Panel finds that, given the timing of the registration of the disputed domain name, four days after the high profile announcement of the proposed BT Sport service and television channels by the Complainant on May 9, 2013, the international profile of the Complainant and the publicity surrounding the announcement of the Complainant’s new BT Sport businesses, the registration of the disputed domain name that is identical or confusingly similar to the Complainant’s trademark, cannot be considered as anything other than an opportunistic bad faith registration.
There is also no reasonable doubt that the Respondent is using the disputed domain name in bad faith to create confusion in the minds of users that the Respondent is either the Complainant, or is acting on behalf of the Complainant, to attract users for commercial gain to a website with which the Respondent is associated and in respect of which profits are made from online advertising.
The Panel therefore concludes that the Respondent registered the disputed domain name in bad faith and further, that the Respondent is not engaging in a bona fide or fair use of the disputed domain name. The Panel holds that such action by the Respondent is bad faith registration and use in terms of Policy, paragraphs 4(a)(iii) and 4(b)(iv). See also E! Entertainment Television, Inc v. Xinya Lui, WIPO Case No. DTV2007-0005; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
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 <btsportshd.com> be transferred to the Complainant.
Date: January 21, 2014