Complainant is O2 Worldwide, United Kingdom, represented by Stobbs IP Limited, United Kingdom.
Respondent is Domains By Proxy, LLC, United States of America (“United States”) / Martin Ulbrich, Germany. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2020. On January 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 2020, 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. Further, the Registrar also disclosed that the language of the Registration Agreement is German. Accordingly, on January 14, 2020, the Center sent an email to Complainant providing the registrant and contact information disclosed by the Registrar, and also inviting Complainant to submit a translated Complainant or arguments as to why the proceedings should be conducted in English. Similarly, on the same day, the Center invited Respondent to submit any arguments as to why the proceeding should be conducted in German. On January 14 and 16, 2020, Complainant filed two amendments to the Complaint addressing the registrant details disclosed by the Registrar and also providing arguments as to why the proceedings should be conducted in English. Respondent did not make any submissions regarding the language of the proceedings. The Center verified that the Complaint, together with the amendments to 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 Respondent of the Complaint, and the proceedings commenced on January 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 10, 2020. The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on February 13, 2020. 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 Complainant is the entity holding the intellectual property of the O2 Group of telecommunications companies. The companies within the O2 Group have been operating under the “O2” brand beginning in 2001 and currently offer mobile and fixed-line telephony services in the United Kingdom, Ireland, Germany, the Czech Republic, and Slovakia. Complainant provided a Witness Statement dated 2009 which indicated that Complainant’s companies enjoyed a large market presence at that time. Complainant states that its O2 mark has been ranked as one of the top 180 valuable brands in the world. Complainant is the proprietor of numerous trademark registrations in various countries including the word element “O2”, including the following: - United States Trademark No. 2231093 for O2 (word mark), registered on March 9, 1999, in class 9 (claiming a date of first use of September 28, 1996); - European Union Trademark No. 2109627 for O2 (word mark) registered on May 13, 2004, in classes 9, 35, 36, 38, and 39; and, - European Union Trademark No. 3732823 for MY O2 (word mark), registered on February 20, 2009, in classes 9, 38, and 41. Complainant operates its primary website at “www.o2.com”. The disputed domain name, Complainant’s contentions may be summarized as follows: Complainant has established its rights in the distinctive O2 mark through earlier registrations and use in many parts of the world. Complainant has also established rights in the mark MY O2, which is identical to the disputed domain name apart from the domain extension. Complainant’s earlier rights are identical or highly similar to the disputed domain name. The O2 mark has established a significant reputation with consumers, and a Google search reveals that results lead to sites operated by Complainant. Therefore, consumers viewing the disputed domain name will assume a connection with Complainant. Complainant does not believe that Respondent is known by the name “My O2”. The only reason for Respondent to select the disputed domain name is to make consumers believe there is a connection between Respondent and Complainant, and to benefit from Complainant’s reputation. The use of a proxy service to conceal Respondent’s identity further supports the contention that Respondent is not called “My O2”. Complainant’s trademark rights predate the creation of the disputed domain name. It is inconceivable that Respondent was not aware of Complainant’s trademark rights. Respondent has no legitimate interests in the disputed domain name. Respondent demonstrates bad faith by hiding its identity, failing to use the disputed domain name, and by selecting a domain name that causes confusion to the relevant consumer. The disputed domain name appears to have been registered primarily for the purpose of disrupting the business of Complainant by preventing Complainant from reflecting its own trademark in a domain name. Respondent registered the disputed domain name to attract for commercial gain consumers based on Complainant’s trademark rights. In requesting that the proceedings be conducted in English, Complainant states that the disputed domain name is in English and makes reference to words in the English language. “O2” is either the name of Complainant or the chemical formula for oxygen, and “my” is the English word meaning belonging to or associated with the user. Such a domain name composition indicates that Respondent understands English sufficiently to understand proceedings in English. Requiring proceedings to be conducted in German would violate paragraphs 10(b) and (c) of the UDRP Rules. Requiring Complainant to translate the Complaint and communications would be unduly unfair to Complainant in circumstances under which the domain is in English, and would cause undue delay to the proceedings. B. Respondent Respondent did not reply to Complainant’s contentions nor to its additional submissions in respect of the language of proceedings and registrant details. 6. Discussion and Findings A. Language of Proceedings The language of the Registration Agreement for the disputed domain name is German. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in the context of the particular circumstances, in accordance with the requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM,WIPO Case No. D2006-0334). The Panel has considered the relevant circumstances and finds as follows. First, it appears more likely than not that Respondent understands English, since the disputed domain name is made up of words in the English language. Second, the Panel accepts Complainant’s contention that requiring the proceedings to be translated into German would be a burden on Complainant and cause undue delay. The Panel notes that the Center duly notified Respondent (in both German and English) and that Respondent was given the opportunity to present its objection to the proceedings being held in English. Respondent failed to do so, nor did Respondent at any other time request that the proceedings be conducted in German, the language of the Registration Agreement. Taking all these circumstances into account, the Panel grants Complainant’s request that the proceedings be conducted in English. Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) Respondent has registered and is using the disputed domain name in bad faith. B. Identical or Confusingly Similar Complainant has provided evidence establishing that it has trademark rights in the marks O2 and MY O2 through registrations in jurisdictions around the world, including the United States and the European Union, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 3.0”), section 1.2.1. In comparing Complainant’s marks with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar with Complainant’s marks, since the disputed domain name is identical to Complainant’s MY O2 mark and contains the O2 mark in its entirety. The addition of the dictionary term “my” to Complainant’s O2 mark does not prevent a finding of confusing similarity. Section 1.7 of the WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”) to the disputed domain name does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder). Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy. C. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, 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) Respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. The circumstances stated in the Complaint indicate that Respondent has no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, which is identical to confusingly similar to Complainant’s O2 and MY O2 marks, cannot constitute fair use because it effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.1. The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name or is using Complainant’s trademark with permission of Complainant. The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Respondent, in failing to timely file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the disputed domain name. Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith The Panel finds that the evidence in the record demonstrates that Respondent chose the disputed domain name deliberately for the purpose of impersonating or attempting to create an association with Complainant. Complainant’s rights in the marks significantly predate the registration of the disputed domain name. The O2 and MY O2 marks are distinctive in respect of the goods and services for which they registered and used. The disputed domain dame contains Complainant’s marks in their entirety. The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith. Having established that the disputed domain name was registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the disputed domain name. Considering the totality of the circumstances, the Panel finds that the test for bad faith set out in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, has been met. In particular, the Panel finds that Complainant’s marks are highly distinctive, Respondent has failed to file any response or provide any evidence of actual or contemplated good faith use, Respondent concealed its identity through use of a privacy service, and it is highly improbable that the disputed domain name may be put to any good-faith use. In the view of the Panel, such circumstances, taken together, clearly indicate that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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 Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: February 28, 2020
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