WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
O2 Holdings Limited v. Hu Yanlin
Case No. D2012-1078
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 Hu Yanlin of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <myo2.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2012. On the same date, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. Also on the same date, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing its 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 June 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response June 24, 2012. The Response and a copy of the Response were filed with the Center on June 21 and June 22, 2012, respectively.
On June 26, 2012, the Complainant and the Respondent both filed supplemental filings with the Center.
The Center appointed Luca Barbero, John Katz and Yong Li as panelists in this matter on July 26, 2012. The Panel finds that it was properly constituted. Each member of 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 IP holding company of the O2 Group of telecommunications companies and is the owner of several trademark registrations for, or including, O2 and MYO2, such as:
- the United Kingdom Trademark registration Nos. 2264516 for O2, filed on March 19, 2001, in classes 38, 39 and 42; 2271228 for O2, filed on May 29, 2001, in classes 38, 41, 42 and 24; 2415848 for O2, filed on March 7, 2006, in classes 16, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45; 2415862 for O2, filed on March 7, 2006, in classes 16, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45; 2358849 for MY O2, filed on March 19, 2004, in classes 9, 38 and 41;
- the United States Trademark registration Nos. 3848986 for O2, filed on March 1, 2004, in International classes 16 and 38; 2231903 for O2, filed on September 19, 1996, in class 9;
- the Chinese Trademark registration Nos. 4354795 for O2, filed on November 9, 2004, in class 9; 4635124 for O2, filed on April 29, 2005, in class 16; 4354797 for O2, filed on November 9, 2004, in class 41; 4635122 for O2 ,filed on May 29, 2005, in class 6;
- the Community Trademark Nos. 2109627 for O2, filed on February 28, 2001, in classes 9, 35, 36, 38 and 39; 2284818 for O2, filed on July 14, 2004, in classes 38 and 41; 4949418 for O2, filed on March 7, 2006, in classes 37, 38 and 42; 7177363 for O2, filed on April 27, 2005, in classes 3, 4, 6, 8, 9, 14, 16, 18, 221, 24, 25, 28, 29, 34, 35, 36, 38, 39, 41, 43, 44 and 45; and 3732823 for O2, filed on March 19, 2004, in classes 8, 38 and 41.
The Complainant is the owner of the domain name <o2.com>, which was registered on July 30, 1995 and is used to promote the Complainant’s services.
The disputed domain name was registered on November 23, 2006 and is pointed to a web site under construction, displaying an email address “[…]@xq.com”, the statements “Please support UNICEF[logo] and RED CROSS[logo]”, “Website under Construction” and a disclaimer, both in Chinese and in English: “声明: 此为非商业性 、独立的私人网站，与任何其它方面无关。It is a non-profit, individual and private website, and has no relations with any other party. Please contact us by email if you have any comments or ideas”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its trademarks and states that consumers, when viewing the site published at “www.myo2.com”, may think that it is linked to the Complainant.
The Complainant underlines that the mark O2 is distinctive and unusual as a brand and that a search for “My O2” on Google search engine generates links exclusively related to the Complainant, including a Wikipedia page entitled “My O2” which describes the Complainant’s use of the mark MY O2 in relation to its business.
The Complainant in fact uses the mark MY O2 extensively in the United Kingdom, Ireland and Germany and “My O2” is a section of the Complainant’s web site where it offers a variety of different services to its customers, providing them with a login for their own accounts.
With reference to rights or legitimate interest in the disputed domain name, the Complainant states that the Respondent’s name does not appear to relate to the disputed domain name in any way and that the Respondent has not used the disputed domain name for a genuine business but simply pointed it since its registration to a web site under construction. The Complainant indicates that, despite a statement on the website stating “It is a non-profit, individual and private website, and has no relations with any other party”, consumers visiting the site displayed at “www.myo2.com” would associate it with the Complainant’s trademark MY O2. The Complainant therefore concludes that the Respondent has no rights or legitimate interest in the disputed domain name.
As to the bad faith requirement, the Complainant states that there was no legitimate reason to register the disputed domain name <myo2.com> other than to capitalize on the reputation of the Complainant’s brand around the world. As such, the Complainant submits that the disputed domain name must have been acquired primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out of pocket costs directly related to the disputed domain name. The Complainant highlights that the Respondent appears to have no actual interest in the disputed domain name as the Respondent appears to have merely pointed it to a web site “under construction” since its registration in 2006.
The Complainant also states that, since “My O2” is a key business area of the Complainant, the registration of the disputed domain name would prevent the Complainant from reflecting the mark in a corresponding domain name for such services, and as such it could be assumed that the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant.
In addition, the Complainant states that, bearing in mind the rights of the Complainant, it is impossible to imagine how any use of the disputed domain name would not cause confusion to any relevant consumer, since any average consumer familiar with the O2 brand would assume that the disputed domain name be related to the provision of the Complainant’s services. The Complainant therefore also contends that the Respondent intentionally registered the disputed domain name to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website.
The Respondent asserts that “MyO2” has “the natural and much more boarder meaning as: my oxygen”. The Respondent states that “O2” is the molecular form for Oxygen, that several companies use “O2” in their names, such as O2 Global Network, O2TV, Telefonica Europe O2 Wireless USA, and that O2 “also means in the field of Medicine, Music, Places, Technology, Vehicles etc.”. The Complainant would thus have no exclusive right over such word and its trademark should be only meaningful and protected in a specific trade sector.
The Respondent informs the Panel that the Encyclopedia of Baidu.com defines O2 only as oxygen, while “myo2” is defined as a kind of music game only. According to the Encyclopedia of Hudong.com, O2 is defined as a game only. The Respondent contends that in China no one will think that the mark MYO2 belongs to the Complainant and no one, including the Respondent, ever heard of the “O2” company. The Respondent also states that, from the website of the Complainant, the Complainant would have no business coverage in Asia, including in China, where the Respondent is based.
The Respondent contests the Complainant’s trademark rights in China, stating that trademark search results in China by “saic.gov.cn” shows that the Complainant’s trademarks O2 are currently under dispute, that there are many other trademarks including “O2” registered in China and that there is no trademark registration for “myo2” in China. The Respondent thus concludes that the Complainant does not have exclusive trademark rights in O2 in China, where the Respondent is located. Moreover, the Respondent also states that the Complainant has no exclusive trademark rights even in Europe or in the United States since also other entities registered O2 and MYO2 as a trademark.
With reference to the web site published at the disputed domain name, the Respondent states that it is not commercial and is not related to telecommunication. The Respondent indicates that the web site is in the development plan of its team, which has already made some beta versions but up to now is not yet satisfied. The Respondent specifies that “The first version is a forum, however, we found it is not easy to cope with spam messages. Personally I hope in the future website of myo2.com, people can check their local air quality, view air quality trend, share their experiences. It may also integrate a CO2 calculator (for O2 compensation). In all, my goal is to help make a healthy and green earth. There is nothing about commercial parts. My O2 has nothing about telecommunication, myo2.com is not a commercial site at all”.
The Respondent rebuts the Complainant’s allegations as to bad faith and states that, when searching for “myo2” in the Google and Baidu search engines, the first highlighted results relate to “myo2” games. The Respondent also underlines that the default page published at “www.myo2.com” indicates that the website is not commercial and highlights the presence of a disclaimer, both in Chinese and in English, stating “声明: 此为非商业性 、独立的私人网站，与任何其它方面无关。It is a non-profit, individual and private website, and has no relations with any other party”. In view of this, the Respondent concludes that “any logic person will never connect this site with a commercial site, needless to say a site of Complainant”.
The Respondent also states that i) since there are roughly no daily visitors to its site (Alexa ranking: 17,084, 303), no one would confuse it with any other web sites; ii) the registration of the disputed domain name is “for developing it into a noncommercial website, helping people to love our earth, it is for common welfare”; and iii) it never sold, try to sell or intended to sell the disputed domain name to the Complainant, its partners, its competitors or anyone else.
Parties’ supplemental filings
The Complainant states that “Myo2” is not a descriptive phrase in any sense and that, in view of the Complainant’s extensive reputation around the world, consumers seeing the mark O2 immediately recognize it as that of the Complainant, as highlighted by a survey conducted in 2010 regarding the O2 trademark and the consumer recognition of around 2000 people in relation to this fact.
The Complainant underlines that the Wikipedia page cited by the Respondent provides details on several companies, services and places related to the Complainant: “Telefonica Europe, which is made up of Telefonica Czech Republic, Germany, Ireland, Slovakia and the UK are all companies of the Complainant. The fourth company which states that O2 Wireless USA is a prepaid service offered by Locus Telecommunications in the USA - these rights are now owned by the Complainant as detailed in the Complaint. In the Wikipedia places section nearly all of the places refer to places of the Complainant, namely O2 Arena in Prague, The O2 in Dublin, The O2 in London, the O2 stores, which are operated throughout Europe, The O2 World in Berlin and The O2 World in Hamburg”.
Regarding the Respondent’s reference to the encyclopedia of Baidu.com, the Complainant states that it is not in English and therefore the Complainant cannot comment on the validity of the arguments provided. The Complainant also states that, although “O2” is a chemical symbol for oxygen, it is a distinctive trade mark of the Complainant.
The Complainant also highlights that it owns registered rights for the mark MY O2 which predate the registration of the disputed domain name and that MY O2 is a distinctive trademark and does not have any descriptive meaning as put forward by the Respondent, since it does not make sense in English grammar rules and is an English word therefore it has no relevance to the Respondent.
The Complainant further states that, although the Respondent is based in China, the website published at the disputed domain name contains English terms and the disputed domain name itself is in English, this circumstances highlighting that the Respondents targeted the English speaking consumers, most of whom are based in the United Kingdom, Europe and America, where the Complainant has trademark rights.
The Complainant also underlines that a search on Baidu.com through the help of Google Translator produces numerous references to the Complainant and its businesses and informs the Panel that the Complainant also had a business in Asia until recently.
The Complainant also points out that the Respondent cited trademarks for O2 submitted by third parties but omitted to note who the proprietor is and whether any oppositions were received, thus being possible that such trademarks be under challenge by the Complainant. The Complainant further notes that the absence of a trademark registration for MY O2 in China is not relevant, since it has rights in O2 which is the distinctive part in the trade mark MY O2.
The Complainant remarks that, in the context of the website that the Respondent is proposing, MyO2 has no direct meaning or relevance and that “Although oxygen is a small part of the composition of air, you would not refer to it as “myo2”. You would refer to this as “airqualityaroundme” or “airqualitytoday” – MyO2 has no relevance to this concept or to the Respondent themselves. Therefore, even if they had an intention to use this domain name, they have no rights or legitimate interests in it as the domain myo2.com can only ever refer to the Complainant”.
The Complainant also asserts that each of the renewals of the disputed domain name has also been made in bad faith, in view of the fact the Respondent has no rights or legitimate interests in the disputed domain name and the notoriety of the O2 brand, which was already “huge” at the time of the registration, has increased around the world since that date.
With reference to the disclaimer published on the website corresponding to the disputed domain name, the Complainant states that “it does not say who the party is” and that the fact that it is in English as well as Chinese demonstrates that the website is targeted to the English consumer. The Complainant also reiterates that any consumer visiting that site would recognize MYO2 and O2 as being trademarks of the Complainant and that, as the Complainant is heavily involved with corporate responsibility for its “Think Big” project and therefore it would not be unusual for consumers to see a nonprofit site and think of the Complainant.
The Respondent rebuts the Complainant’s assertions in its supplemental filing and raises the following question: “why Complainant did not take action in this 6 years, especially for such a big company, If you insist on challenging our six years?” and reiterates that it is developing its own website which does not relate to O2 mobile or service.
With reference to the Complainant’s notes on the Respondent’s disclaimer, both in Chinese and in English, the Respondent states that “third party” in the disclaimer is referred to “any third party” and indicates: “I guess if such message is only in Chinese, you will argue: since it is in Chinese, it is clear the respondent is trying to confuse the foreign visitors”? Again, it is also bad faith to lie. I believe such disclaimer is clear and enough, to every logic person”.
The Respondent also reiterates that trademarks are only protected in the special business sector and states “I believe Apple is much richer than Complainant, but thanks God, we can still call “apple” as apple in fruit. If I go to a vegetable & fruit market, asking for one apple, no one will sell me an iphone. Here it is the same”
The Respondent also requests that the Panel investigate whether domain name reverse hijacking may be applicable in this case.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of several uncontested trademark registrations for O2 in the United Kingdom, in the European Community and in the United States. Moreover, the Complainant is the owner of a registered trademark MY O2 and the Panel is satisfied that the Complainant has acquired substantial goodwill in the use of the mark O2.
From a straightforward visual and aural comparison of the Complainant’s trademark with the alphanumeric string in the disputed domain name, the Panel notes that the disputed domain name <myo2.com> is identical to the Complainant’s registered mark MY O2.
Furthermore, the Panel finds that the disputed domain name <myo2.com> is also confusingly similar to the trademark O2, since the core of the disputed domain name is constituted by “O2”, in which the Complainant has established rights, and the additional descriptive word does not serve to distinguish the disputed domain name from “O2”. See, inter alia, EasyGroup IP Licensing Limited v. PPA Media Services, Ryan G Foo / Fundacion Private Whois, WIPO Case No. D2012-1093 (myeasyjet.com) and The Coca-Cola Company v. MyFanta Network, S.L., WIPO Case No. D2011-2063 (myfanta.com).
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).
The Panel observes that there is no relation, disclosed to the Panel or otherwise emerging from the records, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name or has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent stated that the disputed domain name <my2o.com> was meant to refer to “my oxygen” and was registered “for developing it into a noncommercial website, helping people to love our earth, it is for common welfare”. However, the disputed domain name was registered in 2006 and, as also emerged from the documents and statements submitted by the parties, it has been redirected since then to an undeveloped website and is still under construction at the time of the drafting of the present Decision. The Respondent’s assertion that the website is in the development plan of its team, which would have already made some beta versions but up to now is not yet satisfied, has not persuaded the Panel also in light of the time elapsed since the registration of the disputed domain name.
Moreover, the Panel notes that the statements published on the current Respondent’s web site as made available to public do not make any reference to oxygen, air quality, environment, that should be expected from a website dedicated to such items. The Respondent’s website is, indeed, under construction, but, as mentioned above, publishes statements which do not relate at all to such subjects, i.e. “Please support UNICEF and RED CROSS”, “Website under Construction” and the disclaimer (both in English and in Chinese) “It is a non-profit, individual and private website, and has no relations with any other party. Please contact us by email if you have any comments or ideas”. Since, from the Respondent’s documents and statements, it is clear that the web page currently available at “www.myo2.com” is not a simple “parking page”, but a page created by the Respondent which has inserted in it all the contents, including the text mentioned above and the image published in it, one should reasonably have expected to find also indications as “Future web site about air quality and environment” and/or “A blog about healthy and green earth”.
In light of the lack of evidence provided to the Panel showing an actual and serious use or intention to use of the disputed domain name by the Respondent, the Panel finds that the Respondent has not provided convincing evidence of any legitimate, noncommercial or fair use of the disputed domain name in accordance with Paragraph 4(c)(iii) of the Policy.
Thus, on balance, the Panel finds that the Complainant has satisfied the requirement provided by Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As mentioned above, the Complainant has provided evidence of ownership of uncontested trademark registrations for O2 (in the United Kingdom, in the Community Trademark and in the United States) and for MY O2 (in the United Kingdom) which predate the registration of the disputed domain name.
The Panel also notes that the Complainant O2 Group enjoys a general reputation and goodwill and that the mark O2 is well-known.
The disputed domain name has been pointed to a website under construction and is substantially not actively used. Furthermore, the Respondent has taken no active steps to sell the disputed domain name. According to the WIPO Overview of WIPO Panel views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), the consensus view of WIPO panellists in these situations is that the panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity.
In assessing whether the registration and use of the disputed domain name by the Respondent may amount to bad faith, the Panel considers that:
i) the Complainant enjoys a worldwide reputation and its trademark O2 is well-known;
ii) the Respondent has failed to provide convincing evidence of its serious and legitimate interest in the disputed domain name, especially given the 6 years since its registration;
iii) although the Respondent is based in China, the website published at the disputed domain name contains English text and the disputed domain name itself is in English; these circumstances are highlighting that the Respondent targeted also the English speaking consumers, many of which are based in the United Kingdom, Europe and America, where the Complainant has trademark rights;
iv) the use of a disclaimer is an indication that the disclaiming party was aware of some circumstances that could give another party a prior claim or right or the public would make some link or association. The disclaimer of having “no relations with any other party” does not appear to be intended to be a disclaimer with respect to Unicef or the Red Cross or American Red Cross. In light of the above, the Panel draws the inference that, notwithstanding the static nature of the web site, the Respondent was more likely than not aware of the O2 group, i.e., the Complainant, and of its marks at the time of the registration.
The Respondent in its supplemental filing has raised the question on the delay in bringing the Complaint by the Complainant. On this point, the Panel notes that, according to WIPO Overview 2.0, “the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements”. However, “a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith”.
The Panel notes that the Complainant has not addressed the issue of the late initiation of the UDRP proceeding, providing explanations on the reasons why the Complaint was brought six years after the registration of the domain name. However, the Panel considers that the disputed domain name might have not previously come to the attention of the Complainant as the website to which the disputed domain name directed was, and still is, essentially inactive. Equally, it could be the case that the Complainant was monitoring web traffic to the disputed domain name, or any number of reasons influencing the Complainant’s enforcement priorities. Considerations of delay could have some greater relevance if, for example, there was concrete evidence to show that the Complainant was or ought to be aware of the Respondent’s use of the disputed domain name in apparent contravention of the Policy, yet nevertheless unreasonably delayed taking any action against the Respondent on that basis, and the Respondent’s use of the disputed domain name would subsequently change to a more legitimate use under the Policy. However, this is not such a case.
In light of the above, the Panel finds that the Complainant has proven the bad faith requirement according to paragraph 4(a)(iii) of the Policy.
In view of the Panel’s decision, domain name reverse hijacking is not applicable in this case.
For all 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 <myo2.com> be transferred to the Complainant.
Dated: August 13, 2012