The Complainant is O2 Holdings Limited of Slough, Berkshire, United Kingdom of Great Britain and Northern Ireland, represented by Ipulse IP Ltd, United Kingdom.
The Respondent is Richard Yaming of Seoul, Republic of Korea, self-represented. 2. The Domain Names and Registrars
The disputed domain names and are registered with INames corp. (Korea), and is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2012. On March 14, 2012, the Center transmitted by email to T, Inc. a request for registrar verification in connection with the disputed domain name . On March 16, 2012, T, Inc. confirmed that “[i]t appears that a Transfer of Registrar was already in progress as when [T, Inc.] went to lock [the disputed] domain [name] it had already transferred out.” Between March 14, 2012 and March 29, 2012, the Center engaged in email communications with T, Inc. and INames corp. (Korea) in relation to a possible breach of paragraph 8(b) of the Policy by the Respondent. The Center concluded in an email communication of March 29, 2012 that it would “proceed on a provisional basis that [INames corp. (Korea)] is the concerned Registrar for the disputed domain name [], subject to any final determination or additional procedural steps that may be taken by the Administrative Panel, upon appointment.
On March 29, 2012, the Center transmitted by email to INames corp. (Korea) a request for registrar verification in connection with the disputed domain name . On March 30, 2012, INames corp. (Korea) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed the first amended Complaint on April 3, 2012.
On April 4, 2012, the Center notified the parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On April 5, 2012, the Complainant submitted a request that English be the language of the proceeding. The Respondent requested Korean to be the language of the proceeding on April 6, 2012.
On April 11, 2012, the Complainant requested to add two more domain names and in the Complaint. On April 11, 2012, the Center transmitted by email to INames corp. (Korea) and Korea Information Certificate Authority Inc. d/b/a DomainCa.com requests for registrar verification in connection with the disputed domain names and respectively. On April 12, 2012, INames corp. (Korea) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for and providing the contact details. On April 13, 2012, Korea Information Certificate Authority Inc. d/b/a DomainCa.com also transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for and providing the contact details. On April 18, 2012, the Complainant filed the second amended Complaint.
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 April 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2012. The Response was filed with the Center on May 9, 2012.
The Center appointed Ik-Hyun Seo as the sole panelist in this matter on May 15, 2012. 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.
A further email communication was received from the Complainant on May 21, 2012. 4. Factual Background
The Complainant is the Intellectual Property holding company of the O2 Group of telecommunications companies (“O2”). O2 was incorporated in the United Kingdom in 2001 and as of 2008 had 45.8 million customers in Europe.
The Respondent appears to be a Korean individual with a residence in the Republic of Korea. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to marks in which the Complainant has rights. Specifically, the Complainant has trademark registrations for O2 and O2- based marks around the world, including Korea. Among these, the Complainant holds the trademark registration for O2 MEDIA in the United Kingdom which is identical to the disputed domain name . The other disputed domain names also contain the famous O2 mark along with the terms “soft” and “sport” which need not be considered as they lack distinctiveness.
The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain names, and confirms that it has not authorized or licensed rights to the Respondent in any respect.
Finally, the Complainant contends that the disputed domain names were registered and used in bad faith. First, the Complainant notes that the Respondent used the disputed domain names for domain parking sites with links to the Complainant’s products and services. Second, the Respondent offered to sell the disputed domain names and to the Complainant for amounts that are far beyond the related out-of-pocket costs. Third, the Complainant notes that the Respondent has had other domain name complaints filed against him and the domain names were ordered to be transferred to the complainants in these cases. This shows that the Respondent is a repetitive domain name squatter who seeks to profit from the goodwill of others’ marks. B. Respondent
In the Response, the Respondent does not raise any assertions or arguments in relation to the Complainant’s claims that the disputed domain names are identical or similar to the marks in which the Complainant has rights.
The Respondent asserts that he has a right and legitimate interest in the disputed domain names because he paid to obtain and register them and intends to use them in connection with an Internet business.
The Respondent also asserts that he did not have any knowledge of the Complainant prior to this dispute and thus did not act in bad faith. 6. Discussion and Findings A. Possible Cyberflight
The Panel notes the communications in relation to the apparent change in registrar by the Respondent for the disputed domain name in possible breach of paragraph 8(b) of the Policy. Noting in this regard that the issue of the possible breach of paragraph 8(b) of the Policy by the registrant of the disputed domain name does not materially alter the Panel’s substantive determination under the elements, that the receiving Registrar (INames corp. (Korea)) has in any event confirmed on March 30, 2012 that the disputed domain name is registered with it, and that the UDRP applies to the disputed domain name (and accordingly, that it would proceed to implement any decision in accordance with paragraph 4(k) of the Policy), the Panel will proceed to render its decision on the merits of the case for the disputed domain names without making a finding in relation to the possible breach of paragraph 8(b) of the Policy by the Respondent. The Panel notes, to the extent that a finding of a breach of paragraph 8(b) of the Policy were to be made, that such would further support the Panel’s finding of bad faith registration and use of the disputed domain names as further detailed below. B. Language of the Proceeding
Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the registration agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. In this case, the language of the Registration Agreement is Korean, and both parties have had an opportunity to argue their position on this point. The Center issued a notice stating that it would accept the Complaint filed in English, and that the Response would be accepted in either Korean or English. The Respondent eventually filed his response in Korean.
First, the Panel notes that the Respondent objected to English as the language of the proceedings, claiming that he has great difficulties with the English language. However, in this Panel’s view, email communications between the Complainant and the Respondent submitted as evidence by the Complainant clearly show that the Respondent is quite competent in the English language (and surprisingly knowledgeable on domain name dispute proceedings as well as related litigation in Korea), and had no problems at all while attempting to negotiate a sale of two of the disputed domain names to the Complainant. Under these circumstances, the Panel finds it fair and appropriate to render this decision in English. C. Identical or Confusingly Similar
The Complainant has demonstrated with supporting evidence that it holds a number of trademark registrations in the O2 family of marks in various jurisdictions. To identify a few, the Complainant owns registrations for O2 (United Kingdom Registration No. 2264516, Community Trade Mark (CTM) No. 2109627, United States Registration No. 38448986), O2 MONEY (CTM No. 9421439, etc.), THE O2 (Korean Registration No. 45-0016931), etc. In fact, there is a registration for O2 MEDIA as well (United Kingdom Registration No. 2516664), which corresponds directly with one of the disputed domain names, i.e. . Therefore, there is no question to this Panel as to the issue of confusing similarity regarding .
As for the disputed domain names and , they both contain the Complainant’s trademark O2, and the other elements in the disputed domain names “soft” and “sport” may be dismissed from consideration as they are ordinary descriptive words that lack distinctiveness. Prada S.A. v. Cybershop Co., Ltd.,WIPO Case No. D2002-0662 () and LEGO Juris A/S v. Hayan Communications Co., LTD.,WIPO Case No. D2011-1836 ().
For the reasons mentioned above, the Panel finds that the first element has been established. D. Rights or Legitimate Interests
The Complainant made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The burden of production then shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain names. The Respondent asserts that he has rights and legitimate interests in the disputed domain names because he is planning to use them in connection with his Internet business. However, the Respondent merely makes bald assertions and has not submitted any evidence to show that he has made demonstrable preparations to use the disputed domain names or a name corresponding to the disputed domain names. Thus, the Panel finds that the Respondent has failed to meet his burden of production.
For the reasons provided above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, and that the second element has been established. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. E. Registered and Used in Bad Faith
The Panel finds that there are more than sufficient reasons to find bad faith in this case. First, the Respondent linked the disputed domain names and with a domain name parking service which had sponsored links to websites advertising telecommunication products and services. The disputed domain name also had a reference to O2 Group on the website itself and a link to the official website of the O2 Group. This shows that the Respondent was aware of the Complainant, its products and trademark, and used the disputed domain names to attract Internet users for financial gain. The disputed domain name resolves to a holding page, indicating that it is under construction. Also, in response to the Complainant’s cease and desist letters, the Respondent offered to sell the disputed domain names and for USD 17,500 and USD 5,500, respectively. These sums are clearly well in excess of the related out-of-pocket costs, and such circumstances are another strong indication of bad faith registration and use. Further, the Respondent has a history of bad faith registration and use in WIPO UDRP decisions against him for other domain names, including Giorgio Armani S.p.A. Milan, Swiss Branch Mendrisio 및 Giorgio Armani S.p.A v. Richard Yaming, WIPO사건번호 D2011-2233 () and 삼성전자 주식회사 v. Richard Yaming, WIPO사건번호 D2011-1097 ().
For the reasons given above, the Panel finds that that this third and final element has been established. 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 disputed domain names , and be transferred to the Complainant.
Ik-Hyun Seo
Sole Panelist
Dated: June 12, 2012
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