WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
O2 Holdings Limited v. PrivacyProtect.org / StudMedia, Illya Taryanik
Case No. D2011-1787
1. The Parties
The Complainant is O2 Holdings Limited of Slough, Berkshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) , represented by Ipulse IP Ltd, United Kingdom.
The Respondent is PrivacyProtect.org of Queensland, Australia / StudMedia, Illya Taryanik of Oblast, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <o2porn.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 October 19, 2011 against PrivacyProtect.org. On October 20, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 2011, 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 25, 2011, 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 31, 2011.
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 November 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 5, 2011.
The Center appointed John Katz QC as the sole panelist in this matter on December 5, 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 is the intellectual property holding company of the O2 Group of telecommunications companies. The witness statement of A. Clay of Telefónica Europe plc, part of the O2 Group, dated September 29, 2010 and filed in relation to a complaint by the same Complainant in O2 Holdings Limited v. Sarang Hodjati, WIPO Case No. D2010-1887, has been filed in relation to the present Complaint as well. To save cost and unnecessary volume of material the Complainant seeks to rely in this Complaint on that same evidence as used in the above case. There can be no objection to such a sensible course.
The evidence on behalf of the Complainant shows the history of the O2 Group of companies from November 2001 when the goodwill formerly owned by British Telecom and BT Cellnet was acquired by O2 Holdings Limited. The statement discloses that the O2 brand was launched in May 2002 whereupon the group company was incorporated and all use of the intellectual property of the Group devolved upon O2 Holdings Limited as owner of the intellectual property rights. Although there have been a number of mergers and/or acquisitions throughout United Kingdom and Europe the O2 brand remains as a stand alone brand.
The primary target market for the O2 brand is the 16-34 age category whose users are high value customers using their mobile phones more frequently than other age groups or cohorts and for whatever functionality the mobile phone may provide.
The growth of business has been immense with the United Kingdom total customer base of O2 at the end of 2008 totaling 19.5 million and at the end of 2009 totaling 21.3 million. It can safely be assumed that by end of 2011 the growth would have been exponential. The turnover of O2 related services in the first decade of this millennium is measured in the thousands of millions of pounds or euros. The advertising spent across all media and sectors has been in the tens of millions of pounds in the years 2006, 2007 and 2008.
Independent intellectual property brand awareness organisations recognise O2 as one of the leading brands in the United Kingdom, Europe and elsewhere to become one of the world’s leading brands. The statement goes on in very considerable detail to chronicle the history of the brand in various European countries and United Kingdom and also its awards, sponsorships, advertising and marketing.
The O2 brand is clearly valuable and has been protected over the past decade via a number of registered trade marks, previous domain name disputes and court litigations, all designed to protect the brand. The list of registered trade marks relied upon is impressive and features in all instances put in evidence the core or dominant feature O2.
The disputed domain name was registered on December 3, 2009. It expired on December 3, 2011 and was not renewed. Correspondence regarding this then ensued between the Center and the Complainant and is discussed below.
5. Parties’ Contentions
The Complainant contends that as it has such an enormous reputation in its brand and in particular the core or base brand O2 whether used either on its own or in combination with a suffix, that any domain name or website featuring O2 as part of it will be seen as associated with the Complainant, in this case contrary to the fact. That would also arise even regardless of the registered trade marks by virtue of the common law goodwill attaching to the O2 brand.
The Complainant emphasizes that that is so whether the O2 mark is used as a numeral 0 followed by the numeral 2 or the alphabet capital letter O followed by the numeral 2. In this case the disputed domain name begins with a lower case letter “o”. The subtlety of the difference between the 0 and the o is so fine that few people would detect in a competing use the difference between the numeral 0 and the lower case o.
The Complainant uses its brand in a very broad reach of telecommunications services and products and any person seeing the disputed domain name would assume it was or could be in some way associated with the Complainant.
The Respondent has defaulted. The website is currently blocked so reliance has to be placed on the contentions of the Complainant and the screens it has printed off from the associated website when it was active.
Those screens can only be described as graphic illustrations of pornography with no associated activity that has or could have any legitimate link with the Complainant. Presumably the Respondent derives revenue from visitors to the website. But even if not, the content of the website tells enough of the Respondent’s activities. These are simply to enable viewers and visitors to the website to view pornographic material online.
6. Discussion and Findings
The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that a complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. A respondent is given full opportunity to respond. In this instance, the Respondent has defaulted.
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) A respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) A respondent has no rights or legitimate interests in respect of the domain name; and
(iii) A respondent’s domain name has been registered and is being used in bad faith.
Each of three elements must be established by a complainant to warrant relief.
A. Identical or Confusingly Similar
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trade marks in which the Complainant has rights.
The Complainant must establish that it has such rights either to common law or registered trade marks or service marks and that those rights are being abused by the Respondent.
In this case the core brand of the Complainant O2 has been taken. That the prefix in the present case is a lower case “o” rather than a capital “O” is a difference of such subtlety as to be irrelevant. Moreover, there can be no practical difference between a capital “O” and a lower case “o” as visually they are virtually identical, unlike some other letters of the alphabet, as they also are aurally.
The addition of the word “porn” as a suffix adds no more beyond describing the nature of the content of the website associated with the disputed domain name.
The essence of the Complainant’s mark has been taken. Thus, “o2porn” is confusingly similar to any one or more of the Complainant’s registered trade marks and additionally to its common law trade marks derivative of its extensive trading and concomitant goodwill.
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out.
B. Rights or Legitimate Interests
As to the second ground that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to the trade mark in suit thereby justifying a proprietory right to the mark.
Under paragraph 4(a)(ii) a respondent can justify its registration of a domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate noncommercial or fair use.
Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no legitimate rights or can claim none.
There is however no evidence of any rights or legitimate interests that the Respondent may have, and it is difficult to imagine what they could be.
In this case the disputed domain name contains within it the core mark of the Complainant together with a generic descriptor as suffix. There is nothing in the screens of the Respondent’s website that would enable any inference to be drawn that the Respondent has any connection with O2, that it has any business associated with the trading name O2 or that it has any trading history that it has itself established in the name or brand O2 whether expressed as O2 or o2.
There being no Response from the Respondent the Complainant more than satisfies its obligations of proof under this head.
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out.
C. Registered and Used in Bad Faith
As to the third ground, this requires that the name be registered and used in bad faith. As has previously been said in other panelists’ decisions together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.
Any person who came across the Respondent’s disputed domain name would immediately assume that it was a domain name owned and operated by the Complainant, contrary to the fact. An attempt by the Panel to access the corresponding website was blocked and therefore unsuccessful.
The Complainant has a large number of registered trade marks that predate the registration of the disputed domain name. It also has its enormous goodwill at common law derivative of its trading.
Given the findings under A and B above, and the Respondent’s default it is not difficult to conclude that the disputed domain name was registered in bad faith.
But the Complainant must also establish use in bad faith. The screens which show the actual use by the Respondent on websites that feature pornographic content establish that the Respondent is more likely than not capitalizing on the Complainant’s good will by attracting business by use of the O2 or O2 prefix.
Nevertheless, the important point is that the front page featuring clearly adult content can only be seen as extremely damaging to the commercial interests of O2 which is entitled to disavow any association with such websites. There is also evidence of claims by the Respondent to have hacked into users’ accounts with the Complainant which of itself is potentially extremely damaging to the Complainant.
This is not to say that the Complainant can seek to impose any sort of regulation or censorship in relation to websites such as those offered by the Respondent. Nevertheless, the Complainant is perfectly entitled to insist that its goodwill and reputation are preserved and not damaged by what it might reasonably perceive to be inappropriate associations.
There is nothing put in by the Respondent by way of Response. So the Panel is left to surmise whether any of the listed grounds under paragraph 4(b) of the Policy would apply. These are all indicia of bad faith and it is clear that at least one or more is established in this instance.
The WhoIs database discloses that the disputed domain name was registered on December 3, 2009. It expired on December 3, 2011 and was not renewed. Prior to that it had been placed on Registrar lock status by the Registrar, Directi Internet Solutions PvT Limited d/b/a PublicDomainRegistry.com.
The Parties were notified of the locked status and pending expiry of the registration. The Center also notified the Parties by email of November 2, 2011 that action needed to be taken by one of the parties to the dispute to ensure the disputed domain name remained active (i.e. did not expire) so that the administrative procedure could continue as required under the UDRP. In the absence of steps being taken to ensure renewal this may result in the deemed withdrawal of non-renewed, expired or deleted domain names from the Complaint or the dismissal (at the sole discretion of the Panel) of those elements of the Complaint.
On November 24, 2011, the Complainant notified the Center that the Complainant would not be paying to renew the disputed domain name registration. As a result the Center notified the Complainant that the Center accepted no responsibility for the consequences of non-renewal of the disputed domain name registration. The consequences were advised again as including the deemed withdrawal of non-renewed, expired or deleted domain names from the Complaint or the dismissal (at the sole discretion of the Panel) of those elements of the Complaint.
The Complainant had its attention drawn to Clause 22.214.171.124 of the Expired Domain Deletion Policy (EDDP), which states:
“126.96.36.199.In the event that a domain which is the subject of a UDRP dispute is deleted or expires during the course of the dispute, the complainant in the UDRP dispute will have the option to renew or restore the name under the same commercial terms as the registrant. If the complainant renews or restores the name, the name will be placed in Registrar. HOLD and Registrar LOCK status, the WHOIS contact information for the registrant will be removed, and the WHOIS entry will indicate that the name is subject to dispute. If the complaint is terminated, or the UDRP dispute finds against the complainant, the name will be deleted within 45 days. The registrant retains the right under the existing redemption grace period provisions to recover the name at any time during the Redemption Grace Period, and retains the right to renew the name before it is deleted.”
The Complainant declined to exercise the option given to it. The Policy does not require that the disputed domain name remain on the Registrar’s list of current registered domain names for the dispute to continue. However, if the registration has, as here, lapsed and not been renewed (whether to pursuant to the EDDP or otherwise), there would appear to be limited practical possibility of the disputed domain name being transferred to the Complainant for it to do with it as it chooses. Clause 3.7.5. provides that where the registration is not renewed following service of notices the registration shall be cancelled at the end of the auto-renew grace period (generally up to 45 days).
As no notices appear to have been issued by the Registrar the Panel proceeds on the basis that the registration has expired but has not as yet been cancelled, although it is imminent for cancellation.
This produces an unsatisfactory result in terms of Clause 188.8.131.52 as the registration in this case having clearly expired, there may be limited practical utility in ordering a transfer of an expired domain name which is in any event about to be cancelled.
The Complainant did not address this conundrum in its Complaint by a supplementary submission or in any correspondence with the Center.
The EDDP provides that during the auto-renew grace period (of up to 45 days) the disputed domain name is “available for de-registration”. Nothing is said as such under the EDDP about transfer to the Complainant only that the disputed domain name may be cancelled. At the same time, it is clear that under the Policy, the typical remedy where a complainant established the necessary three elements is to order transfer of the domain name, with cancellation being a little-used alternative in typically highly unusual cases.
Accordingly, and consistent with the terms of the Policy, the Panel is of the view that the appropriate course is to direct that the disputed domain name registration be transferred, but if that is not practially possible given the above-discussed lapse and non-renewal of the registration of the Complainant, the Panel directs that the disputed domain name be cancelled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules and in accordance with the Expired Domain Deletion Policy, the Panel orders that the registration of the disputed domain name <o2porn.com> be transferred (if practically possible) to the Complainant, but (if not), in the alternative, that the disputed domain name registration be cancelled.
John Katz QC
Dated: December 19, 2011