Complainant is O2 Worldwide Limited, United Kingdom, represented by Stobbs IP Limited, United Kingdom.
Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
The disputed domain name <myo2account.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2020. On January 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 15, 2020, 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 Complainant on January 17, 2020 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 22, 2020.
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 Respondent of the Complaint, and the proceedings commenced on January 31, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 20, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 25, 2020.
The Center appointed Robert A. Badgley as the sole panelist in this matter on March 9, 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.
Complainant is the IP holding company for the O2 Group of telecommunications companies. The O2 companies are telecommunications providers, and are also active in the music and entertainment sectors. Complainant’s O2 brand was ranked as one of the top 180 brands in the world.
Complainant holds numerous trademark registrations for O2 and MY O2, including United States Patent & Trademark Office Reg. No. 3,848,986 for the mark O2 (registered September 14, 2010), and European Union Reg. No. 2358849 for the mark MY O2 (registered December 30, 2005).
The Domain Name was registered on October 25, 2019. The Domain Name resolves to a fairly basic website which contains various hyperlinks, such as “Mobile Money Transfer,” “Money Transfer Card,” and “Mobile Phone.” Complainant has annexed to the Complaint a previous decision under the UDRP (The Commissioners of HM Revenue and Customs v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-2068), in which the panel observed that this Respondent had been found in bad faith under the UDRP in at least 30 other cases.
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Panel concludes that Complainant has rights in the mark MY O2 registration demonstrated in the record. The Panel also finds that the Domain Name is confusingly similar to that mark. The Domain Name fully incorporates the MY O2 mark and adds the generic word “account.” This additional word does little or nothing to reduce the similarity between the MY O2 mark and the Domain Name.
Complainant has established Policy paragraph 4(a)(i).
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding to advance any legitimate basis for registering the Domain Name. It is undisputed that Complainant’s O2 mark is well known and that Respondent was not authorized to use that mark in a Domain Name or otherwise. Given Respondent’s known record as a serial cybersquatter, the Panel may easily presume, in the absence of any explanation from Respondent, that Respondent is up to her old tricks again.
Complainant has established Policy paragraph 4(a)(ii).
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the 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 mark 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 concludes that Respondent registered and used the Domain Name in bad faith. Given the renown of Complainant’s marks and Respondent’s history as a serial cybersquatter, the Panel finds it far more likely than not that Respondent had Complainant’s marks in mind when registering the Domain Name. Given Respondent’s pattern of preclusive registrations, the Panel finds Respondent in bad faith under the above-quoted paragraph 4(b)(ii).
Complainant has established Policy paragraph 4(a)(iii).
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 <myo2account.com> be transferred to Complainant.
Robert A. Badgley
Date: March 23, 2020
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