The Complainant is O2 Worldwide Limited of Cambridge, United Kingdom, represented by Stobbs IP Limited, United Kingdom.
The Respondent is Vietnam Domain Privacy Services of Ho Chi Minh City, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with April Sea Information Technology Corporation (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2018. On December 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 25, 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. On January 21, 2019, the Center sent an email in English and Vietnamese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on January 22, 2019. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Vietnamese of the Complaint, and the proceedings commenced on January 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2019.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on February 25, 2019. 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 for the O2 Group of telecommunications companies, an affiliate of Telefónica UK Limited and affiliates in other European countries trading as “O2”. The United Kingdom company is the successor to BT Cellnet and is the second-largest mobile network operator in the United Kingdom. The O2 Group has diversified into entertainment and media offerings, and the O2 brand is associated as well with sponsorship of sports teams, events centers, music festivals, and television shows.
The Complainant holds numerous registered trademarks for O2 as a word mark and for figurative marks with “O2” as a prominent textual element, as well as for word marks and figurative marks consisting of “O2” combined with other words, in the United Kingdom, the European Union, and the United States of America. These include United Kingdom Trademark Number UK00002264516 (registered June 7, 2002) for O2 as a word mark, and United Kingdom Trademark Number UK00002284423 (registered February 6, 2004) and European Union Trademark Number 004757522 (registered June 4, 2010) for O2 ONLINE as a word mark. A previous UDRP panel found that the O2 Group had developed a “substantial reputation” in the United Kingdom, Ireland, Germany, the Czech Republic, and Slovakia since launching the O2 brand in 2002. O2 Holdings Limited v. Sarang Hodjati,WIPO Case No. D2010-1887 (the complainant in that proceeding was the predecessor intellectual property holding company then managing trademark rights for the O2 Group).
The Registrar, located in Viet Nam, confirmed that the Domain Name was registered in the name of a domain privacy service but did not identify the responsible individual or entity. The Registrar indicated that the current registrant registered or acquired the Domain Name on February 25, 2004. The Complainant received no response when it sent a letter to the address given for the registrant. The Center also received no replies to communications in this proceeding, and no Response was submitted.
The Domain Name resolves to an advertising portal in the English language headed only with the Domain Name. The page lists “Related Links” that are all topics relevant to mobile telecommunications, the Complainant’s core business, such as “Mobile Phones”, “O2 Mobile Phones”, and “O2 Tarife”. These topical buttons lead directly to what appear to be pay-per-click (“PPC”) advertising links to mobile service providers and retailers of mobile telephones and related products. The landing page and linked pages do not identify the operator of the website. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to its registered O2 and O2 ONLINE marks. The Complainant observes that the marks are well known and used by the Respondent without the Complainant’s permission, and that there is no evidence from the Respondent’s website that the Respondent is known by a corresponding name or has other legitimate interests in the Domain Name.
The Complainant infers that the Respondent registered and used the Domain Name in bad faith, exploiting the Complainant’s fame to misdirect Internet users for commercial gain through a PPC advertising portal and possibly hoping eventually to sell the Domain Name for a large sum to a competitor or “scammer”. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
Under paragraph 15(a) of the Rules, “a Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. A. Identical or Confusingly Similar
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
The Complainant indisputably holds registered O2 and O2 ONLINE trademarks. The Domain Name incorporates these marks in their entirety, inserting a hyphen that does not materially change the sense or appearance of the string. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is not a distinguishing feature. WIPO Overview 3.0, section 1.11.
Accordingly, the Panel finds the Domain Name confusingly similar to the Complainant’s registered trademarks for purposes of the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has grounded its prima facie case by establishing its trademark rights, confusing similarity, the lack of permissive or relevant generic use, and employment of the Domain Name only for a PPC advertising site leading to third parties in the Complainant’s industry and having nothing evidently to do with the unidentified Respondent. This is sufficient to shift the burden to the Respondent.
The Respondent has not come forward to assert any rights or legitimate interests in the Domain Name, and none are evident from a perusal of the Respondent’s website.
The Panel concludes that the Complainant has established the second element of the Complaint. C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following suggested in the Complaint (in which “you” refers to the registrant of the domain name):
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or …
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
It is disappointing that the Registrar has not identified the party that paid to register the Domain Name and has maintained the registration, according to the Registrar, for 15 years. The Panel notes that a review of archived screenshots of websites associated with the Domain Name over that period, accessible through the Internet Archive’s Wayback Machine, shows that the Domain Name has been used for advertising portals of varying design, often featuring PPC links for diverse third parties but always including those for companies in the mobile telecommunications industry.
The facts of the case fit the example of bad faith described in the Policy, paragraph 4(b)(iv). By the time the Respondent acquired the Domain Name, the Complainant’s O2 brand was well established in the telecommunications sector, and its O2 ONLINE mark was also in use, advertised, and registered. Both marks had commercial value by 2004, and it appears that the Respondent has been exploiting that value for PPC advertising revenue ever since.
It would be possible under different facts to use the Domain Name legitimately, for example in connection with content relevant to “O2” in its generic sense as the chemical symbol for oxygen. But the Respondent has not done that. Right from the beginning, the Domain Name has been used for third-party advertising unrelated to the generic sense of the string, much of it highly relevant to the trademark sense of O2 as relating to a prominent brand in mobile telephony. Even assuming that the specific links on the Respondent’s portal are selected by advertising software algorithms rather than consciously by the Respondent, the Respondent remains ultimately responsible for them, because the Respondent chose the Domain Name based on a well-established mark and allowed it to be used for PPC advertising over time. The Respondent rather than the software is accountable if the Domain Name worked as intended, exploiting the trademark of another by creating a false impression of sponsorship or association.
The logical inference of bad faith on the part of the Respondent is reinforced here by the Respondent’s persistent failure to identity itself on its website and in the domain name registration, even after notice of this dispute, and by its failure to reply to communications from the Complainant and the Center and to submit a Response in this Proceeding.
The Panel concludes that the Complainant has established the third element of the Complaint. 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 Domain Name be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Date: February 28, 2019
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