The Complainant is O2 Worldwide Limited, London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Stobbs IP Limited, United Kingdom.
The Respondent is Dan Putnam of Layton, Utah, United States of America ("United States"). 2. The Domain Names and Registrars
The disputed domain names , , , , , , and are registered with TierraNet d/b/a DomainDiscover (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 29, 2017. On September 29, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 29, 2017 and October 5, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 29, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 30, 2017. On October 31, 2017, the Center received an email communication from the Respondent.
The Center appointed Alistair Payne as the sole panelist in this matter on November 27, 2017. 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 ("O2 Group"). The O2 Group is a diversified group that operates businesses in various European countries including in the United States and its offerings under the O2 mark include by way of example O2 Money, O2 Health, O2 Online, O2 Blue, O2 Music and O2 Drive. The Complainant or members of the O2 Group own numerous trade mark registrations for, or that incorporate, its O2 mark, including European Union Trade Mark (EUTM) 2109627 for O2 registered on May 13, 2004 and EUTM 09352337 for O2 registered on February 18, 2011 and United States trade mark registration 3848986 filed on March 1, 2004 and registered on September 14, 2010.
The disputed domain names were registered on the following dates:
March 2, 2011;
March 2, 2011;
March 2, 2011;
April 23, 2016;
March 2, 2011;
March 2, 2011;
March 2, 2011;
March 2, 2011. 5. Parties' Contentions A. Complainant
The Complainant submits that its O2 brand has become extremely well known in the telecommunications sector and also in the entertainment and music sectors due to the extensive use of the brand and to the unusual nature of its mark in the context of these services. It says that it is continually expanding its activities and has a number of offerings under the brands "O2 Money", "O2 Health", "O2 Online", "O2 Blue", "O2 Music" and "O2 Drive" and maintains webpages for certain of these activities. It also operates a dedicated webpage for its international offerings at "/international/internationalhub". It notes that a recent brand survey ranked it as one of the 155 most valuable brands in the world and has submitted a supporting witness statement that describes and attaches examples to support the significant reputation that it says that it has developed in the United Kingdom and in various European countries. It has also submitted the results of a Google search which it says demonstrates that when a search for "O2" is carried out all of the links relate to the Complainant.
The Complainant submits that it owns numerous trade mark registrations in the European Union, the United Kingdom and the United States that incorporate its O2 mark, including the trade mark registrations noted above. These marks include by way of example trade mark registrations for O2 WORLDWIDE (United Kingdom mark 3075425 registered on January 9, 2015), O2 ONLINE, O2 BLUE, O2 HEALTH and O2 PROTECT. It says that the majority of consumers will pronounce "O2" as "oh2" and as a consequence that consumers will consider these terms as being interchangeable.
As a consequence, the Complainant says that whether the disputed domain names contain "o2" or "02" that consumers will think of the Complainant, either on seeing the disputed domain name concerned, or on undertaking a Google search for "O2"and that they should therefore all be considered as confusingly similar to the Complainant's O2 trade mark. It further submits that the domain names and are confusingly similar since any potential consumer seeking to join the Complainant's network would look for a domain name registered under these names. The Complainant also submits that Internet users looking for the Complainant's international offerings on-line would be likely to associate the disputed domain names or with the Complainant's international offerings.
The Complainant submits that the Respondent's intent in registering the disputed domain names was to capitalize on the Complainant's goodwill and reputation by misleading Internet users and re-directing them to its website. The Complainant notes that, the website to which the domain name resolves, uses the Complainant's imagery to promote its health services and represents itself as being "O2 Worldwide". In particular, it uses the O2 mark and identical and very similar branding elements such as a very similar representation to the O2 logo, a blue graduation and the use of the combination of the colours blue/white and indigo/white. Complainant says this is likely to confuse and mislead Internet users and it submits that it cannot find any proof of incorporation of the O2 Worldwide entity and although an "R" in a circle sign is used next to the "O2 Worldwide" name it can find no trade mark registration for this mark.
The Complainant says that the active disputed domain names resolve to the domain name . The "O2 Worldwide" site that appears at this domain name sets out a scheme that offers rewards and financial compensation to those who join the scheme as third-party sellers. The Complainant says that the Respondent is using the reputation and goodwill attached to the Complainant's mark in order to build a base of third-party sellers and that this intentional deception is not a legitimate interest in the disputed domain names. The Complainant has provided evidence of independent third-parties concerned about the misleading nature of this conduct and notes that this domain name was previously used in relation to another proposal in 2003 and 2006. Overall the Complainant says that this demonstrates that the Respondent has no legitimate interests in the disputed domain names and that if there had been a legitimate interest there would be no use of the Complainant's imagery, imitation branding or company name.
As far as registration and use in bad faith is concerned, the Complainant says that this all amounts to the Respondent intentionally registering the disputed domain names to attract Internet users for commercial gain to its website by creating a likelihood of confusion with the Complainant 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, in terms of paragraph 4(b)(iv) of the Policy. It says the fact that the Complainant's logo and artwork was used indicates an intention to confuse consumers and direct them to his own website for his own commercial benefit.
Additionally, the Complainant submits that the fact that the Respondent registered so many disputed domain names indicates that it wished to divert Internet users for its own commercial gain which has disrupted the Complainant's business in terms of paragraph 4(b)(iii) of the Policy. It also says that the disputed domain names have been registered in order to prevent the Complainant from reflecting its mark in corresponding domain names and the fact that the Respondent has registered the Complainant's name and company mark with multiple extensions and variations precludes the Complainant from registering equivalent domain names in terms of paragraph 4(b)(ii) of the Policy. The Complainant also submits that the disputed domain names were acquired by the Respondent for the purpose of selling, renting or otherwise transferring the disputed domain names to the Complainant or to a competitor of the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated that it, or a member of the O2 Group, owns numerous trade mark registrations for, or that incorporate, its O2 mark including EUTM 2109627 for O2 registered on May 13, 2004 and EUTM 09352337 for O2 registered on February 18, 2011 and United States trade mark registration 3848986 for O2, filed on March 1, 2004 and registered on September 14, 2010.
The Panel finds that the O2 mark is a coined and highly distinctive mark in relation to the services for which it is registered. Further and based on the submissions and substantial supporting evidence provided by the Complainant, the Panel notes that the Complainant's O2 mark enjoys a very high level of consumer renown and recognition, at least in its key European markets and Internet users seeing the O2 mark in a disputed domain name together with generic or common words in the English language would more likely than not assume that there was some affiliation or association between the disputed domain name and the Complainant's corporate group or business. Whether the mark incorporated into a disputed domain name is written as "O2", "o2", or as "02", or "02", the Panel considers that Internet users are most likely to associate the disputed domain name with the "O2" mark because the last three representations are all confusingly similar to the Complainant's O2 mark.
In each case the disputed domain names contains either a common English word such as "join","drops", "takeover" or "worldwide", or the letters "ww". In the Panel's view none of these elements serve to distinguish the particular disputed domain name from the Complainant's O2 mark. Whether the additional element in question is "join","drops", "takeover" or "worldwide", the pre-eminent element of each of the relevant disputed domain names is the "O2", "o2", "02", or "02" element, as the case may be and each of these English words operate descriptively in relation to the "O2" mark or a confusingly similar element. As far as the "ww" element is concerned, the Panel accepts the Complainant's submission that this would most likely be interpreted as an abbreviation of "worldwide" (noting also that the Complainant owns a trade mark registration for O2 WORLDWIDE) and would similarly not distinguish the pre-eminence of the "o2" element in the disputed domain name . The Panel's analysis is only supported by the fact that the Complainant or the O2 Group own various trade mark registrations for numerous brand extensions to the O2 mark which means that people seeing the O2 mark with a brand extension would be more likely to associate the mark with the O2 Group.
As a result, the Panel finds that each of the disputed domain names, namely, , , , , , , and are confusingly similar to the Complainant's O2 trade mark registrations and the Complaint therefore succeeds under this element of the Policy. B. Rights or Legitimate Interests
The Complainant's case is that the Respondent's intent in registering the disputed domain names was to capitalize on the Complainant's goodwill and reputation by misleading Internet users and re-directing them to its website and that this is not a bona fide activity and is not consistent with a legitimate interest in each of the disputed domain names.
In this regard the Complainant notes that, the website to which the domain name resolves and to which each of the other "active" disputed domain names also resolves (namely , , , (collectively the "active disputed domain names"), uses the Complainant's imagery to promote its health services and represents itself as being "O2 Worldwide". It uses the O2 mark and identical and very similar branding elements such as a very similar representation to the O2 logo, blue graduation and the use of the combination of the colours blue/white and indigo/white and the Complainant submits that this is likely to confuse and mislead Internet users and that the Respondent registered the "active" disputed domain names precisely for this purpose. It also submits that it cannot find any proof of incorporation of the Respondent's O2 Worldwide entity and although an "R" in a circle sign is used next to the "O2 Worldwide" name, it can find no trade mark registration for this mark.
As far as the "inactive" disputed domain names are concerned, namely , , (collectively referred to as the "inactive" disputed domain names) the Panel notes that they resolve to closed websites or to placekeeper sites.
In view of the evidence of use of the "active" disputed domain names to mislead and then divert Internet users to the Respondent's website as further discussed below under Part C, the Complainant's evidence that it could not identify the legal entity behind the Respondent's website and the Respondent's apparent lack of registration of its "O2 Worldwide" trading name or trade mark, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the "active" disputed domain names. In relation to the inactive disputed domain names, the Panel notes equally the Respondent's apparent lack of registered rights in the "O2", "o2", or "02" marks and notes the fact that it appears to have registered these disputed domain names together with the "active" disputed domain names as part of an overall plan to target the Complainant as further discussed under Part C below.
The Respondent has not rebutted the Complainant's prima facie case in relation to any of the disputed domain names. Accordingly, the Panel finds that the Complaint succeeds under this element of the Policy. C. Registered and Used in Bad Faith
All the disputed domain names, with the exception of , were registered on March 2, 2011. The evidence on the record is that by this date the Complainant had long owned registered trade mark rights in its O2 mark and that by this time the Complainant's O2 trade mark had been very widely publicised and used in various European countries. The Panel finds that on the evidence the Complainant's O2 mark had by 2011 developed a considerable degree of renown. Also, considering that the Respondent registered seven of the disputed domain names on the same day and that it subsequently used the active disputed domain names to resolve to a website that was conceived to look similar to the Complainant's websites, by adopting similar colour schemes, logos and overall style, the overwhelming inference is that the Respondent, even though based in the United States, registered all of the disputed domain names with knowledge of the Complainant's O2 mark and business.
The website to which each of the active disputed domain names resolve appears to be targeted quite blatantly at Internet users looking for the Complainant's website. As noted above, the use of the tiltle "O2 Worldwide" and of similar colour schemes, logos and a similar overall style, appears to be calculated to confuse Internet users who are re-directed to the website into thinking that they are at one of the Complainant's websites, or at the least that it has some affiliation with or is authorised by the Complainant. The strong inference is that the Respondent is using the Complainant's O2 mark, or confusingly similar versions of it, in the active disputed domain names in order to attract Internet users to its website where it hopes to interest them in becoming third party sellers in its own commercial scheme to sell a product called "O2 Drops". This amounts to intentionally attempting to attract Internet users for commercial gain to the Respondent's web site or online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site in terms of paragraph 4(b)(iv) of the Policy, which is evidence of registration and of use in bad faith under the third element of the Policy.
Under paragraph 4(b)(ii) of the Policy registering a domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that that there is evidence of a pattern of such conduct, amounts to evidence of registration and use of a disputed domain name in bad faith. The Respondent registered seven domain names at the same time (whether active or not) that either incorporate the Complainant's name and company mark, or variants of them with additional elements. It then went on some years later to register . This amounts to a clear pattern of conduct that precludes the Complainant from reflecting its mark in corresponding domain names in terms of this section of the Policy.
For completeness the Panel notes that there is insufficient evidence for a finding, as sought by the Complainant, that the requirements of paragraph 4(b)(iii) of the Policy have been fulfilled, as it is unclear to the Panel from the record as to whether the Respondent really is a competitor of the Complainant. However, this does not alter the overall result under this element of the Policy that the disputed domain names have been registered and used in bad faith.
Based on the Panel's findings above the Complaint succeeds in its case in relation to each of the disputed domain names under this 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 names:
, , , , , , be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: December 13, 2017
Full & Egal Universal Law Academy