Bertelsmann AG v Global Publications Ltd [2008] DRS 5815 (24 July 2008)

Bertelsmann AG v Global Publications Ltd [2008] DRS 5815 (24 July 2008)

The complainant has rights in the mark BERTELSMANN, which is not descriptive of its business and is identical to the domain name. The respondent's use of the domain name, including links to music sites (a core business of the complainant), creates a strong likelihood of confusion and takes unfair advantage of the complainant's rights. The respondent failed to provide any legitimate explanation or evidence of genuine use. The domain name is therefore an abusive registration and should be transferred to the complainant.

Citation
[2008] DRS 5815
Parties
Complainant: Bertelsmann AG; Respondent: Global Publications Ltd
Jurisdiction
United Kingdom
Judgment Date
24 July 2008
Procedural Posture
Domain Name Dispute / Expert Decision
Outcome
Domain name transferred to complainant
Legal Topics
Domain Name Disputes, Trade Marks, Passing Off, Abusive Registration
Intellectual Property Information Technology Domain Name Disputes Trade Marks Passing Off Abusive Registration

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Parties

Bertelsmann AG

Complainant

Global Publications Ltd

Respondent

Procedural Posture

Domain Name Dispute / Expert Decision

Legal Issues

  1. 1 Whether the complainant has rights in a name or mark identical or similar to the domain name
  2. 2 Whether the domain name, in the hands of the respondent, is an abusive registration

Ratio Decidendi

The complainant has rights in the mark BERTELSMANN, which is not descriptive of its business and is identical to the domain name. The respondent's use of the domain name, including links to music sites (a core business of the complainant), creates a strong likelihood of confusion and takes unfair advantage of the complainant's rights. The respondent failed to provide any legitimate explanation or evidence of genuine use. The domain name is therefore an abusive registration and should be transferred to the complainant.

Court Disposition

Domain name transferred to complainant

Orders

  • The domain name bertelsmann.co.uk is to be transferred to Bertelsmann AG.