WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

O2 Holdings Limited v. PrivacyProtect.org, Domain Admin / Private Registrations Aktien Gesellschaft, Domain Admin

Case No. D2013-1734

1. The Parties

The Complainant is O2 Holdings Limited of Slough, Berkshire, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom” or “UK”), represented by Stobbs, United Kingdom.

The Respondent is PrivacyProtect.org, Domain Admin of Nobby Beach, Queensland, Australia / Private Registrations Aktien Gesellschaft, Domain Admin of Kingstown, Saint Vincent and The Grenadines.

2. The Domain Name and Registrar

The disputed domain name <o2phones.com> (the “Domain Name”) is registered with PDR 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 October 7, 2013. On October 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 9, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 18, 2013 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 October 22, 2013.

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 amended Complaint, and the proceedings commenced on October 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2013.

The Center appointed Bruce E. O’Connor as the sole panelist in this matter on November 18, 2013. 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 Respondent has made no response to the Complaint. Given the default of the Respondent, the Panel is entitled to, and does, draw the inference that all reasonable and supported facts alleged in the Complaint are true. See paragraph 14(b) of the Rules.

The Complainant owns many registrations for the O2 brand (the “Trademark”). The earliest of these are:

These registrations cover “telecommunications instruments” and “telecommunications services”, and many other goods and services.

The Domain Name was first registered on September 4, 2001. The Domain Name currently is being used in conjunction with a domain name for sale web site that includes click-through links to web sites of the Complainant and of competitors that offer phones for sale.

5. Parties’ Contentions

A. Complainant

Confusing similarity

The Complainant is the IP holding company of the O2 Group of telecommunications companies.

The Complainant submits extensive evidence of use and notoriety of the Trademark in association with telecommunications instruments and services in the United Kingdom, Ireland, Germany, the Czech Republic, and Slovakia. This evidence includes: incorporation of the Complainant’s predecessor in the UK on November 19, 2001; contemporaneous press releases and product announcements; launch and first use of the Trademark on May 1, 2002; in the ensuing years up to 2010, ever-increasing publicity, market share, sales turnover, advertising/marketing, public awareness, awards, and sponsorship; and, litigation acknowledging the Complainant’s rights in the Trademark.

The Complainant has established that it owns relevant prior trademark rights.

The Complainant’s earlier rights are confusingly similar to the Domain Name. The Complainant is a very large organisation whose core business is telecommunications. It is submitted that consumers viewing the site at the Domain Name will think that it is linked with the Complainant. The Complainant has conducted a Google search, which shows that when one searches for the term “o2 phones”, all of the links relate to the Complainant. This illustrates that if consumers were looking to buy a telephone from the Complainant, the term “o2 phones” would be a logical choice for them to use. Therefore, if they came across the web site at the Domain Name, consumers would be confused as to the origin of this site, and could think that it was the Complainant.

Bearing in mind the fact that the Complainant operates in the field of telecommunications and the term “phone” is descriptive in this field (a shortened version of “telephone”) and bearing in mind the fact that the evidence of use of the Trademark shows how famous it is in the telecommunications field, it is clear that the Domain Name is confusingly similar to the Trademark.

Lack of rights or legitimate interests

The Respondent’s name does not appear to relate to the Domain Name in any way.

Respondent’s web site at the Domain Name shows references to the Complainant, and also to competitors of the Complainant, and shows a number of links which were bound to be confusing to the average consumer. Whilst the Respondent does not appear to be running a business through the Domain Name, it is operating a click-through site, which is likely to be generating revenue for the Respondent. Consumers visiting this site could click on a competitor of the Complainant, and business could be being diverted away. The Complainant has not consented to any of the links on the site.

The information provided above suggests that there is no legitimate interest in the Domain Name. If there had been a legitimate interest there would be a genuine business operating from the Domain Name.

Bad faith registration and use

The Complainant believes that there is no legitimate reason to register the Domain Name other than to capitalise on the reputation of the Trademark around the world. As such the Complainant submits that the Domain Name must have been acquired primarily for the purpose of selling, renting, or otherwise transferring its registration 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 Domain Name. The Respondent appears to have no actual interest in the Domain Name and so this is a reasonable assumption to draw bearing in mind the rights identified in this Complaint, which pre-date the registration of the Domain Name.

Further, the Complainant submits that the Domain Name could have been acquired for the purpose of selling, renting, or otherwise transferring its registration 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 Domain Name. It would not be far fetched for the Respondent to try to sell the Domain Name to the Complainant for a large sum of money in order to stop running this site under the Domain Name. The Respondent appears to have no legitimate interest in the Domain Name and so this is a reasonable assumption to draw bearing in mind the rights identified in this Complaint.

Furthermore, it would not be far fetched to think that the Respondent may have acquired the Domain Name in order to sell it to another party, a “scammer” or to a competitor of the Complainant for a large amount of money. In view of the substantial goodwill in the Trademark this is a domain name which could fetch a large amount of money.

In addition, as discussed, “phones” are a key part of the Complainant’s business, being a telecommunications provider, and therefore it is plain that registration of the Domain Name would prevent the Complainant from reflecting the mark in a corresponding domain name for such services, and as such it is a reasonable presumption to assume that the Domain Name was registered primarily for the purpose of disrupting the business of the Complainant.

In addition, bearing in mind the rights of the Complainant it is impossible to imagine how any use of the Domain Name would not cause confusion to any relevant consumer. Any average consumer familiar with the Trademark would assume such a domain name was related to the provision of telephones by the Complainant, and so would assume that the business provided under the Domain Name was formerly connected with the Complainant. As such it is a reasonable assumption that the Respondent intentionally registered the Domain Name to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant 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.

As a result of all this the Complainant submits that it is plain that this registration was registered and is being used in bad faith.

The fact that initial use of the Domain Name included links to the Complainant’s own services as well as to services of competitors shows that the Domain Name was registered with an intention either to confuse consumers and direct them to their own website for their benefit, or to obtain a monetary advantage specifically because of the reputation and rights owned by the Complainant in the Trademark. The Respondent will have gained through click-through income from the relevant links and there is no reason for any consumers to go to the website other than because of the reputation and rights owned by the Complainant.

The Complainant would also like to raise the fact that in general, domain names are registered for a period of one year, and therefore the Domain Name has been renewed numerous times. The Complainant is aware that UDRP panels taking decisions on domain names have found the even if the original Domain Name was not registered in bad faith, it can in certain circumstances become a registration subsequently used in bad faith. It is the Complainant’s contention that the Domain Name was registered and applied for in bad faith, in view of the fact its first registration post-dates the Complainant’s registrations. However, should it be found for any reason that this is not the case, the Complainant submits due to the notoriety of the Trademark around the world that any subsequent re-registration/renewal of the Domain Name has been in bad faith. The Respondent has links to the Complainant and competitors of the Complainant on its site, and therefore can in no way claim not to know of the reputation of the Complainant.

On this basis there is a reasonable presumption that the Domain Name was registered specifically to gain because of the reputation of the Complainant, or deliberately to attract for commercial gain consumers on the basis of the Complainant’s rights.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the Domain Name, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that:

(i) the Domain Name is identical or confusingly similar to the Trademark; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established rights in the Trademark, by reason of its registrations cited above.

The Domain Name differs from the Trademark only by the addition of the term “phones” and the generic Top-Level Domain (“gTLD”) “.com”. These differences do not distinguish the Domain Name. The term “phones” is generic for the products sold by the Complainant under the Trademark. Much of the evidence of use of the Trademark conjoins it with the term “phones”. And it is well established that the addition of a gTLD does not distinguish a domain name from a trademark.

The Panel finds that the Domain Name is confusingly similar to the Trademark, and that the Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists three circumstances in particular, but without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice 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 and services; or

(ii) the respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; 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.

The Panel finds that the Complainant has made a prima facie showing that the Respondent does not come under those circumstances.

Notice of this dispute occurred upon the transmission of the Complaint to the Respondent.

Prior to that time, there is no evidence of any good faith use of the Domain Name by the Respondent. Rather, the Respondent’s sole use has been in conjunction with a domain name for sale web site that includes unauthorized click-through links directing Internet users to the Complainant and to the products of the Complainant and its competitors. The Respondent’s true name is unknown, being protected by a privacy service. The Respondent’s use of the Domain Name is commercial. Under the circumstances, the Panel finds that none of the circumstances enumerated in paragraph 4(c) of the Policy apply.

Because the Respondent has not made any response to the Complaint, the Complainant’s prima facie showing meets the Complainant’s burden of proof under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The circumstances of paragraph 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under Policy paragraph 4(a)(iii) can be established.

Paragraph 4(b) of the Policy reads:

[T]he following circumstances, in particular but without limitation, 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 on-line 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 each of the circumstances listed in Policy paragraph 4(b), or otherwise, the Complainant must establish that the Respondent intentionally and actively registered and used the Domain Name in bad faith as provided under the Policy. And, the Respondent must have known or should have known of the Trademark.

Lack of rights or legitimate interests under Policy paragraph 4(a)(ii) does not automatically translate into a finding of bad faith under Policy paragraph 4(a)(iii). A sufficient showing under Policy paragraph 4(a)(iii) generally requires more than assertions of bad faith.

Many of the contentions made by the Complainant illustrate this latter point. These contentions are full of qualified words and phrases, such as “believes”, “must have been”, “appear”, “could have been”, “not be far fetched”, “could fetch”, and “would assume”. These assertions are nothing more than speculation and do not prove bad faith registration or bad faith use.

The Panel finds that the Trademark is a well-known mark. The Panel’s finding is supported by the evidence introduced by the Complainant, and is shared by previous UDRP panels (recent examples are O2 Holdings Limited v. registerwebsite.org / Domain ID Shield Service Co, Limited, WIPO Case No. D2013-1007 and O2 Holdings Limited v. Hu Yanlin, WIPO Case No. D2012-1078). That status of notoriety has been afforded for many years (see O2 Holdings Limited v. Guen-Tea Park, WIPO Case No. D2005-0588), and certainly prior to the current use of the Domain Name.

Using a domain name that incorporates a well-known mark, at a website that includes unauthorized and presumed profitable links to not only the complainant and its products but also to a complainant’s competitors, has long been recognized as bad faith use based on likelihood of confusion to the benefit of the respondent and the detriment of the complainant. Especially is that the case here where the Respondent’s website includes only links and information related to the products of the type sold by the Complainant and its competitors. The Panel finds that the Respondent is using the Domain Name in bad faith, especially under the provisions of paragraph 4(b)(iv) of the Policy.

Turning to bad faith registration, the Panel notes that the Domain Name was registered (in September 2001) before incorporation of the Complainant’s predecessor (in November 2001), before the initial publicity (in October 2001) and first use (in May 2002) of the Trademark, and before the first registration (in July 2002) of the Trademark. Such facts could cause a panel to find that the complainant has not proven registration in bad faith.

But, the Panel is justified in extending its finding of bad faith use to bad faith registration. Registration of the Domain Name and the Complainant’s acquisition of rights in the Trademark were concurrent (applications for registration of the Trademark were first filed in March and May 2001, before registration of the Domain Name); the Trademark is well-known and has been so for many years; and there is no evidence as to when the Respondent acquired the Domain Name, in that the identity of the Respondent is masked by a privacy service. And, the Respondent has submitted no evidence to defend itself.

A previous panel in a proceeding involving this very Trademark said it best:

If the Respondent’s use of the Domain Name is caught by paragraph 4(b)(iv) of the Policy, as the Panel has found to be the case, that bad faith use may provide sufficient evidence, in the absence of any evidence to the contrary, that the Domain Name was also registered in bad faith (see the decision of the majority of the panel in A Natterman & Cie GmbH and Sanofi-Aventis v. Watson Pharmaceuticals Inc., supra, at page 7: “Thus the abuse of a domain name as specified in paragraph 4(b)(iv) of the UDRP is evidence of bad faith registration and use but is not conclusive. It may be rebutted by contrary evidence that the registration was in fact made in good faith”). There was no contrary evidence in this case. O2 Holdings Limited v. Sarang Hodjati,WIPO Case No. D2010-1887.

The Panel finds that the Complainant has met its burden of proof under paragraph 4(a)(iii) 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 Domain Name <o2phones.com> be transferred to the Complainant.

Bruce E. O’Connor
Sole Panelist
Date: December 2, 2013