WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

O2 Holdings Limited v. ICS INC. / PrivacyProtect.org

Case No. D2012-1873

1. The Parties

The Complainant is O2 Holdings Limited of Slough, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Ipulse IP Ltd, United Kingdom.

The Respondent is ICS INC. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / PrivacyProtect.org of Nobby Beach, Australia.

2. The Domain Name and Registrar

The disputed domain name <o2cz.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2012. On September 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 21, 2012, 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 October 3, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent a notification that the Complaint was administratively deficient. The Complainant filed an amended Complaint on October 5, 2012.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2012.

The Center appointed Andrew D.S. Lothian as the sole panelist in this matter on November 8, 2012. 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.

Domain Name Expiry

On September 20, 2012, the Center sent an email communication to the Registrar, noting that the disputed domain name was set to expire on September 21, 2012, and requesting the Registrar to confirm whether the disputed domain name would be placed in Registrar LOCK status, and that the disputed domain name would remain in such status after the lapse of the expiry date until the UDRP proceedings are concluded, and whether any action was required by the parties to keep the disputed domain name under Registrar LOCK so that the administrative procedure could continue as required under the UDRP.

On September 21, 2012, the Registrar confirmed that a Registrar lock was applied to the disputed domain name and would continue to be maintained only until the expiry of the disputed domain name. After expiry, either the Complainant or the Respondent could renew the disputed domain name to keep it under Registrar LOCK so that the administrative procedure could continue as required under the UDRP. On the same day, the Center informed the parties that certain action needed to be taken by one of the parties to ensure that the disputed domain name remained active (i.e. not expired) so that the administrative procedure could continue as required under the UDRP. On October 1, 2012, the Complainant indicated that it did not wish to renew the disputed domain name and wanted to proceed with the Complaint. On October 2, 2012, the Center acknowledged receipt of the Complainant’s email communication, noting the possible consequences of non-renewal of expired or deleted domain names under the UDRP.

On this subject, the Panel has reviewed the comprehensive and considered opinion of the panel in the case of O2 Holdings Limited v. PrivacyProtect.org / StudMedia, Illya Taryanik,WIPO Case No. D2011-1787. That case involves the same Complainant as the present case and includes similar circumstances in that, by the date of the decision, the relative domain name had already expired and the Complainant had declined to renew it notwithstanding an invitation by the Center to do so. The Panel agrees with the panel’s observation in that case that the Complainant’s refusal to renew an already expired domain name, in circumstances where it is seeking transfer thereof under the Policy, produces an unsatisfactory result in that there may be limited practical utility in ordering a transfer of an expired domain name which is in any event about to be cancelled by the registrar due to non-renewal.

The Panel notes that both in the present and previous case the Center informed the Complainant that the possible consequences of non-renewal could include the deemed withdrawal of any expired domains from the relative complaint, or the dismissal (at the sole discretion of the Panel) of those elements of the relative complaint that were directed to any such expired domain names. In each case, despite being on notice of these possible consequences, the Complainant nevertheless insisted that it would not renew the expired domain names. This seems to the Panel to be a rather curious position for a complainant to adopt in circumstances where it is seeking the transfer of those domain names as a remedy under the Policy.

In the present case, this Panel is content to adopt the pragmatic view of the panel in O2 Holdings Limited, supra, that if a complainant seeks the remedy of transfer under the Policy in respect of an expired, but not yet cancelled, domain name, and in the event of that complainant prevailing in the administrative proceeding, a panel may order transfer “if practically possible”, with cancellation being ordered in the alternative. Should it come to pass that any such domain name is deleted by operation of the Expired Domain Deletion Policy (EDDP) before the date on which the registrar is to implement the panel’s decision pursuant to paragraph 4(k) of the Policy, then the panel’s decision will be of no effect.

The Complainant, and other parties in similar circumstances, would do well to remind themselves that it is a matter wholly within the panel’s discretion whether or not to order transfer or cancellation of an expired domain name in the manner of the decision in O2 Holdings Limited, supra, or instead to dismiss the complaint insofar as relating to such a domain name depending on the facts of the case. It would therefore be unwise in similar future circumstances for a complainant to assume that all panels will necessarily agree with the view of the panel in O2 Holdings Limited, supra. This Panel considers that the most prudent and sensible course for a complainant which is seeking transfer of an imminently expiring domain name as its remedy under the Policy is to renew such domain name in the hands of its current registrar if the respondent declines to do so, thus avoiding the presentation of this particular predicament to a panel which may well consider that the more appropriate disposal is to dismiss the complaint as outlined above.

4. Factual Background

The Complainant is the intellectual property holding company of the O2 Group of telecommunications companies. The Complainant’s history dates back to 2001 when BT Cellnet was the subject of a de-merger from British Telecom and its goodwill and customer base of several million people were transferred to O2 Holdings Limited. In addition to the United Kingdom, the Complainant’s group of companies now has integrated fixed/mobile businesses in the Czech Republic, Germany, Ireland and Slovakia, each of which uses “O2” as their consumer brand.

The Complainant’s evidence indicates that it is a significant player in each of its chosen markets. The Complainant’s turnover and advertising spend are substantial. For example, in the United Kingdom in 2008 the Complainant’s revenue was GBP 7.052 million and its corresponding advertising spend was GBP 75,824,700. The Complainant occupied the 70^th position in the “Millward Brown Optimor BrandZ Top 100” for 2010, an index of the most valuable global brands determined by dollar value, based on a value of USD 10.593 million. The Complainant has been recognized by a variety of other brand awareness organizations as a major European brand.

The Complainant’s use of the “O2” brand in the Czech Republic dates from 2006. The Complainant’s service revenues in the Czech Republic reached EUR 2.581 million in 2008.

The Complainant provides evidence demonstrating that it holds a portfolio of registered trademarks in which the “O2” brand features as the dominant element (for example, Community Trademark no. 002109627 registered on May 13, 2004 for the word mark O2 in classes 9, 35, 36, 38, and 39) and furthermore that the Complainant has taken ultimately successful action in the past against third parties both by way of domain name disputes and litigation in order to protect the said brand.

The disputed domain name was created on September 21, 2011. It expired on September 21, 2012 and has not been renewed as at the date of this Decision. Prior to its expiry, the disputed domain name pointed to an online bingo website named “Wink Bingo”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to a trade mark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

The Complainant narrates the terms of its extensive trademark portfolio containing marks for or including the element “O2” and adds that the Czech Republic is one of the key operating territories for the Complainant, in which the Complainant runs its operating business through the website “www.o2.cz”. The Complainant asserts that consumers looking for the Czech business of the Complainant will likely utilise the O2 and CZ elements to locate them. The Complainant submits that consumers viewing the disputed domain name will think that it is linked with the Complainant. The Complainant produces a Google search for the term “O2 cz” which demonstrates that all the links relate to the Complainant. The Complainant states that the term “O2 cz” would be a logical choice for its consumers and that if they came across the disputed domain name they would be confused as to its origin and could think that it was the Complainant’s domain name.

The Complainant asserts that the Respondent’s name does not appear to relate to the disputed domain name in any way and notes that the website to which the disputed domain name is pointed does not appear to have anything whatsoever to do with the disputed domain name itself. The Complainant submits that there appears to be no legitimate interest or due cause relating to the branding “O2 CZ” or “O2” in the context of the business at the website associated with the disputed domain name. The Complainant asserts that consumers visiting the said site would be surprised, but may assume that there is some connection between this operation and the Complainant. The Complainant states that if there had been a legitimate interest there would be a genuine business operating from the disputed domain name.

The Complainant believes that there is no legitimate reason to register the disputed domain name other than to capitalize on the reputation of the Complainant’s brand around the world. As such the Complainant submits that the disputed domain name must have been acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out of pocket costs directly related to the disputed domain name. The Complainant asserts that it would not be far fetched for the Respondent to try to sell the disputed domain name to the Complainant for a large sum of money in order to stop running the associated website. The Complainant states that in view of the substantial goodwill which it has invested in the “O2” brand, the disputed domain name could fetch a large amount of money in a sale to a third party including a competitor of the Complainant and that it would not be far fetched to think that the Respondent may have acquired the disputed domain name for the purpose of sale to such third party.

The Complainant submits that in light of the Google search for the term “O2 cz”, “cz” is a relevant term to the Complainant and that it is impossible to imagine that the adoption of the disputed domain name was a coincidence in this regard. The Complainant states that it is a reasonable presumption to assume that the disputed domain name was registered primarily to disrupt the business of the Complainant.

The Complainant asserts that, bearing in mind its rights, it is impossible to imagine how any use of the disputed domain name would not cause confusion to any relevant consumer as any average consumer familiar with the “O2” brand would assume that the business provided under the disputed domain name was connected with the Complainant. The Complainant submits that it is a reasonable assumption that the Respondent intentionally registered the disputed domain name to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark 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 adds that the fact that the disputed domain name resolved to a commercial bingo website suggests that there was bad faith in attempting to gain income on the part of the Respondent through confusion with the Complainant’s “O2” brand which would draw visitors to the said website who might then take advantage of the services offered thereon.

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:

(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.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights in the trademark O2 based upon its extensive portfolio of registered rights. This trademark is reproduced in its entirety in the disputed domain name along with the two letters “cz”, which the Panel considers are wholly generic as they represent an abbreviation typically used to denote the Czech Republic. Numerous previous decisions under the Policy have found that the use of descriptive or generic words in addition to a trademark in a domain name do not prevent the domain name from creating a likelihood of confusion. One or more descriptive elements cannot remove the overall impression made on the public by the trademark which is the dominant part of the domain name (Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409). In addition, the Panel notes in the present case that the addition of the letters “cz” to the Complainant’s trademark also renders the disputed domain name very similar to the Complainant’s website address in the Czech Republic, namely “www.o2.cz” and this in the Panel’s view is likely to lead to even greater confusion.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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”.

The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case that the respondent has no rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating such rights or legitimate interests.

In the present dispute, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that the Respondent’s name does not appear to relate to the disputed domain name in any way, that the website to which the disputed domain name is pointed does not appear to have anything whatsoever to do with the disputed domain name itself, and that there appears to be no legitimate interest relating to the branding “O2 CZ” or “O2” in the context of the website associated with the disputed domain name. The burden of production accordingly shifts to the Respondent to demonstrate that it has rights or legitimate interests. The Respondent has chosen not to explain its conduct or to set out evidence of any rights or legitimate interests and thus has failed to rebut the prima facie case made by the Complainant. Furthermore, the Panel has been unable to conceive of any rights or legitimate interests which the Respondent might have had in the disputed domain name based upon its use as demonstrated by the Complainant.

In the above circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the second element under the Policy has been established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(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

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”

In the present case, the Complainant initially focuses on paragraph 4(b)(i) of the Policy, stating that it would not be far fetched for the Respondent to have registered the disputed domain name in order to try to sell it to the Complainant for a large sum of money in order to stop running the associated website. In the Panel’s view this averment falls very far short of a demonstration of registration and use in bad faith in terms of paragraph 4(b)(i) of the Policy. It amounts to mere conjecture on the Complainant’s part which is lacking any supporting evidence as to the Respondent’s primary intent in registering the disputed domain name.

Secondly, the Complainant makes a submission in terms of paragraph 4(b)(iii) of the Policy that because the disputed domain name contains “a relevant term” to the Complainant it is reasonable to infer that the disputed domain name was registered primarily to disrupt the Complainant’s business. The Panel again considers that the Complainant has provided insufficient evidence to demonstrate either that this was the Respondent’s primary purpose in registering and using the disputed domain name, or indeed that the Respondent is a competitor of the Complainant.

Thirdly, the Complainant makes a submission in terms of paragraph 4(b)(iv) of the Policy that the disputed domain name has been registered and used in bad faith because the Respondent has used the disputed domain name to intentionally attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. The Panel accepts this submission and considers that in light of the fame of the Complainant’s trademark and the close similarity between the Complainant’s website address in the Czech Republic and the disputed domain name, together with the fact that the disputed domain name has been used for a purpose which appears to have no relation to the terms “O2” and “CZ”, it is reasonable to infer that by using the disputed domain name, prior to its recent expiry, in the manner demonstrated by the Complainant, 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 mark as to the source, sponsorship, affiliation, or endorsement of the said website.

Accordingly, the Panel finds that the disputed domain name has been registered and used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.

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 <o2cz.com> be transferred (if practically possible) to the Complainant, but (if not), in the alternative, that the disputed domain name be cancelled.

Andrew D.S. Lothian
Sole Panelist
Date: November 22, 2012