WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
O2 (Germany) GmbH & Co. OHG v. CB
Case No. D2007-0327
1. The Parties
Complainant is O2 (Germany) GmbH & Co. OHG, represented by Lorenz Seidler Gossel, Germany.
Respondent is CB, Flagstaff, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Intercosmos Media Group, Inc. d/b/a D.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) electronically on March�5,�2007, and in hardcopy on March�9,�2007. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”) and the deficiencies noted by the Center have been amended with the Amendment to the Complaint which was submitted electronically on March�20,�2007 and in hardcopy on March�22,�2007.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced March�27,�2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April�16,�2007. On April�18,�2007, the Center notified Respondent of his default in failing to file a Response with the Center.
The Center appointed Andrea Mondini as a single member panelist in this matter on May�10,�2007. The Panel finds that he was properly appointed. 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 a member of the O2 group which is a publicly-listed telecommunications service provider in the United Kingdom of Great Britain and Northern Ireland. The Complainant was founded in 1995 and after being renamed to O2 (Germany) in early May�2002, has provided mobile phone services in Germany, the United Kingdom of Great Britain and Northern Ireland, Ireland, and the Czech Republic. The Complainant is one of the four large providers in mobile phone services in Germany and records sales of more than 2 Billion Euros a year.
Complainant is owner of the following registered trademarks:
O2, registered in Germany (Reg. No. 301 52 864)
O2, registered in Germany (Reg. No. 301 52 481), European Community (Reg. No. 002109627)
O2 STARTER, registered in Germany (Reg. No. 302 05 750)
O2 SELECT, registered in Germany (Reg. No. 302 05 752)
O2 CAN DO, registered in Germany (Reg. No. 302 16 885)
O2 FOR YOU, registered in Germany (Reg. No. 302 24 436)
O2 DATA, registered in Germany (Reg. No. 302 26 167)
O2 GERMANY, registered in Germany (Reg. No. 302 12 745)
O2 MUSIC, registered in Germany (Reg. No. 305 54 662)
O2 ARENA, registered in Germany (Reg. No. 305 77 193)
O2 WORLD, registered in Germany (Reg. No. 306 16 106)
O2 XDA, registered as a Community Trademark (Reg. No. 002623890)
O2 BUSINESS, registered as a Community Trademark (Reg. No. 003938222)
Complainant filed its first O2 trademarks in 2001. The German trademark O2 WORLD, (Reg. No. 306 16 106) was filed on March�14,�2006.
The former registrant, Domain Magic, LLC, registered the disputed domain name on May�22,�2004. The disputed domain name was transferred to the Respondent in February�2007.
The former registrant and Respondent have used the disputed domain name to offer mobile phone services offered by several telecommunication providers.
5. Parties’ Contentions
A. Complainant
Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, Complainant argues that it owns numerous trademarks with the element “O2”, that this sign is well known for mobile phone services in Germany, while the word “world” is a geographical indication only and without any distinctive character. The combination of a trademark such as O2�with a geographical name is common practice for many domain names and therefore does not eliminate a confusing similarity between Complainant’s trademarks and the disputed domain name.
In reference to the element in paragraph 4(a)(ii) of the Policy, Complainant contends that none of the situations described in paragraph 4(c) of the Policy can be established in this case. Complainant states that Respondent has not been authorized to use the O2�trademarks in its domain name nor to make any suggestion that it is endorsed by or otherwise affiliated with the Complainant, nor otherwise to trade off the goodwill of the Complainant by advertising telecommunication services. Furthermore, Complainant asserts that Respondent was not commonly known by the domain name and has no legitimate interest in the domain name, since he is offering telecommunication services from nearly all German mobile telecommunication providers on the homepage posted under the disputed domain name.
In reference to the element in paragraph 4(a)(iii) of the Policy, Complainant asserts that there is no reason for Respondent to use Complainant’s trademark in the disputed domain name other than to use it to attract Internet users to Respondent’s website for commercial gain by using a domain name which is confusingly similar to Complainant’s trademarks. Complainant alleges that by using “o2world”, Respondent is creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website and the products offered on the website.
B. Respondent
Respondent has defaulted by failing to provide a Response.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has provided evidence of a trademark registration consisting of the term “O2” and including this term in combination with other elements.
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement cases (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 , Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110 , Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843 , AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327 , , BWT Brands, Inc. and British American Tobacco (Brands), Inc. v. NABR, WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).
The disputed domain names wholly incorporates Complainant’s trademark O2, used in connection with providing mobile services. The fact that the word “world” is added to Complainant’s mark O2 which is arbitrary and therefore distinctive for mobile phone services, does not eliminate the similarity between Complainant’s trademark and the disputed domain name, as “world” is only a descriptive and non-distinctive component of the disputed domain name. In numerous previous UDRP cases, it has been held that a domain name that wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words to such marks.
It is also noted that Complainant filed the trademark O2 WORLD on March�14,�2006. Registration of this trademark occurred after the registration of the disputed domain name on May�22,�2004. Also, the Complainant is currently constructing in Berlin the stadium “O2 World” which is promoted under the domain name . The filing of the trademark O2 WORLD and the construction of the stadium occurred after registration of the disputed domain name. However, paragraph 4(a)(i) does not require that the trademark be registered prior to the domain name. This fact may be relevant for the assessment of bad faith, which is considered below (Digital Vision, Ltd. V. Advanced Chemill Systems, WIPO Case No. D2001-0827).
The Panel thus finds that the domain name is confusingly similar to the trademark O2 and identical to the trademark O2 WORLD in which Complainant has exclusive rights, and that Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph�4(c) of the Policy requires Complainant to prove that Respondent has no right or legitimate interest in the disputed domain name. However, it is the view of the Panel that if Complainant makes a prima facie case that Respondent has no rights or legitimate interests, and Respondent fails to show any one of the three circumstances under Paragraph�4(c) of the Policy, then the second element has been established.
Complainant has proven that Respondent has registered and is using a domain name that is confusingly similar to Complainant’s trademark O2 and identical to the trademark O2 WORLD and has asserted that Respondent has neither a license nor any other permission to use Complainant’s trademarks. Respondent has not responded to this assertion. The Panel thus finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name which wholly incorporates Complainant’s mark.
Respondent has not provided evidence of circumstances of the type specified in paragraph�4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
Respondent is not affiliated with the Complainant’s mobile phone services, but is using Complainant’s trademark to divert Internet users to a website with various links to nearly all mobile telecommunications providers in Germany, including those of the Complainant and the Complainant’s competitors, and to links unrelated to telecommunication services, such as “Health & Beauty” and “Multimedia”. The Respondent is thereby capitalizing on Complainant’s trademark. This use is not a bona�fide offering of goods and services pursuant to paragraph�4(c)(i) of the Policy.
Respondent also does not make a legitimate noncommercial or fair use of the disputed domain name.
Even if the sites available at the disputed domain name were not those of telecommunications providers, Respondent would in the Panel’s view not be entitled to use the O2 trademark in the domain name. Even though Respondent may have the right to establish a site that functions as an extended search facility, it is not necessarily entitled to use Complainant’s name or trademark as part of the address for such a website. Respondent consciously sought the domain name at issue to lead Internet users to its site and is probably counting on initial confusion to direct Internet users to the website. The misled Internet searcher is immediately confronted with advertising that principally has nothing to do with the Complainant, and if it should have something to do with the Complainant, is not authorized by the Complainant (See Est�e Lauder Inc. v. , and Jeff Hanna, WIPO Case No. D2000-0869; The New York Times Company v. New York Internet Services, WIPO Case No. D2000-0172).
Under these circumstances, the Panel takes the view that Respondent has no rights or legitimate interests in the disputed domain names and that the requirement of paragraph�4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
The Panel is also convinced that Respondent’s predecessor registered and that Respondent acquired and has been using the domain name in bad faith. Complainant’s trademarks O2 and O2 are widely known. That and the contents of the site demonstrate that the disputed domain name has been registered while being aware of Complainant’s rights in its O2 and O2 trademarks. For example, Respondent is using a link to the official website ” of the Complainant.
On this record, it is also clear that Respondent has intentionally attempted to attract Internet users “for commercial gain to its websites by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website”.
Respondent’s predecessor registered a domain name, which apart from the descriptive term “world”, is identical to Complainant’s trademark O2. This creates confusion between the domain name and the trademark at issue and it is this confusion on which Respondent on its turn relies to attract visitors to its sites. Moreover, Respondent has posted content on the site that creates the impression that the site is operated by Complainant. Nothing on the site dispels the initial confusion.
Respondent and its predecessor have also advertised mobile services provided by the competitors of the Complainant. This advertising along with the advertising of the Complainant’s services, are “sponsored links” and are, therefore, for the Respondent’s own commercial gain and thereby evidence that the disputed domain was acquired and used in bad faith.
On February�15,�2007, Complainant tried to persuade Domain Magic, LLC, the former owner of the disputed domain name who used the website for the same purposes as Respondent does, to transfer the domain to Complainant. The domain name was nonetheless transferred to Respondent who continued to display the same links for mobile phone services.
The Panel therefore concludes that Respondent registered and is using the domain names in bad faith and that the requirement of paragraph�4(a)(iii) of the Policy is satisfied.
7. 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, , be transferred to the Complainant.
Andrea Mondini
Panelist
Dated: June 7, 2007
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