Complainant is O2 Holdings Limited of Slough, Berkshire, United Kingdom of Great Britain and Northern Ireland, represented by Ipulse IP Ltd, United Kingdom of Great Britain and Northern Ireland.
Respondent is Avantika Desai, o2telecoms of Kolkata, West Bengal, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Web Werks India Pvt. Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2011. On April 7, 2011, the Center transmitted by email to Web Werks India Pvt. Ltd. a request for registrar verification in connection with the disputed domain name. On April 11, 2011, Web Werks India Pvt. Ltd. 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 Respondent of the Complaint, and the proceedings commenced on April 12, 2011. On April 21, 2011, the Center suspended the proceedings following a request thereto by Complainant. On May 20, 2011, the Center reinstituted proceedings following a request thereto by Complainant.
In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2011. On June 9, 2011, the Center informed parties that it would proceed to the appointment of the administrative panel.
The Center appointed Mary Padbury as the sole panelist in this matter on June 17, 2011. 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. The due date for a decision was extended to July 25, 2011. 4. Factual Background
Complainant is the intellectual property holding company of the O2 Group of telecommunications companies. Complainant provided a witness statement (absent exhibits) made by Amanda Clay of Telefonica Europe plc on September 29, 2010 and filed in O2 Holdings Limited v. Kent Cavern, WIPO Case No. D2011-0618 concerning the disputed domain name . As noted in the decision in that case, the statement from Complainant's head of brand management sets out in considerable detail the various business, promotional and other activities Complainant has engaged in since its launch of the O2 brand in May of 2002. It states the O2 mark has been used consistently since May 2002 and that use has consisted not merely of the word mark O2 but also graphics consisting of oxygen bubbles and a graduated blue background (i.e. graduated through several shades of blue from a lighter shade to a darker shade). In that case, the panel found that Complainant had established a substantial reputation, trading under the O2 brand, in the United Kingdom and certain European countries. Reference was made to a survey ranking the O2 brand as one of the top 100 valuable brands in the world.
Complainant is the owner of trade mark registrations for or including O2 listed in the Complaint including in the United Kingdom, United States of America, European Union and India. Complainant also acquired the rights previously owned by the American company, Locus Telecommunications, in the mark O2 in the United States of America. The earliest O2 registrations date from February 28, 2001 and pre-date registration of the disputed domain name.
The corporate history of the O2 Group of companies is outlined in the witness statement. Complainant was incorporated in England and Wales on 19 November 2001 following the de-merger of that company from British Telecom to become an independent company. The goodwill passed from BT Cellnet to O2 Holdings Limited following the de-merger. Complainant has traded under the trade mark O2 since the launch of this mark on May 1, 2002. O2 Holdings Limited then became the new name of O2 Limited, the company formed during the de-merger from BT as the Group IP holding company. All goodwill accrued from the Group's use of the IP inures to the benefit of O2 Holdings Limited. The current owner of Complainant is Telefonica. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to Complainant's trade marks featuring O2 given that it operates in the telecommunications sector and "telecoms" is an abbreviation.
Complainant notes that there appears to be no legitimate interest owned by Respondent in relation to the domain name and that Respondent's name does not relate to the domain name in any way. While Respondent is not running a business through its domain name the website does link to competitors of Complainant. Complainant also has reason to believe that Respondent is connected to a dormant "scam website" previously operated at which was the subject of the decision referred to above. Reference is made to an investigation report attached as Annex 7 of the Complaint. It is contended that the copyright in the domain name was claimed to be owned by , Respondent's domain name in this case. Reference to this can be seen at page 3 of the report. Complainant contends that there is no rational or legitimate explanation for the registration of the disputed domain name unless it is to capitalise on the reputation and rights owned by Complainant. Complainant submits there is no evidence that Respondent has used or made demonstrable preparations to use the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Further, there is no evidence that Respondent has been commonly known by the disputed domain name even if Respondent acquired no trade mark or service mark rights. Lastly, there is no evidence that Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark or service mark at issue.
Complainant asserts that the formal investigation it caused to be conducted concluded that the name “O2Telecoms” and “” have been used in relation to fraudulent activities. Complainant contends that this demonstrates that the website has been registered in bad faith. While the website is not currently active, it utilizes a range of blue and white colouring on the page (copy attached at Annex 9 of the Complaint). The evidence provided illustrates that Complainant has used the blue colour extensively as part of its brand since its launch in 2002. The blue colour and the blue graduation through to a lighter blue have become synonymous with Complainant with this use.
Complainant contends it would not be far fetched for Respondent to try to sell the disputed domain name to Complainant for a large sum of money in order to release it to them. Respondent appears to have no rights or legitimate interest in the disputed domain name particularly as it currently operates a click through website (as demonstrated in the Complaint) and so this is a reasonable assumption to draw bearing in mind the rights identified in this Complaint. Furthermore, Complainant asserts that it would not be far fetched to think that Respondent may have acquired the disputed domain name in order to sell it to another "scammer" or to a competitor of the Complainant for a large amount of money. Complainant further contends that it is a reasonable presumption to assume that that the domain name was registered in order to disrupt the business of Complainant.
Lastly, bearing in mind the rights of Complainant; Complainant argues it is impossible to imagine how any use of the disputed domain name would not cause confusion to any relevant consumer. Any average consumer familiar with the O2 brand would assume such a domain name was related to the provision of telecommunication services by O2, and so would assume that any service offered under the disputed domain name was connected with Complainant. As such, Complainant argues that it is a reasonable assumption that Respondent intentionally registered the domain name to attract for commercial gain Internet users and telecommunications customers to Respondent's website by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of Respondent's website or location or of a product or a service of Respondent's website. As a result, Complainant submits that the disputed domain name was registered and is being used in bad faith. B. Respondent
There was no substantive defence. 6. Discussion and Findings
The Panel must decide a complaint on the basis of the statements in documents submitted and in accordance with the Policy, Rules and Supplemental Rules. Complainant has the onus of proving three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the trade mark O2. The disputed domain name incorporates Complainant's trademark in its entirety and this is the dominant and distinctive component of the domain name. The word "telecoms" is descriptive and does not remove the confusing similarity between the disputed domain name and Complainant’s trademark. B. Rights or Legitimate Interests
The Panel must decide whether Respondent has any rights or legitimate interests to the disputed domain name. In doing so, regard may be had to circumstances which might demonstrate this as follows:
(i) before notice to Respondent of the dispute, Respondent's use of, or demonstrative 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
(ii) Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if it acquired no trademark or service mark rights; or
(iii) Respondent, making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue.
The Panel accepts the contention of Complainant that Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence of use of the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence that Respondent has been commonly known by the disputed domain name. The domain name is inactive but does link to competitors of Complainant and this Panel notes the speculations of Complainant about the likely reasons for registration and accepts that it is difficult to see how such a website could be used without confusion to any relevant consumer. On balance, the Panel is not persuaded that there has been a legitimate noncommercial or fair use of the domain name without intent for commercial gain. C. Registered and Used in Bad Faith
The Panel is satisfied that the disputed domain name was registered and is being used in bad faith. The following non-exclusive list of circumstances, if found by the Panel to be present, shall be evidence of registration in bad faith:
(i) circumstances indicating that Respondent has registered 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 for valuable consideration in excess of Respondent's out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided Respondent has engaged in the pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 Respondent's website or location or of a product or service on Respondent's website or location.
On balance, the Panel is satisfied that that Respondent has registered and used the disputed domain name in circumstances covered by at least paragraph 4(b)(ii) and (iv) of the Policy. As such, the Panel finds evidence of registration and use in bad faith. 7. Decision
For 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 Complainant.
Mary Padbury
Sole Panelist
Dated: July 27, 2011
Full & Egal Universal Law Academy