The Complainant is O2 Holdings Limited of Slough, Berkshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stobbs IP Limited, United Kingdom.
The Respondent is / Domain ID Shield Service Co, Limited of United States of America, and Hong Kong, China, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2013. On June 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 7, 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 10, 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 11, 2013. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the 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 Andrea Jaeger-Lenz as the sole panelist in this matter on July 24, 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
The Complainant is the Intellectual Property holding company of the O2 Group of telecommunications companies. The O2 brand owned by the Complainant was launched in May of 2002 and has ever since been used to great extend for the promotion and tagging of various telecommunication related goods and services. Whereas the Company is represented in a number of countries all over the world, it predominantly operates in the European Union. In a survey referred to by the Complainant, the Complainant’s O2 brand was ranked as one of the top 100 most valuable brands in the world.
The Complainant holds several registrations for the word mark O2 in the United Kingdom and -more recently- in the United States of America too. Besides that it also holds various Community Trademarks for the term O2, which is additionally the chemical formula for oxygen. In conjunction with these word marks, the Complainant’s trademark portfolio features several graphic marks that fill in on the overall oxygen theme that determines the company’s corporate identity. Amongst them are pictures of bubbles and a background theme which gradually fades from a lighter shade of blue at the top to a darker shade of the same color at the bottom.
The Complainant is also the owner of the domain name . The Respondent and the Domain Name
According to the WhoIs excerpt provided as Annex 1 to the Complaint, the disputed domain name was registered by the Respondent on September 26, 2011. The disputed domain name resolves into a website which features a large rectangular header that fills almost the entire width and approximately one third of the screens height. On the right hand side the header shows a man with a cell phone in his hand making a call in front of a blue sky with only light clouding and mountains in the lower portion of the picture. On the left hand side the term “O2IRAN” is depicted in bold letters and underlined by the words “INTERNATIONAL SIMCARD + FREE ROAMING”. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to his well-known O2 trademarks. It is of the opinion that the addition of the geographical indicator “Iran” is not suitable to diminish the degree of confusing similarity, because of its descriptive meaning. Upon viewing the Respondent’s website under the disputed domain name, consumers would reasonably believe that the disputed domain is owned by the Complainant.
Moreover, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name since it does not operate a genuine business under the disputed domain name. On the contrary, the Respondent’s actions are solely motivated by the idea of capitalizing on the reputation of the Complainant’s brand by having acquired the disputed domain name only for the very purpose of selling or renting it to the Complainant or one of his competitors (“domain grabbing”). Furthermore, the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, expressed or implied, to use the Complainant’s trademark in a domain name or in any other way.
Finally the Complainant points out that the content accessible on the disputed domain name refers to branding and material of the Complainant. Namely, it shows the image of a sim card with the Complainant’s O2 logo on it. In addition, the picture features bubble imagery and the strap line “See what you can do”, all of which are protected trademarks of the Complainant.
All of the aforementioned trademarks were registered in favor of the Complainant prior to the registration of the disputed domain name.
The Complainant therefore requests that the disputed domain name shall be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail, 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;
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
By the Rules, paragraph 5(b)(i), it is expected of a respondent to “respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”.
In this case, the Center has employed the required means to achieve actual notice of the Complaint to the Respondent in compliance with the Rules, paragraph 2(a), and the Respondent was given the opportunity to present its case.
In the event of default, under the Rules, paragraph 14(b) “[…] the panel shall draw such inferences therefore as it considers appropriate.” As stated by numerous panels (e.g., Viacom International Inc. v. Ir Suryani,WIPO Case No. D2001-1443), in case a respondent has not submitted any evidence and has not contested the contentions made by the complainant, the panel is left to render its decision on the basis of the uncontroverted contentions made and the evidence supplied by the Complainant: “[…] in the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended factual and legal conclusions as proven by such evidence.”
In the present administrative proceeding, the Respondent has chosen not to submit a response. Its default leads the Panel to conclude that the Respondent has no arguments or evidence to rebut the contentions of the Complainant. The Panel therefore takes its decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules, the Supplemental Rules and any rules and principles of law as it deems applicable. A. Identical or Confusingly Similar
In the present case, the disputed domain name incorporates the term “O2”, which is identical to the Complainant’s registered and well-known trademark O2. The disputed domain name only differentiates from the Complainant’s trademark by the inclusion of “Iran”, which refers to the name of the Islamic Republic of Iran. Therefore the disputed domain name reproduces the term “O2” in its entirety and combines it with the geographical term “Iran”.
The Panel finds that the disputed domain name by itself already evokes the impression that it is owned by the Complainant or at least used with its consent. Taking into consideration the high reputation of the brand and its international usage, it is likely that the consumer will believe that the disputed domain name will contain information on goods and services that the Complainant offers in Iran.
This misleading impression is further enforced by the content and the overall appearance of the website.
The above findings are in line with the established practice of UDRP panels that the addition of geographical and therefore descriptive terms does not rule out the confusing similarity between the protected trademark of a complainant and a disputed domain name (see Universal City Studios, Inc. v. Meeting Point Co.,WIPO Case No. D2000-1245; Yahoo! Inc v. Eitan Zviely Zvieli Fisher / F.Z./ Oz Domains / E.Z.O.F./ E&O Domains / Fisher Zvieli,WIPO Case No. D2000-0273; Astro Business Solutions, Inc. / Canon Information Systems, Inc. Canon U.S.A., Inc. v. Richard Sims,WIPO Case No. D2000-0819; Sheraton International IP, LLC Starwood Hotels & Resorts Worldwide, Inc. v. Moniker Privacy Services / Igor Nikolenko [3992137],WIPO Case No. D2012-1856). B. Rights or Legitimate Interests
Under paragraph 4(a) (ii) of the Policy, the complainant has the burden of establishing that the respondent has no rights or legitimate interests in respect of the disputed domain name.
It is a consensus view under the UDRP that it is sufficient for the complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the respondent (see Stoxx AG v. 247 Holdings Group,WIPO Case No. D2012-1582; Credit Agricole S.A. v. Dick Weisz,WIPO Case No. D2010-1683; Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes with respect to paragraph 4(c)(i) of the Policy, that there is no evidence in the record that the Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services. Even if the Respondent actually offered telecommunication goods and services via the disputed domain, nothing has been brought forth or is evident that it is doing so with the consent or that it does not need the consent of the Complainant.
Additionally, with respect to paragraph 4(c)(ii) of the Policy, there is no evidence which indicates that the Respondent has ever been commonly known by the disputed domain name or has acquired trademark rights in a name corresponding to it.
Furthermore, with respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made, and is not making, a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Considering the above, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks any rights and/or legitimate interests in the disputed domain name.
Hence, the burden of production of evidence has been placed on the Respondent. In such cases, a respondent must demonstrate his rights or legitimate interests in the disputed domain name in order to rebut the prima facie case. The Respondent has made no such showing, since there has not been any Response to the Complainant’s contentions.
The Panel therefore finds that the Respondent’s default to refute the prima facie case made by the Complainant is sufficient to establish a lack of rights or legitimate interests of the Respondent in the disputed domain name. In conclusion the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, a complainant has to establish that a respondent registered and used the disputed domain name in bad faith.
Whether a disputed domain name is used in bad faith for purposes of the Policy may be determined by evaluating the following criteria set forth in paragraph 4(b) of the Policy:
(i) circumstances indicating that the registrant has registered or the registrant has acquired 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 of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name;
(ii) the registrant has registered the 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 registrant has engaged in a pattern of such conduct;
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.”
It is clear that the website deals with the promotion and/or distribution of telecommunication services. The picture of a man using his cell phone in conjunction with the advertisement “INTERNATIONAL SIMCARD + FREE ROAMING” leave no doubt in this matter.
Since the term O2 is prominently placed in the picture and depicted in large and bold letters, it is also clear that the website refers to the O2 brand of the Complainant. The blue sky in the background which is merely penetrated by light clouds supports this impression since blue is commonly recognized as the Complainant’s corporate identity color.
Furthermore, the Complainant has submitted a screenshot of the website that shows a picture of a Sim Card with the O2 logo against the background of a bubble scheme. The image also features the protected slogan “See what you can do.” The use of this image is yet another indicator that the website is affiliated with the Complainant.
The Complainant has brought evidence that his various O2 trademarks have been registered long before the Respondent registered the disputed domain name. The Complainant’s O2 trademark is known to the Panel itself and many consumers worldwide alike. The Panel therefore accepts the Complainant’s contention that the O2 trademark is a well known trademark in the telecommunications sector. It is therefore inconceivable that the Respondent was unaware of the O2 trademark when he registered the disputed domain name (see Heineken Brouwerijen B.V. v. Mark Lott,WIPO Case No. D2000-1487, where finding of bad faith was given in light of the Complainant’s international recognition precluding innocent registration of a confusingly similar domain name). According to paragraph 2 of the Policy, it is the responsibility of the respondent to determine whether the registration of the disputed domain name infringes or violates someone else’s rights.
On the bad faith use of the disputed domain name, the Complainant provided evidence in Annex 6 to the Complaint. Due to the extensive use of graphic and word trademarks of the Complainant, all of which are very distinctive in relation to telecommunication services, in conjunction with the overall appearance of the website in the Complainant’s corporate Identity colors, the website conveys the impression that the Respondent’s intention is to profit from the reputation of the brands of the Complainant.
For all of the foregoing and in absence of any Response from the Respondent, the Panel finds that the disputed domain has been registered and is being used in bad faith in the sense of paragraph 4(b)(iv) of the Policy and that the Complainant has satisfied the requirement 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 shall be transferred to the Complainant.
Dr. Andrea Jaeger-Lenz
Sole Panelist
Date: August 5, 2013
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