The Complainant is O2 Holdings Limited of Berkshire, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Stobbs IP Limited, UK.
The Respondent is Domain Privacy Service of Burlington, Massachusetts, United States of America (“US”) / Orb Enerji of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2013. On June 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 17, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 18, 2013.
The Center verified that the Complaint together with the amended 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 June 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2013.
The Center appointed Eduardo Machado as the sole panelist in this matter on July 22, 2013. 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 O2 Group of telecommunications companies. The Complainant is the owner of many trademark registrations encompassing the element O2 (e.g., Community Trademark No. 002109627 was filed on February 28, 2001 and registered on May 13, 2004).
The Complainant presented a detailed statement setting out the various businesses, promotional, and other activities the Complainant has engaged since May of 2002.
The Complainant has recently acquired the rights previously owned by the American company Locus Telecommunications in the mark O2 in the United States.
The disputed domain name was registered on October 6, 2011. The disputed domain name currently resolves to an Internet site that seems to be suspended. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the disputed domain name is confusingly similar to the Complainant’s O2 Mark;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Complainant is the owner of the O2 Mark. It holds several registrations for the O2 Marks around the world, including in the United States. The Complainant alleges that the O2 Mark has become well known in the telecommunications sector, and also in the entertainment and music sector.
Bearing in mind the extensive nature of the reputation and rights owned by the Complainant in the O2 Mark in relation to telecommunications it is undoubted that any relevant consumer seeing the disputed domain name would assume that it relates to the Complainant. The Complainant alleges that the term “hosts” is descriptive in the field of telecommunication and since the term “O2” is distinctive and unusual in this same context, it is plain that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s mark for the purposes of paragraph 4(a)(i) of the Policy.
There appears to be no legitimate interest held by the Respondent in relation to the disputed domain name. The Respondent’s name does not have any relation to the disputed domain name, nor does any legitimate interest arise from its use. Bearing in mind the nature of the Complainant’s rights, there is no rational or legitimate explanation for the registration of the disputed domain name unless it is to capitalize on the reputation and rights owned by the Complainant.
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 argues 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. This amounts to 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
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(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 was registered and being used in bad faith. A. Identical or Confusingly Similar
The Complainant is the owner of the O2 Mark, having registrations for O2 as a trademark throughout the world.
The term “hosts” is commonly used in relation to web hosting, which is exactly the sort of service expected from a telecom provider. The disputed domain name comprises the O2 Mark and the descriptive word “hosts”.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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
(ii) you (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
(iii) you are making 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.” (Policy, paragraph 4(c)).
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the disputed domain name or to seek the registration of any domain name incorporating the O2 Marks.
The Panel finds the evidence does not support a finding that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use, rather, there is evidence that the Respondent initially has used exactly the Complainant’s O2 logo. The Panel notes the Respondent appeared to use the disputed domain name for the purpose of providing web hosting services but finds on balance the Respondent’s use of the Complainant’s logo on the website, without any explanation from the Respondent, is not bona fide.
The Complainant has established a prima facie case that the Respondent lacks rights or interests in the disputed domain name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy. C. Registered and Used 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 the disputed 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 disputed domain name registration to the Complainant who is the owners of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its 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 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the O2 mark at the time the disputed domain name was registered. The O2 Mark has been extensively promoted by the Complainant both in the United States and internationally.
Furthermore, the disputed domain name precisely replicates the term “O2”, which is the name of a number of the Complainant’s registered trademarks, with the addition of the term “hosts”, which the Panel finds is descriptive in the context of mobile telecommunication services as offered by the Complainant. Under the circumstances, the Panel finds the use of the disputed domain name falls under Paragraph 4(b)(iv) of the policy.
The Panel finds that the term “O2hosts” is descriptive of such services as provided by the Complainant.
Accordingly, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith under 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.
Eduardo Machado
Sole Panelist
Date: August 5, 2013
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