The Complainant is O2 Holdings Limited, of Berkshire, the United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Stobbs IP Limited, the United Kingdom.
The Respondent is O2 Videos of New Delhi, India. 2. The Domain Names and Registrar
The disputed domain names , and are registered with N LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2014. On January 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 21, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 24, 2014 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 January 27, 2014, and a second amended Complaint on January 28, 2014.
The Center verified that the Complaint together with the amended Complaints 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 January 31, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2014.
On January 28, 2014 the Respondent sent an email to the Center responding to the Complaint. The Respondent re-sent the same email together with attachments on January 31, 2014. The Center acknowledged receipt of these emails and requested that the Respondent confirm that the email and attachments may be regarded as a complete response. The Respondent confirmed that its email would serve as its complete Response on February 7, 2014.
On February 7, 2014, the Complainant made a supplementary filing to the Center by way of reply to the Response.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on February 24, 2014. 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. The Complainant’s O2 group was formed in November 2001. Since that time, the Complainant has used and promoted the O2 brand for its telecommunications business. The Complainant is recognized as a leading mobile telephone service provider in the UK, Ireland, Czech Republic, and Slovakia, among other countries.
The Complainant owns trademark registrations for O2 in the UK, the United States of America (“USA”) and in the European Union, (Community Trade Marks, “CTM”) as listed below:
O2 Trademark Registration No. 2264,516 – June 7, 2002 – UK
O2 Trademark Registration No. 2271228 – September 27, 2002 – UK
O2 Trademark Registration No. 2415848 – March 7, 2006 – UK
O2 Trademark Registration No. 2415862 – October 31, 2008 - UK
O2 Trademark Registration No. 3848986 – September 14, 2010 - USA
O2 Trademark Registration No. 2231903 – March 9, 1999 - USA
O2 Trademark Registration No. 2109627 – May 13, 2004 - CTM
O2 Trademark Registration No. 2284818 – June 16, 2004 - CTM
O2 Trademark Registration No. 9352337 – February 18, 2011 – CTM
O2 Trademark Registration No. 8337768 – January 12, 2010 – CTM
The domain name was registered on October 16, 2008; the domain name was registered March 13, 2009; and the domain name was registered on April 19, 2013. At the time the Complaint was filed, the disputed domain names reverted to websites that provided links for streaming various forms of video content, including movies and television shows. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant submits that it owns many UK, USA and CTM trademark registrations for the trademark O2 (i.e. Registration Nos. 2264,516; 2271228; 2415848; 2415862; 3848986; 2231903; 2109627; 2284818; 9352337; 8337768). The earliest of these registrations date back to March 9, 1999.
The Complainant contends that the disputed domain names , and are confusingly similar to the Complainant’s registered trademark O2. The Complainant contends that the words “cinemas”, “videos” and “tv series” are descriptive of the Complainant’s wares and services. The addition of these words do not distinguish the disputed domain names from the Complainant’s distinctive registered trademark. Rights and Legitimate interests
The Complainant has filed brief submissions relating to rights and legitimate interests. The Complainant contends that the Respondent has not used the disputed domain names in association with any legitimate business, since the disputed domain names revert to websites that provide downloads or streaming of videos, movies and TV shows. Complainant notes that there “does not appear to be any way of actually trading with these sites”, and argues that “the site appears to be entirely generating traffic on the back of the Complainant’s O2 brand.” Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the disputed domain names in bad faith because the Respondent appears to be holding the disputed domain names for the purpose of selling, renting or otherwise transferring the disputed domain names for valuable consideration in excess of the Respondent’s out-of-pocket costs. Complainant states that, “Respondent themselves appear to have no actual interest in the domain name”. The use of the disputed domain names in association with websites that provide links to services which are competing with the Complainant’s services is alleged to be evidence of bad faith under the Policy, because “the domains look like services which would likely be offered by the Complainant.” Complainant postulates that “it would not be far-fetched” for Respondent to try to sell the domains to the Complainant or to another party “for a large sum of money”, although no evidence of such an attempt is put forward. B. Respondent
The Respondent denies that the disputed domain names , and are similar to the registered trademarks of the Complainant.
The Respondent further submits that it has a right and a legitimate interest in the disputed domain names for the purpose of providing services of streaming and downloading movies and video clips for TV shows and other media to its customers, primarily in India. Respondent contends that it actively uses its websites for its business purposes, and that it has established its own significant reputation in its business over the last 5 years, during which time no customer has ever been confused that Respondent’s business is connected to that of Complainant. Respondent claims it has developed its own user base and that it does not rely on Complainant’s brand to generate traffic. Respondent provides keyword search data, and site traffic and referral data showing that visitors have not been led to Respondent’s sites through Complainant’s trademarks.
The Respondent also contends that it has no interest in reselling the disputed domain names. It has owned and used the disputed domain names for a long time, and has never engaged in any business related to telephone or mobile communication services. Respondent points to its active Facebook page with around 150,000 followers, to show the level of its business activity and reputation. Respondent also provides evidence from Google Analytics showing the location of its website users is primarily India and other markets, which are outside the countries where Complainant operates. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and is being used in bad faith. A. General Comments
As a preliminary matter, the Panel wishes to comment on the evidentiary record which was filed in this proceeding. These comments are confined to the Complaint and response. The Complainant attempted to make a supplementary filing to reply to the Response, but the Panel has declined to accept this filing, as it is outside the procedure and practice which is followed in these proceedings, in the absence of extraordinary circumstances.
The Complaint included a Witness Statement in the name of A. Clay on behalf of the Complainant. This statement had been prepared for a prior complaint against the domain name in 2010. The statement provides a history of Complainant’s business up to 2010, but it does not address any issues specifically related to Respondent’s business. The Panel would have been assisted by a more recent and targeted statement, particularly with respect to the Complainant’s possible involvement in content (video, television, movies) provided over its mobile network. No such evidence was provided. B. Identical or Confusingly Similar
The Panel finds that the Complainant does have registered rights in the mark O2 trademark by virtue of its UK, USA and CTM trademark Registrations listed in paragraph 4 above.
The Panel further finds that the disputed domain names ; and are confusingly similar to the Complainant’s registered trademark O2. The addition of the descriptive words “cinemas”; “videos”; and “tv series” does not serve to distinguish the disputed domain names from the Complainant’s registered trademark O2.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
On the basis of the evidentiary record in this proceeding, the Complainant has failed to show the absence of rights and legitimate interests on the part of the Respondent. The Panel notes that the witness statement relied on by the Complainant was in fact created for a prior UDRP more than 3 years ago, and it is therefore necessarily deficient in addressing the specific issues in this case. Complainant’s arguments can be characterized as somewhat speculative in nature, suggesting without any evidentiary basis that Respondent did not have any “actual interest” in the domain names, and positing that sale of the websites to third parties would not be “far-fetched”.
Respondent has provided evidence of at least some basis for rights or legitimate interests in the domain names, including:
(1) the Respondent’s websites are active, with a significant number of users;
(2) Respondent has developed some form of independent reputation, evidenced for example by a large number of Facebook followers;
(3) Respondent has denied any intention of trading on the reputation of Complainant;
(4) data from Google Analytics and Alexa for the Respondent’s principal website “www.” shows a high percentage of users (over 90%) from India, Pakistan, Nigeria, Bangladesh and Indonesia, countries where Complainant has no business presence, and no evidence of search keywords linked to Complainant’s business;
(5) the Respondent has never attempted to sell the disputed domain names; to the contrary, Respondent is evidently “working hard” to develop its own associated websites.
For the purposes of this proceeding, which is summary in nature, this evidence is sufficient to warrant a finding against the Complainant on this point. However, the Panel wishes to make it clear that other remedies may be available to the Complainant in a different forum, and that nothing in this decision should be understood as approving the content of the websites in question or business practices of the Respondent, beyond the narrow question determined under this proceeding. D. Registered and Used in Bad Faith
The Panel will, therefore, not make a finding with respect to bad faith in view of the findings made with respect to Rights and Legitimate Interests above. 7. Decision
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Sole Panelist
Date: 21 March 2014
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