World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

O2 Holdings Limited v. Kent Cavern

Case No. D2011-0618

1. The Parties

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

The Respondent is Kent Cavern of Bakewell, India.

2. The Domain Name and Registrar

The disputed domain name <o2tele.org> (the “Domain Name”) is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2011. On April 7, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On April 7, 2011, eNom transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2011.

The Center appointed Michelle Brownlee as the sole panelist in this matter on May 4, 2011. 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 Complainant owns Community Trade Mark Registration No. 2109627 for the mark O2 in connection with telecommunications apparatus and services, advertising and financial services, and provision of information relating to transport and travel, Community Trade Mark Registration No. 2284818 in connection with Internet portal services and provision of access to the Internet and information services related to entertainment and sports, and a number of other registrations for the O2 trademark in the United States of America, United Kingdom of Great Britain and Northern Ireland and India in connection with related goods and services. The earliest of the Complainant’s registrations was filed in 2001 and issued in 2002.

The Domain Name was registered on September 22, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant is the IP holding company of the O2 Group of telecommunications companies. The O2 has become extremely well-known in the telecommunications sector, and also in the entertainment and music sectors. In a recent survey, the O2 brand was ranked as one of the top 100 most valuable brands in the world.

The Complainant contends that the Domain Name is confusingly similar to its O2 trademark because its O2 trademark is registered and used in connection with telecommunications services, and “tele” is an abbreviation for “telecommunications.” The Complainant also argues that the Respondent does not have rights or legitimate interests in respect of the Domain Name. The Complainant argues that complaints posted on the Internet site “www.complaintsboard.com” demonstrate that the Respondent is using the Domain Name in furtherance of a scheme to defraud people by sending emails that appear to come from the Complainant and suggest to them that they have won a sweepstakes in order to obtain their personal information. Further, the Complainant contends that these actions by the Respondent constitute bad faith registration and use of the Domain Name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:

(1) the domain name at issue is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2) the respondent has no rights to or legitimate interests in respect of the domain name; and

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

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns rights in the O2 trademark. There are many UDRP decisions that find that the pairing of a distinctive trademark with less distinctive terms is confusingly similar to the distinctive trademark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions, WIPO Case No. D2007-1140; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (<christiandiorcosmetics.com> and <christiandiorfashions.com> confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (<leasinglexus.com> and <lexuselite.com> confusingly similar to LEXUS). Accordingly, the Panel finds that the Domain Name, which pairs the O2 trademark with “tele,” an abbreviation for “telecommunications,” the Complainant’s industry, is confusingly similar to the Complainant’s O2 trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:

(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name; 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 at issue.

In this case, the Respondent has not presented evidence that the Respondent used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Name or that the Respondent is making a legitimate noncommercial or fair use of the Domain Name, or in any other way refuted the Complainant’s prima facie case. The Complainant has presented evidence, which was not refuted by the Respondent, that the Respondent has used the Domain Name as part of a fraudulent scheme to obtain personal information from Internet users by misrepresenting an affiliation with the Complainant. This activity cannot under any circumstances be considered a bona fide offering of goods or services. Accordingly, the Panel finds that the Respondent does not have any rights to or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name at issue 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 documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or

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

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

The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Complainant has demonstrated that the Respondent has used the Domain Name to send emails that are designed to appear as though they come from the Complainant as part of a scheme to defraud others. Under such circumstances, there is no question that the Respondent was aware of the Complainant’s trademark and registered and is using the Domain Name in bad faith.

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 <o2tele.org> be transferred to the Complainant.

Michelle Brownlee
Sole Panelist
Dated: May 19, 2011

 

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