The 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.
The Respondent is Peter Davis of London, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with LCN.COM Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 19, 2012. On September 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 2, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 8, 2012.
The Center verified that the Complaint together with the amendment to 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 October 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2012.
The Center appointed George R. F. Souter as the sole panelist in this matter on November 8, 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. 4. Factual Background
The Complainant is the IP holding company of the 02 Group of telecommunications companies. The history, nature and well-known status of the O2 Group have been comprehensively presented in O2 Holdings Limited v. Sarang Hodjati,WIPO Case No. D2010-1887. In the present proceedings, details of the extensive trade mark registrations of the O2 trade mark, including registrations in the United Kingdom, have been presented to the Panel.
The disputed domain name was registered on October 11, 2011. 5. Parties’ Contentions A. Complainant
The complainant contends that the disputed domain name is confusingly similar to the Complainant’s O2 trade mark, the only difference being the mere addition to O2 of the word “suite”, which is descriptive of a well-known service of the Complainant’s parent company, the hiring of hospitality suites, particularly at the parent company’s O2 Arena in London.
The Complainant alleges that the Respondent has no rights to or legitimate interests in the disputed domain name.
The Complainant states its belief that the only plausible reason for the Respondent registering the disputed domain name was to illegitimately trespass on the fame of the O2 trade mark, and has provided evidence of the Respondent’s use of the web site operated under the disputed domain name, which contained a revenue-earning click-through facility and which used livery associated with the Complainant’s parent company. The Complainant alleges that the Respondent’s actions constitute registration and use of the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant or be cancelled:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is well-established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (i.e. “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a mark and a domain name. The Panel agrees with this view, and, considers these indicators to be irrelevant in the present case.
The Panel has no difficulty in recognizing the Complainant’s O2 trade mark as well known. The evidence provided to the Panel as to the Complainant’s parent company’s offering of hospitality suites at various venues, including the O2 Arena in London, is, in the Panel’s opinion, sufficient to convince him of the importance of the word “suite” in connection with the Complainant’s business. It is well-established in prior UDRP decisions that the mere addition of a descriptive term to a well-known trade mark is insufficient to avoid a finding of confusing similarity. The Panel finds that the word “suite” is merely descriptive of a commercial element in the Complainant’s parent company’ business in the circumstances of the present case and, accordingly, finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate interests
The Complainant caused a problem for the Panel in not advancing a specific argument under this heading. However, the Panel does not regard this omission as fatal to the Complainant’s case in the present proceedings. In O2 Holdings Limited v. Sarang Hodjati, supra., in which it would appear that the same omission occurred, the panel reasoned:
“The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
‘…a Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP’”.
In this case, the Panel has found that the disputed domain name is confusingly similar to the Complainant’s O2 mark, and the Complainant has not authorized the Respondent to use its mark, whether in a domain name or otherwise. There is nothing to suggest that the Respondent or any business operated by the Respondent might be commonly known by the disputed domain name, and thus the Panel can see in these circumstances no basis for any right or legitimate interest under paragraph 4(c)(ii) of the Policy. Nor is the Respondent making a non-commercial or fair use of the disputed domain name, in circumstances which might raise the possibility of a right or legitimate interest under paragraph 4(c)(iii) of the Policy – the use of the expression “Just Pre-paid!” suggests that the Respondent intends to use the website at the disputed domain name for commercial gain. Further the use (in the disputed domain name) of the Complainant’s mark immediately beside a description of one of the Complainant’s services suggests an intention to misleadingly divert consumers. That impression is reinforced by the use on the website at the disputed domain name of colors which are very similar to those used by the Complainant in its branding.
Those considerations are sufficient, in combination, to establish a prima facie case of “no rights or legitimate interests”, under paragraph 4(a)(ii) of the Policy. The evidentiary burden therefore shifts to the Respondent. The Respondent having failed to file any Response, that burden has not been discharged, and the Complainant succeeds on this part of its Complaint.
In the Panel’s opinion, the considerations in the present case are similar to the considerations in O2 Holdings Limited v Sarang Hodjati, supra., and the Panel in the present case, therefore follows the panel in that case in deciding that the “considerations” are sufficient for the Complainant to succeed under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is firmly of the view, on the evidence presented to him, that the Respondent either knew or should have known of the Complainant’s O2 trade mark at the time it registered the disputed domain name, and agrees with the panel in Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763, that a finding of bad faith may be made where a respondent knew or should have known of the registration and/or use of the complainant’s trademark prior to registering a domain name, and accordingly finds that the disputed domain name here was registered in bad faith.
Paragraph 4(a)(iii) of the Policy also requires the Panel to be satisfied that the disputed domain name “is being used” in bad faith. According to the evidence presented to the Panel, the Respondent had, in the Panel’s view, been using the disputed name in bad faith (it being the well-established view of prior panels in UDRP proceedings, with which the Panel agrees, that use of a revenue-earning click-through facility with a connection to a complainant’s business constitutes use in bad faith), but had ceased to do so as a result of a “cease and desist” letter. The Panel does not feel, however, that the fact that the Respondent is currently not using the disputed domain name as previously is fatal to the Complainant’s case. The threat that the Respondent might recommence his previous use exists, to the detriment of the Complainant, and, under the doctrine developed from the decision in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, that current non-use can be regarded as use in bad faith in certain circumstances. The Panel takes the view that the circumstances of the present case are such as to make a finding of use in bad faith equitable. Accordingly, the Panel finds that the Complainant has satisfied the dual test of paragraph 4(a)(iii) of the Policy. 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 name be transferred to the Complainant.
George R. F. Souter
Sole Panelist
Dated: November 22, 2012
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