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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> British Telecommunications plc v Compulab Ltd [2009] DRS 6688 (9 April 2009) URL: http://www.bailii.org/uk/cases/DRS/2009/6688.html Cite as: [2009] DRS 6688 |
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Complainant : British Telecommunications plc
United Kingdom
Respondent : Compulab Limited
Colombia
btsupport.co.uk (the Domain Name)
On the 14th January 2009 the Complaint was lodged with Nominet UK Limited ("Nominet"). Nominet validated the Complaint on the 15th January 2009 and on the same day it was sent to the Respondent giving it 15 working days within which to lodge a Response and which was to be on or before the 5th February 2009. On the 4th February 2009 the Respondent wrote by e-mail saying that they were unable to open all the embedded documents in the Complaint and asking for an extension of time in which to lodge its Response until the end of February 2009. On the same day Nominet responded granting a 2 working day extension until 9th February 2009 and the Respondent complied with that revised deadline. There was no reply to the Respondent's Response and mediation commenced on the 20th February and concluded unsuccessfully on the 4th March 2009.
On the 13th March 2009 the Complainant paid the appropriate fee for a Decision by an Expert pursuant to paragraph 7 of Nominet's DRS Policy ("the Policy"). On the 13th March 2009 Mr. Niall Lawless ("the Expert") was selected and on 16th March 2009 was formally appointed to act as Expert in this dispute, having confirmed that he knew of no reason why he could not properly accept the appointment and knew of no matters which ought to be drawn to the attention of the parties which might appear to call into question his impartiality and / or independence. He is required to give his Decision by 9th April 2009.
There are no outstanding formal or procedural issues.
The Complainant is one of the world's leading providers of communications solutions and services operating in 170 countries including the United Kingdom. Its principal activities include networked IT services, local, national and international telecommunications services, as well as higher-value broadband and Internet products and services.
The Respondent is long established in buying and selling domain names ("a domainer") and providing website development services.
The domain name "btsupport.co.uk" was registered by the Respondent on the 12th June 2007.
The Complainant seeks transfer of the Domain Name "btsupport.co.uk" to them.
The Complainant says that the Domain Name "btsupport.co.uk" controlled by the Respondent is an Abusive Registration under Nominet's DRS Policy paragraphs 3 (a)(i)(A), (B), 3 (a) (ii), (iii) and that its use by the Respondent is not legitimate, non-commercial or fair.
The Complainant says that it has registered over 1000 trademarks comprising or incorporating the letters BT and that it has acquired considerable and valuable goodwill and reputation in the trademark and trading style "BT". It says that the registration of a domain name including the "BT" trademark has been held to amount to a false representation of an association or connection with BT and thus to passing off, it considers the Domain Name to be such.
The Complainant says that the dominant and only distinctive part of the Domain Name is the "BT" element and "support" is an entirely descriptive word and that its mere addition to a trademark does not render the resulting Domain Name as distinguishable from the trademark.
The Complainant says that its trademark is so well known and recognized that there can be no conceivable bona fide offering of goods or services that can be made by a third party without impacting its rights. The Complainant says that there is no legitimate, non-commercial or fair use possible for the Domain Name by the Respondent for the purposes of paragraph 4 (a)(i)(C) of the Procedure (sic. Policy).
The Complainant says that there appears to be no genuine offer by the Respondent of any goods or services sufficient to satisfy paragraph 4 (a)(i)(A) of the Procedure (sic Policy).
The Complainant says that its principal activities include networked IT services, local, national and international telecommunications services, and higher-value broadband as well as Internet products and services, and Broadband is at the heart of its business strategy. Because the Respondent refers to Broadband Technology Support without sufficient qualification and linked to Blue Tooth this will seriously mislead or confuse Internet users into believing the website is associated with it. It says say that the references to Broadband and Blue Tooth render the Domain Name as to be taking unfair advantage of its rights in the name "BT".
The Complainant says that the Respondent is using the domain name in a way that will confuse Internet users into the mistaken belief that the Domain name is registered to, or operated by or authorized by, or otherwise connected with the Complainant.
The Complainant says that although the holding page on the Respondents website may dispel confusion (which it does not accept is so) that the use of the website by the Respondent causes initial interest confusion.
The Complainant says that the Respondent is using the Domain Name to host webpages that are not offering genuine support services but in an attempt to gain income through confusing internet users as to the provenance of the website and also that it is free-riding on the Complainants significant goodwill and reputation.
The Complainant says that the current website to which the Domain Names resolves emphasizes the letters "B" and "T" in the title "Blue Tooth Support" and uses shades of red and blue confusingly similar to its former logo.
The Complainant says that the Respondent has registered a number of domain names for which it appears to have little or no justification and that the Complainant believes that is enough evidence to show a pattern of activity for the purposes of paragraph 3(a)(iii) of the Procedure (sic Policy).
The Complainant says that the Respondent is well aware of the Complainants rights and its intention to make use of the Domain Name but is actively preventing the Complainant from taking control of it and thus intentionally preventing the Complainant for using it for legitimate business interests.
The Complainant says that on the 2nd October 2007 they wrote to the Respondent alerting them to their rights in the name "BT" and that the Respondent's reply on the 5th November 2007 invited the Complainant to offer an out-of-court settlement.
The Respondent rejects any assertion by the Complainant that it has rights to domain names similar to their trademarks and says that although the Complainant has numerous trademarks they do not have exclusive rights or total control of the initials "BT" in the domain name world. The Respondent says that there are numerous cases of domain names legitimately owned and which start with the letters BT.
The Respondent says that the Complainant is presenting irrelevant arguments in that the Domain Name no longer resolves to a webpage related to Broadband Technology and that it purposely changed the webpage away from Broadband Technology to Blue Tooth so as not to infringe any of the Complainants trademark rights.
The Respondent says that it was the Complainant who approached it and that it was prepared to consider any offer made by the Complainant as a low cost and simple way of allowing the Complainant to take control of the Domain Name.
The Respondent says that buying and selling domain names is a legitimate business and that any suggestion by the Complainant that "parking" of domain names is illegal is a very naïve and tunneled view. It also says that the Complainant does not have the ability to castigate, deny or dismiss the "pay per click" internet financial model.
The Respondent says that the current website the Domain Names resolves to has different livery to that used by BT in that there are different Pantones to the original BT colours and that these were simply chosen by it for emotional reasons (resembling the colours of a favourite football club).
The Respondent questions whether it is for the Complainant to say what "confuses" internet users. It says that if people read the current website to which the Domain Name resolves the reference to Blue Tooth support is very clear.
The Respondent says that it has a generic domain name that could be used to provide a free public service explaining Blue Tooth technology and that it will not cause any confusion and in any event confusion does not equate to abuse or mean abusive.
The Respondent says that it began building its domain name portfolio ten years ago and that the portfolio comprises many domain names. It points out that in its long history of selling domain names this is only the second time it has had a complaint referred to Nominet's Dispute Resolution Service (DRS).
7.1 General
The Nominet DRS Policy requires that for a Complaint to succeed the Complainant must prove to the Expert on the balance of probabilities that :-
i. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Names; and
ii. The Domain Names, in the hands of the Respondent are Abusive Registration.
Rights include, but are not limited to, rights enforceable under English Law.
In order to show that the Domain Names are Abusive Registrations, the Complainant must prove that the Domain Name either :-
i. At the time when the registration or acquisition took place, took unfair advantage of or were unfairly detrimental to the Complainant's Rights.
ii. Have been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
The Complainant is required to prove to the Expert that the Claimant has Rights and that the Domain Names in the hands of the Respondent are Abusive Registrations; both elements must be present.
7.2 Complainant's Rights
It is clear that the Complainant has Rights in the trademark BT and that BT is synonymous with it and is used extensively in the UK in connection with it selling a very wide range of goods and services.
Because of this I decide that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name.
7.3 Abusive Registration
Under the Nominet DRS Policy Section 3 Evidence of Abusive Registration guidance is given as to what factors may evidence that the Domain Name is an Abusive Registration. A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows :-
3(a)(A). non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows :
3(a)(i)(A). for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the
Domain Name;
3(a)(i)(B). as a blocking registration against a name or mark in which the Complainant has Rights.
3(a)(ii). Circumstances indicating that the Respondent is using or threatening to use the Domain Name in a way which has confused or is likely to confuse people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;
3(a)(iii). The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern.
History of the use of the Domain Name
The Respondent says that it "has owned BTSupport since 2004" and the Nominet WHOIS service shows that the Domain Name was registered by the Respondent on the 12th June 2007. The use of the domain name has evolved between 2004 and today, three different phases are apparent :-
1. In its letter of 2nd October 2007 the Complainant asserts that when entering this Domain Name into a web browser the user would encounter a holding page populated with pay per links to websites with "adult" content. In its letter dated 5th November 2007 the Respondent says that the Domain Name was pointing to a Sedo parking page as result of a mistake and they had corrected this by linking it to resolve to the domain name "btsupport.com". In its e-mail dated 19th November 2007 the Complainant acknowledges the removal of the Sedo links to the "adult" content.
2. In its Response the Respondent says that they originally used "btsupport.com" for an idea in "Broadband Technology Support" but that after an adverse World Intellectual Property Organization (WIPO) Uniform Dispute Resolution Procedure (UDRP) decision they changed the use of the Domain Name to "Blue Tooth Support". The WIPO Administrative Panel Decision (case number D2007-1803) ordered that the domain names "btsupport.com" and "btsupport.net" be transferred to the Complainant. On the 22nd October 2008 the holding page referred to "BTSUPPORT Broadband Technical Support All you Need To Know About Broadband ………… Broadband Technical support are here to offer a helping-hand with all these questions and more … COMING SOON".
3. Currently the Domain Name resolves to its own website which contains some links to third party websites and which vary depending when the site is accessed. The Respondent says that on 7th January 2009 one such link was to The Carphone Warehouse one of its major competitors; that link is not apparent today but other links to Orange and O2 are. The links are "Ads by Google"; these use Google "AdSense" which is a free program that enables website publishers of all sizes to display relevant Google advertisements and earn money. The website homepage says "This site is a placeholder of Internet real-estate owned by the company Compulab, just waiting to be developed. Convince us on a good site idea or plan and you can use it free of charge". The Respondent says that they changed the website from supporting Broadband Technologies to Blue Tooth so as not to cause offence to any BT trademark registration. Also the Domain Name is generic and could be used to provide a free public service explaining Blue Tooth technology.
Selling the Domain Name. One factor that Nominet provides which may evidence that the Domain Name is an Abusive Registration are circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant, for valuable consideration in excess of the Respondents documented out-of-pocket costs directly associated with acquiring or using the Domain Name.
In its letter dated 5th November 2007 the Respondent said that "Under domain law I cannot offer to sell you the domain name directly. However under civil law you are free to offer an out of court settlement". In its e-mail dated 19th November 2007 the Complainant responded that "Your invitation for us to make you an offer or an out of court settlement is therefore untenable and is rejected". In its e-mail also dated 19th November 2007 the Respondent replied that "The offer of the out of court settlement was made in goodwill to save publicity to BT, whom I have no axe to grind and in fact am a customer. I however withdraw that offer and await the appropriate communication from Nominet".
Many people have a large portfolio of domain names and it is an accepted principle of Nominet that secondary trading in domain names is not in itself abusive.
The Complainant has not offered any evidence to support its contention that the Domain Name in the hands of the Respondent is abusive in accordance with paragraph 3(a)(i)(A) of the Policy.
Blocking registration. The Complainant says that the Domain Name has become a blocking registration against a name or mark in which it has rights in that the Respondent is well aware of the Complainants rights and its intention to make use of the Domain Name but is actively preventing the Complainant from taking control of it and thus intentionally preventing the Complainant for using it for legitimate business interests.
I accept that is so but under Nominet's policy for this to be evidence of an Abusive Registration the Complainant must not show just that the Domain Name may act as a blocking registration, but this was the primary intent of the Respondent at the time the registration was made.
The Complainant has offered no evidence that meets the required burden of proof to support its contention that the Domain Name in the hands of the Respondent is abusive in accordance with paragraph 3 a i B of the Policy.
Using Domain Name to Confuse. The Complainant also says that the Respondent is in breach of Nominet DRS Policy paragraph 3(a)(ii). It says that because the Respondent refers to Broadband Technology Support without sufficient qualification and linked to Blue Tooth this will seriously mislead or confuse Internet users into believing that the website is associated with it.
The Complainant says that although the holding page on the Respondents website may dispel confusion (which it does not accept is so) that the use of the website by the Respondent causes initial interest confusion.
Nominet make it clear that even in respect of its own "appeal decisions" that these are to be "persuasive but not binding" on other experts; however notwithstanding this it is permissible for me to consider decisions made by other DRS experts and appeal panels. In the Epson -v- Cybercorp Decision (DRS03027) it was stated that "confusion which may arise irrespective of the content of the Respondent's website, merely as a result of the Respondent's adoption of a Domain Name incorporating the [registered trademark], can legitimately be taken into account" in determining whether there is an abusive registration.
However, that decision also goes on to say that "there is no absolute rule that any domain name incorporating the [registered trademark] will be an Abusive Registration" and that "the question of whether the (misleading) impression of a commercial connection is created is a question of fact in each case".
The Complainant refers extensively to its trademark rights and says that the only distinctive part of the Domain Name is the "BT" element and "support" is an entirely descriptive word and that its mere addition to a trademark does not render the resulting Domain Name as distinguishable from the trademark.
It has been said on many occasions that Domain Name disputes need to be determined by reference to the Policy and not the law. While the Policy is intended to represent a quick and cost-effective alternative to litigation, the Policy and the law of trademarks are not interchangeable.
Not all abusive registrations under the Policy will necessarily constitute trademark infringement and not all trade mark infringements constitute abusive registration under the Policy.
The Respondent says that the Complainant is presenting irrelevant arguments in that the Domain Name no longer links to a webpage related to Broadband Technology (which it purposely changed so as not to cause offence to any BT trademark registration) and that if people read the current website to which the Domain Name resolves the reference to Blue Tooth support is very clear.
The facts of this case are that the Blue Tooth webpage does dispel confusion that the website is associated or connected with the Complainant ("This site is a placeholder of Internet real-estate owned by the company Compulab, just waiting to be developed. Convince us on a good site idea or plan and you can use it free of charge").
But I also have to consider if the use of the Domain Name by the Respondent causes initial interest confusion.
Initial interest confusion can be considered in different ways.
One way is set out in the World Intellectual Property Organisation (WIPO) website "WIPO Overview of WIPO Panel Views on Selected UDRP Questions", answer to Question 1.2 Is the content of a website relevant in determining confusing similarity? :- Consensus view: The content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity. This is because trademark holders often suffer from "initial interest confusion", where a potential visitor does not immediately reach their site after typing in a confusingly similar domain name, and is then exposed to offensive or commercial content. The test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion.
Another way to consider initial interest confusion (the Steinway test) is that the customer searches for the Complainant's website via the trademark intending to buy products or services. The customer locates products supplied by the Complainant's competitors and even though realizing that they are not being sold by the Complainant it buys those anyway. Therefore the Complainant loses money.
Using the Domain Name to offer competing products to the Complainant satisfies the Steinway test and it is being used by the Respondent to free-ride on the Complainants significant goodwill and reputation to earn "pay per click" revenue.
I decide on the balance of probabilities that even in the absence of evidence of actual confusion the Domain Name has been used in a way which has confused people or businesses and that under the test in Nominet's DRS Policy 3(a)(ii) and that in the control of the Respondent the Domain Name is an Abusive Registration.
Pattern of Registrations. The Complainant says that the Respondent has registered a number of domain names for which it appears to have little or no justification and it believes that is enough evidence to show a pattern of activity for the purposes of paragraph 3(a)(iii) of the Policy. Under Nominet's DRS Policy, if the Complainant can demonstrate that the Respondent is engaged in a pattern of such registrations that would be a factor to consider as evidence of an Abusive Registration.
Pattern is a common English language word and in the Combined Chambers Dictionary Thesaurus is cited as meaning a "coherent series of occurrences". The Complainant has offered no evidence that meets the required burden of proof that there is a pattern of activity; because of this I decide that there is no evidence before me that meets this test of Abusive Registration under paragraph 3(a)(iii) of the Policy.
7.4 Conclusion
The Expert finds on the balance of probabilities that the Complainant has Rights in respect of a name identical or similar to the Domain Name and that the Complainant has proved, on the balance of probabilities, that the Domain Name, in the hands of the Respondent is an Abusive Registration.
For the reasons set out in detail above, having decided that the Domain Name in the hands of the Respondent is an Abusive Registration, the Expert directs that the Domain Name is transferred to the Complainant.
Niall Lawless, Nominet Expert
9th April 2009
