The Complainant is O2 Worldwide Limited of London, the United Kingdom, represented by Stobbs IP Limited, the United Kingdom.
The Respondent is Domains By Proxy, LLC of Arizona, United States of America (“United States”) / Rodrigo P Braga, Ypse IT Solutions, of São Paulo, Brazil. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2019. On January 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 22, 2019, 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. The Center sent an email communication to the Complainant on January 24, 2019, 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 24, 2019.
On January 24, 2019, the Respondent sent an email to the Center offering the Disputed Domain Name for sale. On January 28, 2019, the Complainant requested the suspension of the procedure for 30 days for purposes of settlement discussions concerning the Disputed Domain Name. The procedure was suspended by the Center until February 28, 2019. The proceeding was reinstituted as of March 1, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2019. The Respondent did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on March 25, 2019.
On March 25, 2019, the Complainant sent an email to the Center asking for confirmation that the Respondent has not submitted any Response. On March 28, 2019, the Complainant submitted by email an additional statement for consideration by the Panel.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on March 29, 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, O2 Worldwide Limited, is the intellectual property holding company of the Telefónica Group, a multinational group of telecommunications and digital communications companies providing broadband and (mobile) telephony services around the world. Several subsidiaries of the Complainant’s group trade under the name of O2, such as Telefónica UK Limited, Telefónica Ireland, and Telefónica Germany.
The Complainant is the holder of a multitude of trademark registrations across various jurisdictions throughout the world for the mark O2, which it uses in connection with its hospitality business. The Complainant’s trademark portfolio includes, inter alia, the following trademark registrations:
- O2, word mark registered with the United Kingdom Intellectual Property Office (“UKIPO”) under No. UK00002271228 on September 27, 2002, in classes 38, 41, 42, and 45;
- O2, word mark registered with the European Union Intellectual Property Office (“EUIPO”) under No. 002109627 on May 13, 2004, in classes 9, 35, 36, 38, and 39;
- O2, word mark registered with the United States Patent and Trademark Office (“USPTO”) under No. 5,329,883 on November 7, 2017, in classes 9 and 38;
The Disputed Domain Name was registered by the Respondent on March 14, 2018, using a proxy service. The Disputed Domain Name currently resolves to a standard parking page operated by the Registrar displaying sponsored pay-per-click (PPC) links related to the Complaint and to (mobile) telephony services of competitors. 5. Parties’ Contentions A. Complainant
The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant also claims that the Respondent has registered the Disputed Domain Name primarily to attract for commercial gain, by earning PPC revenue, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark 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. The Complainant further contends that there is no plausible future active use of the Disputed Domain Name by the Respondent that would be legitimate. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions.
In the course of the proceedings, the Respondent sent four informal communications to the Center, the first three of which were identical. In these informal communications, the Respondent contends that it had registered the Disputed Domain Name not to target the Complainant but in relation to the legitimate business of one of its subsidiary companies, O2 SPORTS. The Respondent thus contends to have a legitimate interest in the Disputed Domain Name. The Respondent further claims that there are a multitude of entities who have registered a trademark consisting of the sign O2 and that the Complainant cannot monopolize its rights on that sign. Lastly, the Respondent indicated in its informal communications that it was willing to sell the Disputed Domain Name for a “reasonable amount”. 6. Discussion and Findings
6.1. The Complainant’s Supplemental Filing
On March 28, 2019, after the commencement of the Panel Appointment, the Complainant filed a supplemental submission with the Center for consideration by the Panel.
The Rules provide for the submission of the Complaint by the Complainant and the Response by the Respondent. No express provision is made for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel.
Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of Supplemental Filings (including further statements or documents) received from either Party. Accordingly, it will be in the sole discretion of the Panel to determine whether to consider and/or admit the Supplemental Filing in rendering its decision, and whether to order further procedural steps, if any.
When submitting an unsolicited supplemental filing, the Complainant should clearly show the relevance of the supplemental filing to the case and why it was unable to provide the information contained therein in its complaint (e.g., owing to some “exceptional” circumstance) (Seesection 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present case, the Complainant’s unsolicited Supplemental Filing was solely used to reiterate certain arguments provided in its initial Complaint and to refute claims made by the Respondent in its informal communications to the Center. While the Complainant contends that during the suspension of the proceedings the Respondent had made an unsolicited offer to sell the Disputed Domain Name to the Complainant for EUR 17,000, the Complainant does not provide any proof to support this claim. Accordingly, the Panel, having reviewed the Supplemental Filing by the Complainant, finds that there are no exceptional circumstances or relevant facts to allow the unsolicited Supplemental Filing submitted by the Complainant. Therefore, the Panel will not take the Complainant’s Supplemental Filing into consideration.
6.2. Substantive Issues
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.
Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(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.
The Panel will therefore deal with each of these requirements. A. Identical or Confusingly Similar
To prove this element, the Complainant must first establish that there is a trademark in which it has rights. The Complainant has clearly established that there are trademarks in which it has rights. The Complainant’s O2 mark has been registered and used in connection to the Complainant’s telecommunications business.
The Panel notes that the Disputed Domain Name incorporates the Complainant’s O2 trademark in its entirety.
The Panel is of the opinion that the addition of generic Top Level Domains can be disregarded when comparing the similarities between a domain name and a trademark (see Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck,WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah,WIPO Case No. D2014-0269). Therefore, the Panel considers the Disputed Domain Name to be identical to the Complainant’s O2 trademark.
Accordingly, the Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Complainant considers that the Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and/ or services and that the Respondent has not made a legitimate non-commercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
In its informal communications with the Center, the Respondent submits that he has registered the Disputed Domain Name solely in relation to the legitimate business of one of its subsidiary companies, O2 SPORTS, which the Respondent claims is widely known in Latin America, with more than 20 brands and an expected yearly revenue of USD 10 million in the coming years.
However, the Respondent fails to substantiate these claims and does not provide any proof of affiliation with the Brazilian O2 SPORTS company or any trademark rights relating to the sign O2. Limited factual research conducted by the Panel reveals that the O2 SPORTS company is a local bicycle shop in São Paulo, Brazil that does not appear connected to the Respondent.
The Panel further notes that the Respondent itself has not been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark rights. The WhoIs information related to the Disputed Domain Name indicates that the Respondent is Rodrigo P Braga, Ypse IT Solutions. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.
Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, the Respondent is not making any use of the Disputed Domain Name in connection with an active website. Neither the Respondent nor the facts of the case indicate any demonstrable preparations to use the Disputed Domain Name. The Disputed Domain Name currently refers to a parking page operated by the Registrar with sponsored links related to the Complainant and to products and services of third parties which are either competing with or closely related to the products and services offered by the Complainant, such as mobile telephony plans.
The passive holding or non-use of domain names is, in appropriate circumstances, evidence of a lack of rights or legitimate interests in the domain names (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; American Home Products Corporation v. Ben Malgioglio,WIPO Case No. D2000-1602; Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci,WIPO Case No. D2000-1244). Additionally, there are no indications that the Respondent has made any efforts to suppress the PPC advertising on the website. Considering that the sponsored PPC links displayed on the website connected to the Disputed Domain Name compete with and capitalize on the reputation and goodwill of the Complainant’s mark, the Panel finds that this cannot be considered as a fair use of the Disputed Domain Name (see section 2.9 of WIPO Overview 3.0).
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
The Respondent has incorporated the Complainant’s O2 mark in its entirety in the Disputed Domain Name and is not presently using the Disputed Domain Name other than in connection with a parking page provided by the Registrar. The passive holding of a domain name may amount to bad faith when it is difficult to imagine any plausible future active use of a domain name by the respondent that would be legitimate and would not interfere with the complainant’s well-known mark (see Inter-IKEA v. Polanski,WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh,WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, supra). Additional factors to support a finding of bad faith in relation to the passive holding of a domain name include the degree of distinctiveness or reputation of the Complainant’s mark, the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and the Respondent’s concealing its identity or use of false contact details (see section 3.3 of WIPO Overview 3.0).
In the present case, the Panel is of the opinion that the Complainant’s O2 trademark is distinctive and widely used, which makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Name by the Respondent. Although the Disputed Domain Name could refer to the generic meaning of the term O2, namely the chemical compound “dioxygen”, both the gTLD “.company” and the sponsored PPC links indicate that the Disputed Domain Name was registered to target the Complainant’s business and its O2 mark. Website content targeting the Complainant’s mark, e.g., through links to the Complainant and/or its competitors, may indicate that the Respondent’s intent in registering the Disputed Domain Name was in fact to profit in some fashion from, or otherwise exploit, the Complainant’s trademark (see section 3.1.1 of the WIPO Overview 3.0).
While the intention to earn click-through-revenue is not in itself illegitimate, the Panel finds that the use of a domain name that is identical to a trademark to obtain click-through-revenue is found to be bad faith use (see Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258; L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623). The fact that the PPC links are automatically generated by a third party, namely the Registrar, cannot discharge the Respondent of any responsibility for the content appearing on the website connected to the Disputed Domain Name under its control (see section 3.5 of the WIPO Overview 3.0).
The Panel finds that by using the Disputed Domain Name incorporating the Complainant’s trademark in connection with a website containing sponsored links to products and services relating to the Complainant and its telecommunication services, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.
Additionally, by using a proxy registration service, the Respondent has taken active steps to conceal its identity (see Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696, where it was held that the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive and irresponsible conduct).
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last 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.
Flip Jan Claude Petillion
Sole Panelist
Date: April 10, 2019
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