The Complainant is O2 Holdings Limited of Berkshire, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Stobbs IP Limited, United Kingdom.
The Respondent is Park Taewon of Seoul, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Inames Co., Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on July 30, 2015. On July 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2015, 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, and confirming Korean as the language of the Registration Agreement for the disputed domain name. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on August 6, 2015.
On August 7, 2015, the Center sent a communication to the parties, inviting the Complainant to provide evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, to submit the Complaint translated into Korean, or to submit a request for English to be the language of the administrative proceeding, and inviting the Respondent to make submissions in this regard. On August 10, 2015, the Complainant filed a request for English to be the language of the administrative proceeding.
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 both in English and Korean, and the proceeding commenced on August 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 3, 2015.
The Center appointed Ik-Hyun Seo as the sole panelist in this matter on September 18, 2015. 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.
Based on the deadline set forth in paragraph 15 of the Rules, a decision was to be issued by the Panel by October 2, 2015. Due to unforeseen circumstances, the Panel found it necessary to extend the due date for the decision to October 16, 2015, and the parties were so notified. 4. Factual Background
The Complainant is the intellectual property holding company of the O2 Group of telecommunications companies ("O2"). O2 was incorporated in the United Kingdom in 2001 and as of 2008 had 45.8 million customers in Europe. The Complainant owns numerous trademark registrations for O2 dating back to 1999.
The Respondent appears to be a Korean individual with a residence in the Republic of Korea.
According to the WhoIs information, the disputed domain name was registered on December 15, 2014. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to marks in which the Complainant has rights. Specifically, the Complainant has trademark registrations for O2 and O2- based marks around the world, including in the Republic of Korea. The additional portion "mail" need not be considered since it is a descriptive term in the field of telecommunications.
The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name, and confirms that it has not authorized or licensed rights to the Respondent in any respect.
Finally, the Complainant contends that the disputed domain name was registered and used in bad faith. First, the Complainant notes that the Respondent used the disputed domain name for a domain parking site with links to the products and services of the Complainant and the Complainant's competitors. This shows bad faith intent to profit from the fame of the O2 mark. Further, the Respondent offered to sell the disputed domain name to the Complainant for an amount that is far beyond the related out-of-pocket costs. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the registration agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. In this case, the language of the Registration Agreement is Korean, and both parties have had an opportunity to argue their position on this point. The Center issued a notice in Korean and English stating that it would accept the Complaint filed in English, and that the Response would be accepted in either Korean or English. The Respondent subsequently chose not to submit a Response.
First, the content displayed at the website linked to the disputed domain name was in English. Further, the Respondent's email communications with the Complainant's representative submitted by the Complainant show that he is quite proficient in the English language. Besides, both parties were given the opportunity to submit arguments in the language of their preference, but the Respondent neither raised an objection as to the Complainant's choice of English as the language of the proceeding nor submitted any arguments whatsoever in this proceeding.
Under these circumstances, the Panel finds it proper and fair to render this decision in English. B. Identical or Confusingly Similar
The Complainant has demonstrated with supporting evidence that it holds a number of trademark registrations in the O2 and O2 family of marks in various jurisdictions. To identify a few, the Complainant owns registrations for O2 (United Kingdom Registration No. 2264516, Community Trade Mark (CTM) No. 2109627, United States of America Registration No. 38448986), O2 MONEY (CTM No. 9421439, etc.), O2 MEDIA (United Kingdom Registration No. 2516664) and THE O2 (Republic of Korea Registration No. 45-0016931). The disputed domain name entirely incorporates the Complainant's mark and the other element "mail" may be dismissed from consideration as it is a generic term. Accordingly, the disputed domain name is confusingly similar to the Complainant's trademark.
For the reasons mentioned above, the Panel finds that the first element has been established. C. Rights or Legitimate Interests
On the basis of the present record, the Panel finds that the Complainant has made the required allegations to support a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once such a prima facie basis has been established, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. However, the Respondent in this case has chosen to file no Response to these assertions by the Complainant, and there is no evidence or allegation in the records that would warrant a finding in favor of the Respondent on this point.
For the reasons provided above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element has been established. D. Registered and Used in Bad Faith
The Panel finds that there are more than sufficient reasons to find bad faith registration and use in this case. First, the Respondent linked the disputed domain name with a domain name parking service which had sponsored links to websites advertising telecommunication products and services which are the exact goods and services for which the Complainant's O2 mark is famous. This shows that the Respondent was aware of the Complainant, its products and trademark, at the time of registration and used the disputed domain names to attract Internet users for financial gain.
Further, in communications with the Complainant's counsel, the Respondent offered to sell the disputed domain name for USD 3,000, which is well in excess of the actual fees involved in registering and maintaining the disputed domain name.
For the reasons given above, the Panel finds that the third and final element has been established. 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.
Ik-Hyun Seo
Sole Panelist
Date: October 16, 2015
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