The Complainant is O2 Holdings Limited of Berkshire, United Kingdom of Great Britain and Northern Ireland, represented by Wragge & Co., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Faiz Siddiqi of Leicestershire United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2010. On September 2, 2010, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On September 2, 2010, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint 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 September 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 29, 2010.
The Center appointed James McNeish Innes as the sole panelist in this matter on October 7, 2010. 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 part of the Telefónica Group of Companies. Part of the group trading under the O2 trade marks provides, amongst other things, fixed and mobile telephone and broadband services in the United Kingdom of Great Britain and Northern Ireland, Ireland, Germany and the Czech Republic and Slovakia. It has 49.2 million customers and, for the financial year ending December 31, 2009, a turnover of €13,533 million. It provides numerous services including telecommunication services and insurance services for mobile telephones. It is registered owner of a substantial portfolio of registered trade marks for the word mark O2. The disputed domain name was first registered by the Respondent on October 9, 2008. There is evidence on the record that O2 trade marks were filed by the Complainant prior to the registration of the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions include the following:
(a) It is the owner of considerable goodwill and reputation in the UK and European Union in the O2 trade marks.
(b) The business trading under the O2 trade marks advertises its services extensively throughout the European Union through all media, including television, sponsorship for example, The O2 (formerly, Millennium Dome), the O2 Academy venues (formerly, Brixton Academy, Shepherds Bush Academy and Glasgow Academy), the England Rugby Team and national newspapers as well as having a significant presence on the Internet.
(c) It provides numerous services including telecommunication services and insurance services for mobile telephones.
(d) It has been the owner of the domain name since July 30, 1995 and since November 19, 1997. Since at least 2005, it has been using the website “www.” in connection with the provision of insurance services for mobile telephones. It currently has 850,000 insurance customers. In 2010 it launched insurance services for traveling.
(e) It is well established that the top level suffixes in a domain name should be ignored for the purposes of assessing whether it is identical or similar to a complainant’s trade mark. Consequently, the only difference between the O2 trade marks and the disputed domain name is the addition of the word “insurance”. The dominant element of the disputed domain name is the Complainant’s famous O2 trade marks, while “insurance” is merely descriptive for the intended services. The O2 trade marks and disputed domain name are, therefore, similar.
(f) Given that the O2 trade marks are famous, that they are registered for insurance services, that the Complainant provides insurance services using the O2 trade marks via (similar) domain names and and there is a high level of similarity between the O2 trade marks and disputed domain name, the O2 trade marks and the disputed domain name is confusingly similar.
(g) To the Complainant’s knowledge the Respondent has no rights or legitimate interests in the disputed domain name in particular:
(i) It has not licensed or otherwise permitted the Respondent to use any of its trade marks;
(ii) or to register a domain name incorporating ”O2”;
(iii) the Respondent has no relationship with the Complainant, or permission from it to use its trade marks incorporating “O2”;
(iv) despite the Respondent registering the disputed domain name on October, 9 2008 it has not used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in the connection with a bona fida offering of goods or services;
(v) the Respondent, whether as an individual, business or other organization, has not been commonly known by the disputed domain name;
(vi) the Respondent does not have a registered trade mark or service mark for the “O2” at the UK Intellectual Property Office or OHIM; and
(vii) the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name in that it is not providing any services.
(h) The disputed domain name was registered in bad faith because:
(i) the Respondent sought to sell the disputed domain name for valuable consideration in excess of its out-of-pocket costs; and
(ii) the Respondent has engaged in a persistent practice of registering a domain name containing a third party’s trade mark in order to prevent that third party from reflecting the trade mark in the corresponding domain name.
(i) The Panel finds that there is sufficient evidence on the record to support the Complainant’s contentions set out above. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(a) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(b) that the respondent has no rights or legitimate interests in respect of the domain name; and
(c) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Two separate issues fall for consideration: Does the Complainant have rights in the mark and is the disputed domain name identical or confusingly similar to any such mark. On the record the Complainant has established rights in its mark and registration. They have also demonstrated continued commercial usage since 1995.
The Complainant argues that the disputed domain name is identical or confusingly similar to its mark for the following reasons:
(a) The domain name is confusingly similar to the Complainant’s trade mark.
(b) The only difference between the Respondent’s domain name and the Complainant’s O2 trademark is the addition of the non-descriptive word “insurance”. The disputed domain name incorporates in full the Complainant’s registered O2 trademark.
(c) The disputed domain name incorporates a non-distinctive word and is confusingly similar to the Complainant’s trade mark.
The Panel accepts the Complainant’s contentions. The disputed domain name is confusingly similar to the Complainant’s mark. The Panel finds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that any of the following circumstances in particular but without limitation if found by the Panel to be proved based upon its evaluation of the evidence presented shall demonstrate a respondent’s rights or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii):
(a) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(b) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(c) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a Response and has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests. There is no independent evidence of any circumstances which could have demonstrated any rights or legitimate interests on the part of the Respondent. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Policy, paragraph 4(a)(ii) has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains the following provisions under the heading “Evidence of Registration and Use in Bad Faith”. For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(a) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(b) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(c) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(d) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your web site or location.
The Respondent has made no Response in this connection. The Complainant has made contentions that would lead to situations mentioned in paragraph 4(b). The Panel accepts the Complainant’s assertion that the Respondent has attempted to attract users to its websites by creating confusion with the Complainant’s mark. The Panel finds that the Policy, paragraph 4(a)(iii) has been 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.
James McNeish Innes
Sole Panelist
Dated: October 16, 2010
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