WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Oxygen Media, LLC v. Primary Source

Case No. D2000-0362

 

1. The Parties

Complainant is Oxygen Media, LLC, a New York corporation located in New York, New York, USA.

Respondent, Primary Source, appears to be a business located in Berkeley, California, USA.

 

2. The Domain Name(s) and Registrar(s)

The domain name at issue is <0xygen.com> (with the first character being the number zero).

The registrar is Register.com, Inc., New York, New York, USA

 

3. Procedural History

This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").

The complaint was filed on May 1, 2000. The Respondent has been notified of the complaint, but has filed no response. Mark V.B. Partridge was appointed as single panelist on June 6, 2000.

 

4. Factual Background

Complainant is a media company founded in 1998. Complainant operates a web site at <oxygen.com>. That domain name was registered on September 10, 1998. Complainantís OXYGEN mark has by the subject of extensive advertising and media attention, including a prominent commercial announcing the launch of the Oxygen cable television network, which aired during Super Bowl XXXIV. Complainant has filed several applications to register the mark OXYGEN, but none has matured to registration. The earliest application was filed July 14, 1998. Complainant has also acquired third party rights dating back to 1995 in the marks OXYGEN, OXYGEN FILMS, O2 and O2 FILMS.

Respondent registered the domain name <0xygen.com> on December 29, 1999. On March 28, 2000, respondent contacted Complainant by email with an unsolicited offer to sell the domain name for $4900.00. The domain name is now listed for sale by auction at www.greatdomains.com, where supporting text states: "soon to be the nets [sic] biggest porn site."

 

5. Partiesí Contentions

Complainant contends that Respondent has registered and used the domain name <0xygen.com> to profit by reselling the domain name registration to Complainant.

Respondent has failed provide any response or evidence to rebut Complainantís contentions.

 

6. Discussion

To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to prove each of the following:

(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2) that the respondent has no rights or legitimate interest in the domain name; and

(3) the domain name has been registered and used in bad faith.

A. Similarity Between Domain Names and Trademark

As a result of extensive publicity, it appears that Complaint established common law trademark rights in the mark OXYGEN prior to Respondentís registration of its confusingly similar domain name. The addition of .com is not a distinguishing difference. The substitution of the digit zero for the letter "o" appears calculated to trade on Complainantís name by exploiting likely mistake by users when entering the url address.

B. Respondentís Legitimate Interest In Domain Names.

Here, respondent has submitted no evidence of any demonstrable plan to use the domain name in connection with a bona fide offering of goods or services. There is no evidence that it has ever been known by the name, or that it has made noncommercial or fair use of the domain name. Indeed, one struggles without success to think of any legitimate purpose for registering a domain name based on typographically erroneous variation of Complainantís well-known mark. The only apparent purpose would be to trade on mistakes by users seeking Complainantís web site.

C. Bad Faith Registration and Use

Under Paragraph 4(b)(1) of the Policy, evidence of bad faith registration and use includes circumstances indicating the domain name was registered for the purpose of resale to the trademark owner or competitor for profit.

The evidence regarding Respondentís efforts to sell the domain name for profit, demonstrate that this is a blatant case cybersquatting in violation of Paragraph4(b)(1) of the Policy. My finding of bad faith use and registration is also supported by evidence that Respondentís contact details are false, Telstra Corp. Ltd. v. Nuclear Marshmallows, ICANN Case No. D2000-0003 (WIPO February 18, 2000), and by the threat to use the domain name to direct traffic to a porn site, Hasbro, Inc. v. Internet Ent. Group, Ltd., 1996 WL 84853 (W.D. Wash. Feb. 9, 1996).

 

7. Conclusion

I conclude that (a) the domain name <0xygen.com> is confusingly similar to Complainantís mark OXYGEN, (b) Respondent has no rights or legitimate interest in the domain name, and (c) Respondent registered and used the domain name in bad faith. Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <0xygen.com> be transferred to Complainant.

 


 

Mark V. B. Partridge
Presiding Panelist

Date: June 19, 2000