WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
O2 Holdings Limited v. Domains By Proxy, LLC, DomainsByProxy.com / Cognitive Systems
Case No. D2012-0464
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 (“UK”).
The Respondent is Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States of America (“USA”) / Cognitive Systems of Paddington, New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <o2learn.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2012. On March 9, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On March 14, 2012, GoDaddy.com, LLC 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 March 15, 2012 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 March 23, 2012.
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 March 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 16, 2012.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on April 24, 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.
On April 25, 2012, the Respondent sent an email communication to the Center.
On May 21, 2012, the Complainant forwarded to the Center an email communication sent on May 2, 2012 by the Complainant to the Respondent in reply to the Respondent’s contentions.
4. Factual Background
The Complainant is O2 Holdings Limited, the IP holding company of the O2 Group of telecommunications.
The trademark O2 is registered in the UK as well as in other countries, including the USA and in Australia, as stated in the copies attached as Annex 4 of the Complaint. The oldest registration dates back to 2001, year when the services were first rendered under this mark.
The Complainant holds also domain name registrations formed by the mark O2. One domain name deserves special attention, namely <o2learn.co.uk>. This domain name leads to a fully operational site owned by the Complainant.
The evidence presented shows that the trademark O2 is original and distinctive. Besides, it has gathered awareness throughout the world and can be considered a well-known trademark, according to the provisions of article 6bis of the Paris Convention.
In sum, the Complainant has shown evidence of substantial goodwill and name recognition in the expression “o2”, based on intensive use on a long term basis.
5. Parties’ Contentions
The Complainant contends that the disputed domain name <o2learn.com> contains the worldwide known trademark O2 and that no authorization whatsoever was ever given to the Respondent to register any domain name containing the Complainant’s trademark.
The Complainant has obtained registrations for O2 and other related marks, valid in several countries throughout the world, as well as domain names formed by this mark, as stated above. Also, the Complainant alleges that the disputed domain name is confusingly similar to one for which it holds registration, namely <o2learn.co.uk>, which certainly leads the consumers to confusion when seeking the Complainant’s web site.
The Respondent did not formally reply to the Complainant’s contentions.
An extemporaneous response was presented on April 25, 2012 – that is, 10 days after the deadline to do so expired. According to the Respondent, this delay was caused by his personal illness.
The Respondent briefly alleges that the disputed domain name was purchased in good faith and intended to be used in relation to his teaching activities.
He also mentions having previously been contacted by a third party in an attempt to acquire the disputed domain name – which did not occur because the offer was not interesting. The Respondent further states that he could sell the disputed domain name if a reasonable price was offered.
6. Discussion and Findings
The Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:
i. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in respect to the domain name; and
iii. the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Regarding the first of the elements, the Panel is satisfied that the Complainant has presented adequate proof of having rights in the mark O2, which is registered in countries where the Complainant does business and consequently used regularly in those countries.
Further, the Panel finds that the disputed domain name <o2learn.com> is confusingly similar to the trademark belonging to the Complainant, since this mark is entirely reproduced in it. Moreover, the disputed domain name incorporates entirely the mark O2 by merely adding the word “learn”, which is confusingly similar to a domain name owned and used by the Complainant, <o2learn.co.uk>. As further discussed below, this fact can be considered as an attempt to lead the consumers to confusion.
Hence, the Panel concludes that the first of the elements in the Policy has been satisfied by the Complainant in this dispute.
B. Rights or Legitimate Interests
The Panel understands that the mark O2 is a distinctive term, necessarily associated with the Complainant. It is not only registered as a mark, but also is the main part of the Complainant’s trade name.
The Complainant provided sufficient evidence of the renown of its mark in the telecommunications field in the UK and other European countries, as well as in the USA and Australia.
Hence, the Panel considers that the Respondent, in all likelihood, could not have been unaware of the mark O2 and its direct relation to the Complainant.
The Respondent, in his extemporaneous response, did not clearly clarify why the disputed domain name was chosen, nor credibly rebut the allegations of the Complainant regarding the use of the trademark O2. He also confirmed that the disputed domain name was not currently in use. Moreover, the Respondent did not present any evidence of demonstrable preparation to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Further, the Respondent alleged that the disputed domain name could have been sold, had a reasonable price been offered.
The Panel is satisfied that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name, which, in the Panel’s view, the Respondent has not rebutted. It has also been shown that the Respondent is not making any direct use of the disputed domain name, but merely using it as a parking space for sponsored links.
Thus, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. For this reason the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
It is the Panel’s opinion that the Respondent has in all probability registered the disputed domain name <o2learn.com> with the purpose of taking advantage of the renown of the Complainant’s mark. The fact that the Complainant owns and uses a domain name that is virtually identical to the disputed one, namely <o2learn.co.uk>, supports this supposition.
Further, the Respondent is using the disputed domain name as a parking space for sponsored links, in a clear act of bad faith. The Respondent appears to be doing so for the purpose of commercial gain arising from the probable confusion of the disputed domain name with the Complainant and its mark. The fact that the Respondent expressly said that he could sell the disputed domain name for a reasonable price reinforces this conclusion. Moreover, there is an express link that asks “want to buy this domain?”, which is a further evidence of bad faith registration and use.
The Panel finds that, for the reasons mentioned above, the Respondent obtained the registration and has been using the disputed domain name in bad faith.
The Panel, hence, finds present the third element.
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 <o2learn.com> be transferred to the Complainant.
Alvaro Loureiro Oliveira
Dated: May 31, 2012