Automated Summary
Key Facts
The expert found that British Telecommunications PLC (BT) holds rights in the 'BT' trademark, which is the dominant element in ten domain names (e.g., bt2sip.co.uk, btcatchuptv.co.uk). These domains were deemed abusive registrations due to their similarity to BT's mark and the respondent's pattern of registering well-known brands without justification. Five 'plusnet' domains were dismissed as BT failed to prove ownership of the 'Plusnet' trademark. The domains were registered between 2012 and 2015, with no evidence of use by the respondent. The expert concluded the ten 'BT' domains should transfer to BT, while the 'plusnet' domains remain with the respondent.
Issues
- The expert had to determine if British Telecommunications PLC (BT) holds rights in the 'BT' trademark that apply to the ten domain names containing 'BT'. The complainant provided evidence of their UK trademark registration for 'BT', and the expert found that the inclusion of 'BT' as the dominant element in these domain names establishes similarity, supporting the claim of rights.
- The expert assessed whether BT Communications PLC has rights in the 'Plusnet' trademark for the five domain names containing 'Plusnet'. The complainant argued ownership through Plusnet PLC, a subsidiary of BT Group PLC, but the expert found no evidence that BT Communications PLC owns or has rights in the 'Plusnet' mark. As a result, the complaint regarding these five domains was dismissed.
- The expert evaluated if the registration of the ten 'BT' domain names constitutes abusive registration under the Policy. Given the respondent's lack of explanation, the well-known status of the 'BT' brand, and the pattern of registering multiple domains with 'BT' and related terms, the expert concluded that these domain names are abusive registrations, leading to their transfer to the complainant.
Holdings
- The expert found that the complainant has rights in a mark similar to ten domain names (bt2sip.co.uk, btcatchuptv.co.uk, btptv.co.uk, btondemandtv.co.uk, bttosip.co.uk, plusnetcatchup.co.uk, plusnetiptv.co.uk, plusnettv.co.uk, btcatchup.co.uk, bthoo.co.uk). These domain names, in the respondent's hands, are abusive registrations. The complaint is upheld for these ten domains, and they are directed to be transferred to the complainant.
- The complaint is dismissed regarding five domain names (btondemand.co.uk, btpad.co.uk, btwho.co.uk, plusnetcatchuptv.co.uk, plusnetondemandtv.co.uk). The complainant failed to establish rights in the 'Plusnet' name or mark, as no evidence of ownership or intellectual property was provided. The respondent's registration of these domains does not constitute abuse under the Policy.
Remedies
The expert has directed that the ten domain names containing the 'BT' mark, including bt2sip.co.uk, btcatchuptv.co.uk, btptv.co.uk, btondemandtv.co.uk, bttosip.co.uk, btcatchup.co.uk, bthoo.co.uk, btondemand.co.uk, btpad.co.uk, and btwho.co.uk, be transferred to the complainant, British Telecommunications PLC. The other five domain names, which include the 'plusnet' string, were dismissed as the complainant could not establish rights in 'plusnet'.
Legal Principles
- The complainant must demonstrate on the balance of probabilities that it holds rights in a similar name/mark and that the domain name constitutes an abusive registration under the Nominet UK DRS Policy.
- The decision relied on the 'balance of probabilities' standard to determine whether the ten 'bt' domain names were abusive registrations, finding the complainant satisfied this threshold.
Judge Name
Carl Gardner
Passage Text
- 7.1 I find that — • the complainant has rights in a mark which is similar to ten of the domain names (..., ..., ..., ..., ..., ..., ..., ..., and ); and that • those ten domain names, in the hands of the respondent, are abusive registrations.
- I am satisfied that the complainant has rights in respect of a mark similar to the ten domain names containing the two-letter string 'bt'.
- It does therefore seem on the face of it that the respondent is engaged in a pattern of registrations corresponding to well-known names or trade marks in which it has no apparent rights.