WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Talktalk Telecom Limited, CPW Brands Limited v. Hélio Bragança (a.k.a. N/A)

Case No. D2010-0361

1. The Parties

The Complainants are Talktalk Telecom Limited and CPW Brands Limited of Manchester, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Adlex Solicitors, UK.

The Respondent is Hélio Bragança of Bolton, Lancashire, UK.

2. The Domain Name and Registrar

The disputed domain name <talktalktechnology.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2010.

The Center transmitted its request for registrar verification to the Registrar on March 10, 2010. The Registrar replied the same day, confirming that the Domain Name was registered with it, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the Domain Name, that the Domain Name would remain on Registrar Lock during this proceeding subject to scheduled expiry on December 19, 2010, and that the registration agreement was in English and contained a submission to the jurisdiction at the location of the Registrar's principal office for court adjudication of disputes concerning or arising from the use of the Domain Name. The Registrar provided the full contact details for the Respondent on its WhoIs database and stated that it had not received a copy of the Complaint.

The registrant was identified in the contact details for the Domain Name held by the Registrar and in the Complaint as “N/A”, and the Registrar verified that this was the registrant. The above-named Respondent was identified in the contact details only as the Administrative Contact. However, the Panel is satisfied by the evidence in the Complaint and the correspondence between the Respondent and the Center that the Respondent is the true registrant of the Domain Name and should be identified accordingly as the Respondent to this Complaint.

The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 12, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 1, 2010 and this was specified expressly in the Center's notification of the Complaint to the Respondent.

The Respondent asked the Center by email on April 1, 2010, when the Response was due. The Center replied the same day informing him that the Response was due that day. The Respondent then asked for an extension of time, claiming that he had not been aware of the deadline that day and had been under the impression that 20 working days (rather than 20 calendar days) were allowed. The Center replied on April 6, 2010, stating that the due date for filing a Response had passed and that consideration of any communication which might be filed by the Respondent would be at the sole discretion of the Panel. The Respondent subsequently sent a Response by email on April 7, 2010. On April 14, 2010, the Complainants submitted a supplemental filing seeking to reply to certain matters raised in the Response.

The Center appointed Jonathan Turner as the sole panelist in this matter on April 15, 2010. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.

4. Procedural Ruling

Under paragraph 10(c) of the Rules the Panel has a discretion to extend the time limit fixed by the Rules for filing a Response in “exceptional circumstances”. The Panel declines to exercise its discretion to grant an extension in this case.

The Panel does not accept the Respondent's assertion that he thought that the time limit was 20 working days from notification of the Complaint, since the Center's notification explicitly informed the Respondent that “[y]ou have 20 calendar days … within which to submit to us any Response” and that “[i]n the absence of any extension, the last day for sending any Response …. to us is April 1, 2010”.

Since the Respondent has not provided any other explanation for not complying with the time limit, the Panel does not accept that there are exceptional circumstances such that the time for the Response should be extended. On the contrary, to allow an extension in these circumstances would give out an undesirable message that parties can obtain relief from failure to observe procedural requirements by making submissions which lack candour.

In any case, the Response does not appear to contain any material which would justify a rejection of the Complaint.

The Panel will therefore proceed to a decision on the basis of the Complaint in accordance with paragraphs 5(e) and 14(a) of the Rules. Since the Response is not admitted, it is unnecessary to consider the Complainant's supplemental filing.

5. Factual Background

The First Complainant trades under the name “TalkTalk” in the provision of fixed-line telephone and broadband services. Its main website is at “www.talktalk.co.uk”. It launched its residential telephone service under the name “TalkTalk” in February 2003 and its broadband service under the name “TalkTalk Broadband” in November 2004. It launched a free broadband service in April 2006 and obtained 750,000 customers for this service by December of that year. By October 2007 it had one million customers. As of September 2009, it had about 1.6 million customers in the UK. It also operates under the name “TalkTalk” in Belgium, France, Germany, Ireland, Spain, Switzerland and The Netherlands. It has expended some £50 million on brand marketing since 2006.

On December 17, 2008 the First Complainant announced to its employees that its division which handles its telecommunications infrastructure and network would be named “TalkTalk Technology”.

The Second Complainant is a company in the same group as the First Complainant which owns a registered Community trademark for TALK-TALK filed in July 2002, a registered UK trademark for TALKTALK filed in July 2009, and a registered UK trademark for TALKTALK TECHNOLOGY filed in February 2009.

The Domain Name was registered on December 19, 2008, naming the Respondent as administrative contact. The domain name <talktalktechnology.co.uk> was registered by the Respondent on the same date. At the date of the Complaint both domain names resolved to a web page with the heading “The Technology Blog Links” and the indications “Coming Soon …” and “This website is under construction”.

A brother of the Respondent is an employee of the First Complainant's TalkTalk Technology division.

The Complainants' parent company sent a cease and desist letter to the Respondent on July 9, 2009. The Respondent replied stating that he did not intend to conduct any similar business to that of the Complainants' group, that he was aware that “TalkTalk” is a trademark product of the Complainants' group, but that “talktalktechnology” was not. He added that he was on the final stage of development of his website and had no intention of transferring the domain names or directing them to a mail server.

6. Parties' Contentions

A. Complainant

The Complainants contend that they have registered and unregistered rights in the marks TALKTALK and TALKTALK TECHNOLOGY. They claim that these marks are recognised by the public as distinctive of their business and that TALKTALK is a household name in the UK. The Complainants further maintain that the Domain Name is identical to their mark TALKTALK TECHNOLOGY apart from the domain suffix and that it is confusingly similar to their TALKTALK mark, from which it differs only in the addition of a descriptive term and the domain suffix.

The Complainants contend that the Respondent has no rights or legitimate interests in respect of the Domain Name. They point out that they have no association with the Respondent and have never authorised or licensed the Respondent to use the marks; that there is no evidence that the Respondent has been commonly known by the name comprised in the Domain Name; and that there is no evidence that the Respondent has ever used the Domain Name, let alone for legitimate noncommercial or fair use.

The Complainants allege that the Domain Name was registered and is being used in bad faith. They submit that the Respondent registered the Domain Name in order to prevent the Complainants from reflecting their trademarks in a corresponding Domain Name. They observe that the registration of the Domain Name and its “.co.uk” equivalent two days after the Complainants informed their employees, including the Respondent's brother, of their intention to use the name “TalkTalk Technology” is unlikely to be a coincidence. The Complainants further allege that the Respondent has engaged in a pattern of such conduct by registering the Domain Name and its “.co.uk” equivalent.

The Complainants also contend that bad faith is to be inferred from the Respondent's passive holding of the Domain Name together with the absence of any conceivable good faith use of it, the timing of the registration and the Respondent's failure to explain his purpose in registering the Domain Name when challenged in correspondence.

The Complainants request a decision that the Domain Name be transferred to them.

B. Respondent

As stated above, the Panel has not admitted the Respondent's Response.

7. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainants must prove, (i) that the Domain Name is identical or confusingly similar to a mark in which they have rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.

These requirements will be considered in turn.

A. Identical or Confusingly Similar

The Panel finds on the evidence that the Second Complainant has registered rights in the marks TALKTALK and TALKTALK TECHNOLOGY. As has been held in many cases decided under the UDRP, the dates of the registrations are irrelevant to its first requirement. The Panel further finds on the evidence that the First Complainant has unregistered rights in these marks by reason of the reputation and goodwill established through its extensive use of them. Again the dates on which the First Complainant commenced the use or acquired the rights are irrelevant to this requirement.

The Panel considers that the Domain Name is identical for the purpose of this requirement to the Complainant's mark TALKTALK TECHNOLOGY; it is well established that in comparing a domain name with a mark for the purpose of this requirement, the generic top level domain suffix should be discounted. The Panel also considers that the Domain Name is confusingly similar to the Complainant's mark TALKTALK, from which it differs only in the addition of a descriptive term and the domain suffix. The Panel considers that many members of the public in the UK would assume that the Domain Name belongs to the Complainants' group. The first requirement of the UDRP is satisfied.

B. Rights or Legitimate Interests

The Panel finds on the evidence that the Respondent had not used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute. Even 8 months after the cease and desist letter sent to the Respondent by the Complainants' group, the Domain Name still resolved to a holding page.

The Panel is also satisfied that the Respondent is not commonly known by the Domain Name and that he is not making legitimate noncommercial or fair use of it.

Having reviewed the evidence, the Panel further considers that there is no other basis on which the Respondent could claim rights or legitimate interests in respect of the Domain Name. The second requirement of the UDRP is satisfied.

C. Registered and Used in Bad Faith

The Panel is not able to find on the evidence that any particular one of the examples of circumstances constituting evidence of bad faith set out in paragraph 4(b) of the UDRP is present in this case. In particular, the Panel does not regard the Respondent's registration of the Domain Name and the “.co.uk” equivalent as sufficient to constitute a pattern of conduct as required by paragraph 4(b)(ii) of the UDRP. However, it is clear from the wording of the UDRP and confirmed by many decisions under it that these examples are not exhaustive and that it is necessary to consider whether in all the circumstances the disputed domain name was registered and is being used in bad faith.

In this case, the Panel finds that the Complainants' TALKTALK brand was very well-known in the UK when the Domain Name was registered; that the Domain Name and the corresponding “.co.uk” domain name were registered two days after the Complainants informed their staff, including the Respondent's brother, of their intention to adopt the name “TalkTalkTechnology” for one of their divisions; and that the Respondent has not commenced any bona fide use of the Domain Name or the corresponding “.co.uk” domain name in over 15 months since they were registered. In all the circumstances, the Panel is satisfied that the Respondent registered and is using the Domain Name in bad faith. The third requirement of the UDRP is met.

D. Relief

The Complaint is not specific as to which complainant transfer of the Domain Name is sought if, as the Panel finds, the Complaint is upheld. On the evidence, intellectual property relating to the First Complainant's business is registered in the name of the Second Complainant. Accordingly the Panel considers it appropriate to order transfer of the Domain Name to the Second Complainant.

8. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <talktalktechnology.com>, be transferred to the Second Complainant.

Jonathan Turner
Sole Panelist

Dated: April 22, 2010