The Complainant is O2 Holdings Limited of Berkshire, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Ipulse IP Ltd, UK.
The Respondent is Martin Plas of Prague, Czech Republic, self represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Gransy, s.r.o. d/b/a (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 September 20, 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.
On September 28, 2012, the Center sent an email communication to the Complainant inviting it to amend the Complaint, in relation to the Complainant’s submission to one (or two) appropriate mutual jurisdiction(s) with respect to any challenges that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the disputed domain name. The Complainant filed an amendment to the Complaint on October 2, 2012.
On October 1, 2012, the Center transmitted the language of the proceedings document to the parties in both English and Czech. On October 2, 2012, the Complainant requested English to be the language of the proceedings. On October 3, 2012, the Respondent requested Czech to be the language of the proceedings.
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 in English and Czech, and the proceedings commenced on October 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2012. The Response was filed with the Center on October 30, 2012.
The Center appointed Ladislav Jakl 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 Intellectual Property holding company of the O2 Group of telecommunications companies and the O2 brand in the telecommunications sector. The O2 brand has become well-known in the telecommunications sector, and also in the entertainment and music sectors, in view of the demonstrated use of the trademark, and the unusual nature of the trademark in the context of these services. In a recent survey, the O2 brand owned by the Complainant was ranked as one of the top 100 most valuable brands in the world. The Complainant and the O2 Group of Companies has won many awards in relation to its brand. In addition to this the Complainant owns many trademark registrations for or including the element O2, including but not limited to the following:
UK registration No. 2264516, registration date June 7, 2002;
UK registration No. 2271228, registration date September 27, 2012;
UK registration No. 2415848, registration date March 7, 2006;
UK registration No. 2415862, registration date March 7, 2006;
United States of America (“US”) registration No. 3848986, registration date September 14, 2010;
US registration No. 2231903, registration date March 9, 1999;
CTM registration No. 2109627, registration date May 13, 2004;
CTM registration No. 2284818, registration date June 16, 2004;
CTM registration No. 4949418, registration date June 28, 2007;
CTM registration No. 7177363, registration date November 20, 2008.
In addition the Complainant owns namely the following trademark O2 WALLET registrations:
UK registration No. 2470876, registration date July 11, 2008;
UK registration No. 2288152A, registration date August 9, 2002;
UK registration No. 2288152B, registration date August 9, 2002.
The disputed domain name was registered on March 25, 2011. 5. Parties’ Contentions A. Complainant
The Complainant contends that it owns relevant prior rights in trademark O2 and in addition has used its O2 WALLET trademark as a brand in relation to pre-paid card payment system. As the Complainant mainly operates in the UK, Germany, Ireland, Czech Republic and Slovakia, the Respondent will no doubt be aware of the Complainant’s use in this regard bearing in mind its location. The Complainant further notes that it has clearly illustrated that it owns trademarks confusingly similar to the disputed domain name.
The Complainant also contends that the Respondent does not have any rights or legitimate interests in the disputed domain name and that the Respondent’s name does not appear to relate to the disputed domain name in any way. Furthermore, the Complainant claims that the Respondent is clearly not running a business through the disputed domain name, and insofar it is looking to offer a product under the name “O2 Wallet”, in particular a product relating to financial or telecom services, which is clearly a bad faith offering in view of the Complainant’s rights. Consumers visiting this website to which the disputed domain name resolves would automatically assume some form of connection with the Complainant, which could have a negative affect on the Complainant and/or divert trade away from it.
And finally, the Complainant contends that the disputed domain name was registered and used in bad faith. The Complainant believes that there is no legitimate reason to register the disputed domain name other than to capitalize on the reputation of the Complainant’s brand around the world. As such the Complainant submits that the disputed domain name must have been acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. The Respondent appears to have no actual interest in the disputed domain name and so this is a reasonable assumption to draw bearing in mind the rights identified in this Complaint, which pre-date registration of the disputed domain name.
Further, the Complainant submits that it would not be far fetched for the Respondent to try to sell the disputed domain name to the Complainant for a large sum of money. In addition the Complainant introduces that O2 WALLET is an important product of the Complaint and therefore is it plain that registration of the disputed domain name would prevent the Complainant from reflecting its mark in a corresponding domain name for relevant goods and services, and as such it is a reasonable presumption to assume the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant.
Moreover, the Complainant argues that it is impossible to imagine how any use of the disputed domain name would not cause confusion to any relevant consumer and that any average consumer familiar with the O2 brand would assume such a domain name was related to the provision of the telephone services by the Complainant and so would assume that the business provided under the disputed domain name was formerly connected with the Complainant. And therefore, as such, it is a reasonable assumption that the Respondent intentionally registered the disputed domain name to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website. As a result of all this the Complainant submits that it is plain that the disputed domain name was registered and is being used in bad faith in accordance with paragraph 4(b) of the UDRP Rules. B. Respondent
The Respondent introduces that he has registered the disputed domain name in good faith because of his intention to run a local business. The Respondent further claims that due to the simplicity and shortness, it has decided to use a chemical symbol of oxygen and has chosen English language for its website for better marketing. The Respondent contends that it is preparing a business plan at the moment and is definitely determined to start this local business shortly. The Respondent refuses to recognize having an intention to deliberately damage the brand O2, because O2 WALLET has never had mass marketing promotion in the Czech Republic. The Respondent argues that he has never offered the disputed domain name for sale, because he has never wanted to sell it to the Complainant or anyone else. On the other hand, the Respondent claims that he was approached and threatened by the Complainant’s lawyer company and that he suggested that he was willing to release the disputed domain name under the condition of being reimbursed for all expenses that he had already invested in its business and the loss of profits caused by the loss of the disputed domain name. The Respondent has calculated the amount to USD 3000 which does not seem excessive to him. Finally, the Respondent requests that the disputed domain name remains in his possession and the Complaint is denied. 6. Discussion and Findings
On the question of the language of the proceedings, the Respondent in his email in English language, dated October 3, 2012, suggested the language of the administrative proceeding be Czech language and that the “.cz” national Czech domain extension and disputed domain name is registered under Czech registration company. Further, the Respondent argues that English is not his native language, and he wouldn’t be able to defend himself correctly if the whole process will be done in English. On the other hand, the Complainant submits a request that English be the language of the administrative proceedings, as the disputed domain name itself is made up of English words and so must be intended to target English speaking consumers. Moreover, the disputed domain name is currently pointed to a website which itself is in English and as such it is clear that the business behind this domain name, insofar as there is one, is being operated in English.
The Panel notes that in any event, the Center notified the Complaint in both English and Czech languages, and advised the Parties that it would accept a Response in either English or Czech. Indeed, the Respondent provided its Response in Czech.
The Panel, on the basis of the above-mentioned Respondent’s email communication in English and with reference to previous UDRP proceedings (e.g., 02 Holdings Limited v. Richard Yaming,WIPO Case No. D2012-0508) and that the Respondent had no problems to communicated with the Complainant in English, finds that the Respondent is quite competent in the English language. According to paragraph 11(a) of the Rules, the Panel has the authority to determine a different language other than the one in the registration agreement, having regard to the circumstances of this administrative proceeding. The Panel, taking into account the circumstances of this proceeding, a number of recent UDRP proceedings and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd.,WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd.,WIPO Case No. D2007-1836), decides that the language of the administrative proceedings be English.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. A. Identical or Confusingly Similar
The Complainant contends that it owns relevant prior rights in O2 trademark and in addition has used its O2 WALLET trademark as a brand in relation to a pre-paid card payment system. As the Complainant mainly operates in the territories of the UK, Germany, Ireland, Czech Republic and Slovakia, the Panel finds the Respondent will no doubt be aware of the Complainant’s use in this regard. The Panel accepts arguments of the Complainant that the disputed domain name is phonetically, visually and conceptually confusingly similar to the Complainant’s registered trademark O2 and identical to its O2 WALLET trademark. As well the inclusion of the generic top-level domain (gTLD) “.com” does not avoid confusing similarity between the disputed domain name and the Complainant’s trademark. See AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-Aventis v. Brad Hedlund,WIPO Case No. D2007-1310.
For all the above cited reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark, in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
As to rights or legitimate interests in respect of the disputed domain name, the Panel finds that the Complainant has not licensed or otherwise authorized the Respondent to seek registration of any domain name incorporating the Complainant’s trademarks. The registration of the O2 trademark and O2 WALLET trademark preceded the registration of the disputed domain name. The Respondent asserts that he has rights and legitimate interests in the disputed domain name because he is planning to use it in his business and to start it in local business shortly. However, the Respondent has not submitted any evidence to show that he has made preparations to use the disputed domain name. Thus, the Panel finds that the Respondent has failed to meet his burden of production in light of the Complainant’s prima facie case or demonstrating any other basis for finding rights or legitimate interests in the disputed domain name (O2 Holdings Limited v. Richard Yaming,WIPO Case No. D2012-0508). Moreover, the Respondent is clearly not running a business through this domain name, insofar it is looking to offer a product under the name “O2 Wallet”, in particular a product relating to financial or telecom services. The Panel finds this is clearly a bad faith offering in view of the Complainant’s rights. Consumers visiting the website to which the disputed domain name resolves would assume some form connection with the Complainant, which could have a negative affect on the Complainant and/or divert trade away from it.
For the above-cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. 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:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed 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 the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or:
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.
The Respondent has registered the disputed domain name on March 25, 2011, while the Complainant’s first O2 trademark registrations is dated 1999 and O2 WALLET trademark registration is dated 2002. The disputed domain name is confusingly similar to the trademarks of the Complainant. It means that the disputed domain name was registered about ten years after trademark registrations of the Complainant. There is no doubt to the Panel that registration of the disputed domain name would prevent the Complainant from reflecting its mark in a corresponding domain name for relevant goods and services, and as such it is a reasonable presumption to assume the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant. The Panel takes into account the information of the Complainant that the O2 WALLET is an important product of the Complainant and therefore it is plain that registration of the disputed domain name would prevent the Complainant from reflecting its mark in a corresponding domain name for relevant goods and services (although a pattern of such conduct has not been established), and as such it is a reasonable presumption under the circumstances to assume the disputed domain name was registered primarily for the purpose of disrupting of the Complainant’s business.
The Panel accepts the Complainant’s considerations there is no legitimate reason to register the disputed domain name other than to capitalize on the reputation of the Complainant’s brand around the world. As such the Complainant submits that the disputed domain name must have been acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name.
The Respondent declared that he was approached and threatened by the Complainant’s lawyer company, that he has suggested that he was willing to release the disputed domain name under the condition of being reimbursed for all expenses that he had already invested in its business and the loss of profits caused by the loss of the disputed domain name, but notably the Respondent does not provide any evidence of how it arrived at the USD 3000.00 figure or why this is a reasonable out-of-pocket cost. There is no doubt to this Panel that the Respondent has also registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant. This Panel finds that the Respondent is interrupting the Complainant’s business by directing potential customers to its competitors and by falsely making customers believe that there is an association between the Respondent and the Complainant. Such conduct has been found to be indicative of bad faith in previous UDRP decisions, such as Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658; Shaw Industries Group, Inc and Columbia Insurance Company v. Click Consulting Ltd.,WIPO Case No. D2006-1422; F.Hoffman-La Roche AG v. Lythion Services Ltd.,WIPO Case No. D2006-0035; Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Party Night Inc., WIPO Case No. D2002-1128; Forest Laboratories, Inc. v. Whois Privacy Protection Service, Inc. WIPO Case No. D2007-1050. And moreover, the Panel is of the opinion that the Respondent intentionally registered the disputed domain name to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website. As a result of all this the Complainant submits that it is plain that the disputed domain name was registered and is being used in bad faith in accordance with paragraph 4(b) of the UDRP Rules.
For the above cited reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith and therefore the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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.
Ladislav Jakl
Sole Panelist
Dated: November 19, 2012
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