- June 9, 2014
- Posted by: Josiah Hincks Solicitors
- Category: Litigation Updates
British Telecommunications plc (BT) has succeeded in wresting control of nine ‘confusing’ Internet domain names from a businessman who registered them within days of the company’s launch of its ‘BT Sport’ service amidst a blaze of publicity.
The web addresses all incorporated the composite word ‘btsport’ and included ‘btsportfootball.co.uk’, ‘btsportgolf.co.uk’ and ‘btsportrugby.co.uk’. BT complained to the Internet dispute resolution service Nominet, claiming that their registration could only have been motivated by a desire to sell them on at a profit.
The businessman argued in correspondence that he intended to use the domain names as discussion forums for viewers of the BT Sport service and that he had no intention of selling them. However, BT insisted that he had no possible legitimate, non-commercial or fair use for the web addresses.
It was submitted that the businessman was well aware of BT’s rights when he registered the domain names shortly after the company’s high profile announcement of its new service and that he was intent on trading off and profiting from the company’s goodwill.
In directing the transfer of the disputed domain names to BT, a Nominet expert noted that the phrase ‘BT Sport’ was protected by a UK trade mark and that the inclusion of the mark at the beginning of each of the domain names meant that a similarity with BT’s mark was built into each of them.
BT had established on the balance of probabilities that the businessman must have had the company in mind when he registered the domain names, which had no obvious potential for legitimate use. The web addresses conveyed the impression that they were connected to BT and were likely to confuse Internet surfers. In the circumstances, they took ‘unfair advantage’ of BT’s rights and were ‘abusive registrations’ in the businessman’s hands.