The Complainant is O2 Holdings Limited, of Berkshire, the United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Stobbs IP Limited, the United Kingdom.
The Respondent is O2 Videos of New Delhi, India. 2. The Domain Names and Registrar
The disputed domain names , and are registered with N LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2014. On January 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 21, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 24, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 27, 2014, and a second amended Complaint on January 28, 2014.
The Center verified that the Complaint together with the amended Complaints satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 31, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2014.
On January 28, 2014 the Respondent sent an email to the Center responding to the Complaint. The Respondent re-sent the same email together with attachments on January 31, 2014. The Center acknowledged receipt of these emails and requested that the Respondent confirm that the email and attachments may be regarded as a complete response. The Respondent confirmed that its email would serve as its complete Response on February 7, 2014.
On February 7, 2014, the Complainant made a supplementary filing to the Center by way of reply to the Response.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on February 24, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is the Intellectual Property holding company of the O2 Group of telecommunications companies. The Complainant’s O2 group was formed in November 2001. Since that time, the Complainant has used and promoted the O2 brand for its telecommunications business. The Complainant is recognized as a leading mobile telephone service provider in the UK, Ireland, Czech Republic, and Slovakia, among other countries.
The Complainant owns trademark registrations for O2 in the UK, the United States of America (“USA”) and in the European Union, (Community Trade Marks, “CTM”) as listed below:
O2 Trademark Registration No. 2264,516 – June 7, 2002 – UK
O2 Trademark Registration No. 2271228 – September 27, 2002 – UK
O2 Trademark Registration No. 2415848 – March 7, 2006 – UK
O2 Trademark Registration No. 2415862 – October 31, 2008 - UK
O2 Trademark Registration No. 3848986 – September 14, 2010 - USA
O2 Trademark Registration No. 2231903 – March 9, 1999 - USA
O2 Trademark Registration No. 2109627 – May 13, 2004 - CTM
O2 Trademark Registration No. 2284818 – June 16, 2004 - CTM
O2 Trademark Registration No. 9352337 – February 18, 2011 – CTM
O2 Trademark Registration No. 8337768 – January 12, 2010 – CTM
The domain name was registered on October 16, 2008; the domain name was registered March 13, 2009; and the domain name was registered on April 19, 2013. At the time the Complaint was filed, the disputed domain names reverted to websites that provided links for streaming various forms of video content, including movies and television shows. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant submits that it owns many UK, USA and CTM trademark registrations for the trademark O2 (i.e. Registration Nos. 2264,516; 2271228; 2415848; 2415862; 3848986; 2231903; 2109627; 2284818; 9352337; 8337768). The earliest of these registrations date back to March 9, 1999.
The Complainant contends that the disputed domain names , and are confusingly similar to the Complainant’s registered trademark O2. The Complainant contends that the words “cinemas”, “videos” and “tv series” are descriptive of the Complainant’s wares and services. The addition of these words do not distinguish the disputed domain names from the Complainant’s distinctive re