WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
O2 Holdings Limited v. Total Security Vision
Case No. D2012-1870
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 Total Security Vision of Orlando, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <o2billing.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2012. On September 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 21, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 October 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2012.
The Center appointed Leon Trakman as the sole panelist in this matter on November 12, 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 Complainant is the intellectual property holding company of the O2 Group of telecommunications companies. The Complainant owns at least twelve trademark registrations for or including the element O2, in different countries and commencing from at least 1999. It adduces evidence that its trademark is widely known in the telecommunications, entertainment and music sectors, not limited to its O2 brand. It establishes further that it recently acquired the rights to the O2 mark in the United States previously owned by the American company Locus Telecommunications, engaged in prepaid telecommunications card services in the United States.
The disputed domain name was registered on July 13, 2011.
5. Parties’ Contentions
The Complainant alleges, firstly, that the disputed domain name, <o2billing.com>, is confusingly similar to the Complainant’s trademark and contrary to paragraph 3(b)(ix)(1) of the Rules. Secondly, it alleges that the Respondent has no rights to or legitimate interests in respect of the disputed domain name, contrary to Paragraph 4(a)(ii) of the Policy and Paragraph 3(b)(ix)(2) of the Rules. Thirdly, it alleges that the Respondent registered and is using the disputed domain name in bad faith, contrary to paragraph 4(a)(iii) and 4(b) of the Policy and paragraph 3(b)(ix)(3) of the Rules.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademark, contrary to paragraph 3(b)(ix)(1) of the Rules. Given the Complainant’s widely known brand and service, it is most likely that consumers will access the “www.o2billing.com” website on the false assumption that the website and the disputed domain name are associated with or otherwise authorized by the Complainant.
Moreover, it is likely that consumers will associate “o2 billing” with the Complainant’s services and billing practices in particular. Firstly, the term “billing” is a descriptive term that is associated with the provision of telecommunication services. Secondly, the term “o2 billing” is distinctive to the Complainant’s business in providing consumers with O2 services in relation to telephone billing practices. Thirdly, the Complainant is widely associated with the mark O2 in providing consumers with a billing option and a particular means by which to review their O2 phone bills.
B. Rights or Legitimate Interests
The Respondent does not have any rights to or legitimate interests in the disputed domain name. The Respondent has not acquired any trademark or service mark rights in respect of the disputed domain name. It is not using the disputed domain name in connection with a bona fide offering of goods or services. It is not making a legitimate commercial or noncommercial use of it. Nor does the Respondent have any right to or legitimate interest in the Complainant’s right to market and provide billing services to consumers in the telecommunications industry under the Complainant’s O2 trademark.
C. Registered and Used in Bad Faith
The Respondent has registered and is using the disputed domain name in bad faith. In using a domain name in which the Respondent has no legitimate interest, the Panel finds that the Respondent has one or more of the following intentions. First, it intends to sell, rent, or otherwise transfer the disputed domain name to the Complainant for a significant profit. Second, it intends to sell, rent of transfer the disputed domain name to a third party competitor of the Complainant, again for a significant profit and at the expense of the Complainant. Third, it intends to provide billing service itself or through a third party service provider on the assumption that consumers are likely to be confused into believing that the billing services are provided or authorized by the Complainant. Fourth, it intends to redirect consumers to the website of the Complainant and its competitors in order to secure “click through income.”
It does not matter whether the Respondent has one or more of these four intentions. Each constitutes evidence of bad faith in registering and using the disputed domain name. The last of these intentions would support the assumption that the Respondent had registered and used the disputed domain name in bad faith to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its website, or location of a product or service on its website.
The Panel notes that Annex 7 of the Complaint shows that the disputed domain name resolved to a website under construction. Passive holding of a domain name does not prevent a finding of bad faith registration and use. The Panel notes that currently the disputed domain name resolves to an identical website, accordingly the Panel finds, in the circumstances of this case, bad faith registration and use.
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, <o2billing.com> be transferred to the Complainant.
Date: November 13, 2012