The Complainant is O2 Worldwide Limited of the United Kingdom of Great Britain and Northern Ireland (“the United Kingdom”), represented by Stobbs IP Limited, the United Kingdom.
The Respondent is Alireza Sarpoulaki of the Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2018. On November 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 16, 2018, 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 November 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2018.
The Center appointed John Swinson as the sole panelist in this matter on December 17, 2018. 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 O2 Worldwide Limited, the IP holding company of the O2 group of telecommunications companies founded in the United Kingdom in 2001. The Complainant is extremely well-known in the telecommunications sector and, according to the Complaint, the O2 brand has been ranked as one of the top 155 most valuable brands in the world.
The Complainant owns a number of registered trade marks for, or incorporating, the term O2, including United Kingdom registered trade mark number 2264516, filed on March 19, 2001 and registered on June 7, 2002 (the “Trade Mark”).
The Respondent is Alireza Sarpoulaki of “Oxygen Mobile O2TEL”. The Respondent did not file a response, and consequently little information is known about the Respondent.
The Disputed Domain Name was registered on December 16, 2013. The content of the website at the Disputed Domain Name is not in English. However, it features an “O2” logo, and appears to offer mobile devices for sale. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions:
Identical or Confusingly Similar
The Disputed Domain Name is confusingly similar to the Trade Mark. The term “tel”, which is a common abbreviation for “telephone”, is descriptive of the services offered by the Complainant.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent appears to be using the website at the Disputed Domain Name to offer mobile phones for sale under the name O2tel. On viewing this website, consumers are likely to believe it is associated with the Complainant.
The Respondent is not commonly known by the Disputed Domain Name. The Respondent is known as “Oxygen Mobile”.
Registered and Used in Bad Faith
There is no reason for the Respondent to register the Disputed Domain Name other than to capitalize on the reputation of the Complainant and the Trade Mark, and to misleadingly divert consumers to the website at the Disputed Domain Name. By 2004, the Complainant had established a substantial reputation in the Trade Mark. It is inconceivable that the Respondent was not aware of the Complainant at the time the Disputed Domain Name was registered.
The Respondent presents its “O2” logo in the same way as the Complainant (with the “2” sitting below the “O”), and uses blue and white branding which are colors associated with the Complainant. It is reasonable to assume that the Respondent intentionally registered the Disputed Domain Name for commercial gain, by creating a likelihood of confusion as to the source of the Disputed Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 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.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
The Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s lack of a formal Response. A. 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 a trade mark in which the Complainant has rights.
Generally, the test for identity or confusing similarity involves a side-by-side comparison of the domain name and the trade mark to assess whether the trade mark is recognizable within the domain name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In this case, the Respondent has combined the Trade Mark with the term “tel”. As the Complainant submits, “tel” is an abbreviation of terms commonly associated with the Complainant and its business, such as “telephone” or “telco”.
The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy. B. 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 considers that the Complainant has made out a prima face case. This finding is based on the following:
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The website at the Disputed Domain Name features an “O2” logo and offers for sale mobile devices. The Respondent is using the Trade Mark in the Disputed Domain Name to offer goods and services similar to those offered by the Complainant. This use is not bona fide.
- The Respondent is not commonly known by the Trade Mark or the Disputed Domain Name. According to the registrant details for the Disputed Domain Name, the Respondent provided as organization name “Oxygen Mobile O2TEL”. However, there is no evidence that the Respondent is commonly known by “O2TEL”. The Respondent has not provided any evidence that such a business actually exists in Iran.
- The Respondent is not making a noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Respondent is clearly intending to derive revenue from the website at the Disputed Domain Name.
The Respondent had the opportunity to provide evidence of his rights or legitimate interests in the Disputed Domain Name, or that O2TEL is a legitimate business in Iran and the Respondent is commonly known by this name, but did not do so. Even if the Respondent had answered, the Panel notes that the nature of the Disputed Domain Name, and the way it has been used, would suggest affiliation or association with the Complainant, being a case where the Respondent’s use of the Disputed Domain Name, as described, would not be considered “faire”. As such, the Complainant succeeds on the second element of the Policy. C. 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 Panel accepts that the Complainant is an internationally well-known telecommunications services provider. The Complainant’s registration of the Trade Mark predates the registration of the Disputed Domain Name by over 10 years.
Given the use the Respondent is making of the Disputed Domain Name (i.e., offering for sale telecommunications products), the Panel considers it highly likely that the Respondent registered the Disputed Domain Name with the Complainant in mind.
On this basis, the Panel finds that the Disputed Domain Name was registered in bad faith.
The Panel finds that the Respondent registered and is using the Disputed Domain Name in an intentional attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of its website, location, or of a product or service on its website or location. The Respondent is using the Trade Mark in the Disputed Domain Name to trade off the Complainant’s reputation, and to misleadingly divert Internet users to his own website. This is evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy.
In light of the above, the Complainant succeeds 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: December 19, 2018
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