The Complainant is O2 Holdings Limited, Berkshire, United Kingdom of Great Britain and Northern Ireland, represented by STOBBS, United Kingdom.
The Respondent is Profile Group, DNS Manager, Wilmington, Delaware, United States of America, internally represented by Profile Group. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2013. On July 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 25, 2013, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint1. The Center sent an email communication to the Complainant on July 29, 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 July 29, 2013.
The Center verified that 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 August 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 21, 2013. The Response was filed with the Center on August 21, 2013.
On August 28, 2013, the Complainant emailed the Center, providing comments on a number of the Respondent’s submissions. The Center replied to the Complainant on August 29, 2013, advising that all communications received would be forwarded to the Panel and that the Panel would determine what steps to take in respect of the material.
The Center appointed John Swinson as the sole panelist in this matter on August 29, 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.
On August 30, 2013, the Respondent emailed the Center in response to the Complainant’s August 28, 2013 email reply to the Response. The Respondent email gave arguments as to why the Complainants email should not be included into the record. The Center acknowledged receipt and forwarded the communication to the Panel the same day. 4. Factual Background
The Complainant is O2 Holdings Limited of the United Kingdom, the IP holding company of the O2 Group of telecommunications companies.
The Complainant holds a Community Trade Mark Registration for 02 (ie. zero two). The Complainant is also the owner of numerous registered trademarks for O2 (including in the United Kingdom). The Complainant provided evidence of these registrations.
The Respondent is Profile Group of the United States of America. The Respondent has submitted that the Respondent’s business is registering “generic, descriptive, and otherwise non-infringing domain names”.
The Respondent registered the Disputed Domain Name with the Registrar on October 22, 2012. Currently, the website at the Disputed Domain Name has a link at the top of the page that states: “The domain may be for sale. Click here for details.” At the time of the Complaint, the website homepage provided links to categories of various goods and services, which linked to pages with pay-per-click links. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions. Identical or Confusingly Similar
The Complainant’s trademarks have become well known in the telecommunications, entertainment and music sectors. In a recent survey, the Complainant’s brand was identified as one of the 100 most valuable brands in the world.
The 02 element of the Disputed Domain Name is identical to the Complainant’s registered 02 trade mark, and is effectively identical to its other O2 trademarks. The element 4g is entirely descriptive (it describes the new standard by which mobile communications are being operated) and does not add anything to the overall impression of the Disputed Domain Name. Rights or Legitimate Interests
The Respondent does not have any legitimate interests in the Disputed Domain Name. The Respondent is not commonly known by the Disputed Domain Name.
There is no genuine business operating at the Disputed Domain Name. The Respondent is using the Disputed Domain Name to operate a pay-per-click website. Additionally, the link at the top of the website at the Disputed Domain Name states that the domain is for sale. Registered and Used in Bad Faith
The Respondent registered the Disputed Domain Name to capitalize on the Complainant’s brand reputation around the world. It must have been acquired primarily for the purpose of selling, renting, or otherwise transferring the registration to the Complainant, or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs.
It is reasonable to assume that the Respondent registered the Disputed Domain Name to attract users to its website to generate click through income. Users would assume (particularly due to the inclusion of 4g, which is descriptive of the Complainant’s services) that the website was related to the Complainant. B. Respondent
The Respondent makes the following submissions. Identical or Confusingly Similar
The Complainant’s mark is the letter O combined with the number 2, and is primarily represented in a stylized format (as the chemical element oxygen, O2). The Disputed Domain Name consists of three numbers (024) and a letter (g). This combination does not resemble the stylized trade mark (O2) most commonly used by the Complainant. Rights or Legitimate Interests
The Respondent registers generic, descriptive, and otherwise non-infringing domain names to derive advertising income through the use of each domain name in connection with click through services. The combination of the numeric string 024 with the letter g creates a generic domain name.
The advertisements on the website at the Disputed Domain Name do not utilize the value of the Complainant’s trademarks. Registered and Used in Bad Faith
The Respondent registered the Disputed Domain Name without any intent to usurp the goodwill of the Complainant. The Respondent was unaware of the Complainant’s trade mark rights. The numbers and letter used are random and the click-through links have nothing to do with the Complainant or its competitors. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(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. Procedural Matters
The Policy envisages prompt and efficient resolution of domain name disputes. Accordingly, the Rules and the Supplemental Rules only contemplate the filing of a complaint and a response, with strict time and page limits. There is no explicit provision for additional filings, except for further statements or documents provided in response to a request from a panel. Paragraph 10 of the Rules provides that the panel is to conduct proceedings “with due expedition” and gives the Panel the power to “determine the admissibility, relevance, materiality and weight of the evidence”. Generally, panels will only accepted supplementary filings in “exceptional” circumstances.
The supplementary material provided by the Complainant via email does not offer any evidence that was previously unavailable to the Panel. Accordingly, the Panel declines to accept this material as part of the record in this proceeding. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to one of the Complainant’s trademarks.
The Disputed Domain Name is a combination of the Complainant’s registered 02 trade mark and the descriptive term “4g”, which describes an operating standard for mobile phones.
The Panel finds that 02 is the dominant element in the Disputed Domain Name. It is well established that the addition of a descriptive term (such as “4g”) to a trade mark does not prevent confusingly similarity (see e.g. Paris Hilton v. Turvill Consultants,WIPO Case No. D2012-0965 and the cases cited therein).
Given the aural and visual similarities between O2 and 02, the Panel finds that the Disputed Domain Name is also confusingly similar to the Complainant’s O2 trade mark. In light of the above, the Panel does not need to discuss confusing similarity in relation to the Complainant’s stylized O2 trade mark.
The Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case for the following reasons:
- the Respondent has no connection with the Complainant;
- the Complainant has not consented to the Respondent's use of its trademarks;
- there is no evidence that the Respondent has been commonly known by the Disputed Domain Name or has used a term similar to the Disputed Domain Name in any business.
Further, the website to which the Disputed Domain Name resolves is commercial in nature. It is a “link farm” website which directs users to various goods and services, and which generates pay-per-click advertising revenues. The Disputed Domain Name is not a dictionary or common word and is not being used in a descriptive sense (i.e. to describe the sponsored links hosted or related to the content of the website).
The Respondent has not provided sufficient evidence to rebut the Complainant’s prima facie case. It may be correct that the Respondents’ website does not have links or advertisements that relate to telecommunications. It is also correct that a pay-per-click or link farm website is not illegitimate per se.
Here, however, the Respondent provides no evidence of its rights or legitimate interests in respect of the Disputed Domain Name. The Respondent provides no explanation as to why the Respondent selected and registered this particular domain name. The Respondent provides no explanation as to the purpose of its website, why consumers would visit its website, or why the Disputed Domain Name is relevant to the website content. The Respondent merely asserts that the Complainant has not met its burden of proof on this element.
The Panel disagrees with the Respondent and finds that the Complainant has made out a prima facie case that the Respondent has not rebutted. The Panel finds that the Disputed Domain Name is being used to misleadingly divert consumers. This is not a fair commercial use of the Complainant’s trademarks, nor does it constitute a bona fide offering of goods or services.
In light of the above, the Complainant succeeds on the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The O2 Group and the Complainant’s trademarks are well-known, particularly in relation to telecommunications products and services. The Panel finds that the Respondent, prior to its registration and use of the Disputed Domain Name (which wholly incorporates the Complainant’s 02 trade mark and a descriptive term relating to the telecommunications industry) was likely aware that the Complainant was the owner of the 02 and O2 trademarks because of the substantial reputation of both the Complainant and the marks.
The Respondent’s registration of a domain name that wholly incorporates the Complainant’s 02 trade mark, indicates that the Respondent registered the Disputed Domain Name to mislead users into thinking it is some way connected, sponsored or affiliated with the Complainant and its business/products, or that the Respondent’s activities are approved or endorsed by the Complainant.
It appears to the Panel that the Respondent is trading off the Complainant’s substantial reputation. This constitutes bad faith (see e.g. Cynthia Ann Crawford v. Julian S. Garcia,WIPO Case No. D2012-2454 and cases cited therein).
The Panel does not accept the Respondent’s explanation that it registered the Disputed Domain Name because it consisted of three random numbers and the letter “g”. A more likely explanation for the Respondent’s conduct is that proposed by the Complainant, that is, that the domain name consists of the Complainant’s well-known trademark and the telecommunication term “4g”.
The following may be further evidence of bad faith:
- The use of a privacy service. The use of such services to avoid disclosing the details of the true registrant has been found to be consistent with an inference of bad faith in registering and using domain names (see Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598 and Barclays Bank PLC v. Privacy Protect/Callum Macgregor,WIPO Case No. D2010-1988).
- The offer of the Disputed Domain Name for sale to the public (see e.g. Playboy Enterprises International, Inc. v. Tamara Pitts,WIPO Case No. D2006-0675 and Sanofi v. Mi Zhang/ li qianfang,WIPO Case No. D2013-0682).
In light of the above, the Panel finds that the Complainant has succeeded on the third element 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.
John Swinson
Sole Panelist
Date: September 12, 2013
1 The Complaint originally identified a privacy service, “Whois Privacy Protection Service, Inc.”, as Respondent.
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