WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
O2 Holdings Limited v. Gary Devlin
Case No. D2012-0007
1. The Parties
The Complainant is O2 Holdings Limited of Berkshire, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Ipulse IP Ltd, UK.
The Respondent is Gary Devlin of Halifax, UK.
2. The Domain Name and Registrar
The disputed domain name <o2upgrades.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2012. On January 4, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On the same date, GoDaddy.com, LLC 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 January 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2012.
The Center appointed Adam Samuel as the sole panelist in this matter on February 13, 2012. 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 O2 telecommunications Group is a well-known operator in the telecommunications sector, notably as a provider of mobile phone services. It also operates in the entertainment and music sectors. The Complainant is the legal owner of a number of UK trademark registrations for O2, the earliest of which appears to be number 2264516, registered on June 7, 2002.
The disputed domain name was registered on September 13, 2011.
5. Parties’ Contentions
This section sets out the Complainant’s contentions with which the Panel may or may not agree.
The Complainant owns many trademark registrations for or including the element O2. The Complainant also owns trademark rights containing the element UPGRADE, namely UK trademark number 2588424 FAST TRACK UPGRADES/O2 FAST TRACK UPGRADES.
Consumers viewing the site to which the disputed domain name resolves will think that it is linked to the Complainant. When one searches the term “O2 upgrades”, all of the links relate to the Complainant. If consumers were looking to upgrade their telephone with O2, the term O2 upgrades would be a logical choice for them to use. If they came across the website to which the disputed domain name resolves, consumers would be confused as to the origin of the website and could think that it was the Complainant.
The Complainant uses the terms “O2” and upgrades together very extensively. The Complainant has clearly illustrated that it owns confusingly similar trademarks to the disputed domain name. Bearing in mind the fact that the Complainant operates in the field of telecommunications and the term “upgrade” is descriptive in this field (i.e. a newer version of a handset or improved model) the evidence of use of the O2 brand shows how famous it is in the telecommunications field.
The Respondent does not have any legitimate interest in the disputed domain name. The Respondent’s name does not appear to relate to the disputed domain name in any way. A printout of the website to which the disputed domain name resolved in December 2011 show references to the Complainant and its competitors and shows a number of links that were bound to be confusing to the average consumer. The Respondent is operating a click-through website which is likely to be generating revenue for the Respondent. Consumers visiting the website to which the disputed domain name resolves could click on a competitor of the Complainant and business could be diverted in the process to one of the Complainant’s competitors. If the Respondent had a legitimate business interest in the disputed domain name, he would be operating a business from the website to which it resolves.
The Respondent approached the Complainant offering to sell it the disputed domain name on November 20, 2011. The disputed domain name was only registered by the Respondent on September 13, 2011. The Respondent had no genuine intention of using the disputed domain name as this approach was shortly after registration. It would be reasonably to assume that the registrant hopes to gain by selling, renting or otherwise transferring the disputed domain name to the Complainant or to a competitor (which is clearly detailed in his e-mail of November 20, 2011). The Respondent refused to transfer the disputed domain name to the Complainant even after being informed that the Complainant would issue proceedings.
The disputed domain name must have been acquired primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant or one of its competitors for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. The disputed domain name is for sale on Sedo for £10,000. There is no possibility that the out-of-pocket expenses related to this disputed domain name were anywhere near this sum. The Respondent has admitted that he knew of the Complainant of its rights and, in essence, was giving the Complainant first refusal on the disputed domain name before selling to a competitor. This is not a legitimate reason to own a domain name.
It is impossible to imagine how any use of the disputed domain name would not cause confusion to any relevant consumer. The fact that initial use of the disputed domain name included links to the Complainant’s own services and those of its competitors shows that the disputed domain name was registered with an intention either to confuse consumers and direct them to its own website for its benefit, or to obtain a monetary advantage specifically because of the reputation and rights owned by the Complainant in its O2 trademark. There is a reasonable presumption that the disputed domain name was registered specifically to gain from the Complainant’s reputation or deliberately to attract consumers for commercial gain on the basis of the Complainant’s rights.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the complainant must prove that:
“(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith”.
A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant’s trademark O2, the generic word “upgrades” and the standard suffix “.com”. The addition of a generic word to a trademark in forming a domain name, particularly one that describes the products or services which the trademark is used to sell does not remove the confusing similarity between a domain name and the trademark concerned. In this case, the Complainant regularly offers upgrades to telephones that are connected to its service. For all these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent is not called “O2” or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. The Respondent has never asserted any rights or legitimate interests in that name. For these reasons, and in the absence of any Response to this Complaint, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s company regularly offers upgrades to its telephone users. The disputed domain name consists of its trademark and the word “upgrades”. Therefore, in this Panel’s view, the Respondent in selecting the disputed domain name clearly knew of the Complainant and its company’s business of upgrading telephones.
The disputed domain name resolves to what appears to be a parking page website apparently marketing the Complainant’s company’s products and others. There is also an indication that the domain name is for sale to the highest bidder on the website concerned and a linked website.
On November 20, 2011, the Respondent e-mailed the Complainant as follows:
“[…] Here at DataDayData ltd we actually own a domain that would be great for your company to own and protect and grow your business, The domain is “www.o2upgrades.com”.
This domain would be an excellent revenue opportunity for the o2 group for all the upgrades you do whether mobile/broadband business or consumer etc, This domain could also be directed to your main site,
We do have a large telecoms company interested in purchasing the domain, We do not know what they intend to do with the domain however you as well as we know this is a very rare domain and can earn your organisation a large amount of revenue off your upgrades departments or any sector whatsoever,
We are looking to sell this domain as soon as we recieve a decent offer which both parties agree with,
Thanks for reading the email and i look forward to hearing from you and hopefully we can come to some agreement in the o2 group purchasing the Domain off DataDayData ltd,”
The Complainant has also produced a screen shot of the Sedo website showing that the website was for sale for £10,000.
In this Panel’s view, it is impossible, in the circumstances, at least without a Response to the Complaint on this point, to identify a reason why the Respondent registered the disputed domain name rather than any other available domain name, other than to attract business or Internet users to his website who were looking for a website connected to the Complainant’s trademark or business or persuade the Complainant or one of its competitors to buy the disputed domain name from the Respondent for an amount in excess of his out-of-pocket expenses.
The only reasonable explanation of what has happened is that the Respondent’s motive in registering and using the disputed domain name seems to be one or more of the following: to disrupt the Complainant’s relationship with its customers or potential customers, attempt to attract Internet users for potential gain through click-through revenue or persuade the Complainant to buy the disputed domain name from the Respondent for an amount in excess of his out-of-pocket expenses. These each constitute evidence of registration and use in bad faith.
The e-mail quoted above shows that the Respondent was well aware of the Complainant’s trademark rights and was at the very least using the domain name in order to sell it to the Complainant for an amount in excess of his out-of-pocket expenses.
For these reasons, the Panel concludes that the disputed domain name was registered and is being used in bad faith. As a result, it is unnecessary to deal with the Complainant’s other contentions.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <o2upgrades.com> be transferred to the Complainant.
Dated: February 15, 2012