WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
O2 Worldwide Limited v. Dan Putnam / Rodolfo a. Barcenas / Rhonda Peterson / Bob Terry / Whois Privacy Service / Eric Chan / Cecil Morgan / Whois Privacy Service / Christopher Redding / Domain ID Shield Service / Mary Martin / Ella Gee / John White, Rebecca Graphics / Thomas Heard / Dotty Krause / Jess Brown / Whoisguard Protected Whoisguard, Inc. / Andrew Rollinson, LetUsClose
Case No. D2017-0658
1. The Parties
The Complainant is O2 Worldwide Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Stobbs IP Limited, United Kingdom.
The Respondents are: Dan Putnam of Layton, Utah, United States of America ("United States"); Rodolfo a. Barcenas of Layton, Utah, United States; Rhonda Peterson of Williamsburg, Virginia, United States; Bob Terry of Red Oak, Texas, United States; Whois Privacy Service of San Diego, California, United States; Eric Chan of Singapore, Singapore; Cecil Morgan of Fremont, California, United States; Whois Privacy Service of Panama, Panama; Christopher Redding of St. Louis, Missouri, United States; Domain ID Shield Service of Hong Kong, China; Mary Martin of Marion, Alabama, United States; Ella Gee of Baltimore, Maryland, United States; John White, Rebecca Graphics of Santa Rosa, California, United States; Thomas Heard Pittsburgh, Pennsylvania, United States; Dotty Krause of Watertown, Wisconsin, United States; Jess Brown of Greenbelt, Maryland, United States; Whoisguard Protected Whoisguard, Inc. of Panama, Panama; Andrew Rollinson, LetUsClose of Gastonia, North Carolina, United States.
2. The Domain Names and Registrars
The disputed domain names <joino2.com>, <join02.com>, <o2ww.com>, <o2worldwide.com>, <o2takeover.com>, <02drops.com>, <o2drops.com>, and <02worldwide.com> are registered with TierraNet d/b/a DomainDiscover.
The disputed domain name <o2oxygen.biz> is registered with Wild West Domains, LLC.
The disputed domain names <o2dropsforu.com>, <o2drops4u.com>, <o2energydrops.com>, <o2getsome.com>, <o2giveslife.com>, <o2luckyyou.com>, <o2onpurpose.com>, <o2oxygen4u.com>, <o2ww1.com> are registered with GoDaddy.com, LLC.
The disputed domain name <o2worldwideoxygen.org> is registered with Tucows, Inc.
The disputed domain names <o2drop.biz>, <o2drop.com>, <o2drop.net>, <o2drop.org>, <o2drops.biz>, <o2drops.info>, <o2drops.org>, <o2dropsreviews.com>, <o2dropz.biz>, <o2dropz.com>, <o2dropz.info>, <o2dropz.net>, <o2dropz.org>, <o2opportunity.biz>, <o2opportunity.com>, <o2opportunity.net>, <o2opportunity.org>, <o2wideworld.biz>, <o2wideworld.com>, <o2wideworld.net>, <o2wideworld.org>, <o2-worldwide.com>, <o2worldwide.org>, <o2worldwide.website>, <o2ww.biz>, <o2ww.info>, <o2ww.net>, <o2ww.org>, <o2www.biz>, <o2www.net>, <02-worldwide.com> are registered with eNom, Inc. (the "Registrars").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 30, 2017. On March 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 31, 2017, April 3 and 5, 2017, April 10, 2017, the Registrars respectively transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants and providing the contact details concerning all disputed domain names apart from <o2dropsreviews.com>. Regarding this disputed domain name, the Registrar eNom, Inc. disclosed registrant and contact information for the disputed domain name <o2dropsreviews.com> which differed from the named the Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 12, 2017, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 13, 2017.
Due to eleven of the disputed domain names no longer being registered (i.e. due to expiration or deletion), the Complaint was subsequently withdrawn regarding those disputed domain names. The Panel will collectively refer to submissions filed regarding the disputed domain names no longer part of this proceeding as "Other Submissions".
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").
The Center received communications from the Respondent John White, Rebecca Graphics on April 12 and 19, 2017.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on May 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2017.
The Center received communications separately from: the Respondents Eric Chan, Cecil Morgan and Dotty Krause on May 5, 2017; the Respondents Andrew Rollinson and Dotty Krause on May 8, 2017; the Respondent Andrew Rollinson on May 9, 2017; the Respondent Andrew Rollinson on May 10, 2017; and the Respondents Dotty Krause and Judy King on May 18, 2017.
The Center received Other Submissions on April 19 and May 6, 9, 13 and 16, 2017.
Two Responses were filed with the Center, on May 20 and 23, 2017, by the Respondents, Dotty Krause and John White, Rebecca Graphics, respectively.
The Center appointed Andrew F. Christie as the sole panelist in this matter on June 6, 2017. 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 June 12, 2017, the Complainant filed an unsolicited Supplemental Filing.
On June 22, 2017, the Center received informal communication from the Respondent Mary Martin.
4. Factual Background
The Complainant is the intellectual property holding company of the O2 Group of telecommunications companies, which includes 02 Holdings Ltd, Telefonica 02 UK Limited, Telefonica 02 Germany GmbH & Co. OHG, Telefonica 02 Ireland, Telefonica 02 Czech Republic and Telefonica 02 Slovaki. The Complainant owns numerous United Kingdom, United States and European Union trademark registrations for the trademark O2 and for other trademarks containing the characters "O2", the earliest of which appears to date from June 7, 2002, namely, United Kingdom trademark registration number 2264516.
The disputed domain names were all registered between 2011 and 2016. The Respondent Dan Putnam is the claimed CEO and founder of an organization called "O2 Worldwide", which appears to be a multi-level marketing ("MLM") operation, also known as a "pyramid selling" operation. Under the O2 Worldwide MLM operation, individuals pay a fee to authorize them to sell products exclusive to the operation and are required to recruit further pairs of sellers for the operation. The other Respondents appear to be current or previous seller participants in the O2 Worldwide MLM operation. Some of the disputed domain names are used to resolve to websites that promote the O2 Worldwide MLM operation or otherwise contain information about and/or offer for sale products supplied under the O2 Worldwide MLM operation. Other of the disputed domain names resolve to unrelated websites or appear not to be in use at the date of this Decision.
5. Parties' Contentions
The Complainant contends that each of the disputed domain names can be allocated to one of the following four categories: (i) disputed domain names that are registered by the Respondent Dan Putnam, that "feature reference to the O2 Worldwide MLM" operation; (ii) disputed domain names that are registered to private individuals, that "redirect to a domain under the ownership and control" of the Respondent Dan Putnam; (iii) disputed domain names that are registered to private individuals, that "exhibit branding and content which demonstrates clear affiliation with" the O2 Worldwide MLM operation; and (iv) disputed domain names that are registered to private individuals, that "do not host content which is obviously provided by" the O2 Worldwide MLM but which "clearly reference" the O2 Worldwide MLM, and many of which are owned by parties who own other domain names that fall into category (ii).
The Complainant contends these categories "serve to demonstrate the unifying features which link all of the domains in this complaint", and that "through this mechanism Dan Putnam maintains common control over the domains whilst not being named registrant". Accordingly, the Respondent Dan Putnam "has common control over the name, use and content of the domain names", and "has engaged in conduct that has affected the Complainant's individual rights in a similar fashion between numerous domain names". In view of the "clear association between the domain names and the common ownership of the uniting proposition" owned by the Respondent Dan Putnam, "it would be equitable and procedurally efficient to permit the consolidation" of the Complaint against all of the disputed domain names. If any of the disputed domain names are found not to be suitable for consolidation, the Complainant "requests that the remaining domains be treated by this consolidated Complaint".
The Complainant contends that all of the disputed domain names are confusingly similar to a trademark in which the Complainant has rights, that none of the Respondents has rights or legitimate interest in the disputed domain names registered by them, and that all of the disputed domain names have been registered and are being used in bad faith.
The Respondent Dotty Krause contended: "I ordered o2drops from a network marketing company, 02 Worldwide, and a URL o2onpurpose.com was purchased to use as a marketing tool. However, I chose not to do the business and was unaware that the website was still active. I had no intentions of infringement and tried to delete this website but was unable due to this dispute".
The Respondent John White, Rebecca Graphics contended: "O2 is the chemical name for Oxygen, how the hell does anyone have the right to trademark the chemical symbol for oxygen. Are all colleges and high school classes going to be sued now? Absurd! We were not aware that O2 had any trademark claims in the US. We have no ongoing interest in any "O2" domains. The domain names we used were for the purpose of advertising a liquid oxygen supplement, and had nothing to do with cell phones or electronics".
No other Respondent formally responded to the Complaint.
6. Discussion and Findings
A. Consolidation of Complaint against multiple Respondents
The principles permitting consolidation into a single complaint of actions under the Policy against multiple respondents are well-established. As explained in paragraph 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"), panels look at whether: (i) the domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all parties. Notably, panels recognize that "procedural efficiency" underpins the consideration.
The Panel is satisfied that consolidation in this case is not appropriate, on at least two grounds: (i) it would not be procedurally efficient; and (ii) it would not be fair and equitable to all parties. In addition, the Panel strongly doubts that it can be said that all of the disputed domain names are subject to "common control", in the sense in which that concept has been used by previous UDRP panels to date to justify consolidation, although it makes no finding to that effect.
The Complaint as originally filed related to 77 disputed domain names and listed 25 different entities as respondents. The administrative procedure that the Center was required to undertake as a result of this filing involved: (i) numerous communications with four different Registrars; (ii) the withdrawal of the Complaint against 11 of the domain names due to the fact that they were no longer registered; (iii) the receipt of 20 separate communications, from 12 different Respondents or Other Submissions, respectively, each of whom appeared to be operating independently of the others and whose positions were not identical; (iv) the receipt of two separate formal Responses; and (v) the filing of one unsolicited Supplemental Filing by the Complainant. The administrative burden that was imposed on the Center by the Complainant's filing of this single Complaint against the Respondents appears, to the Panel, to have been undue – and certainly not procedurally efficient. Relatedly, but separately, the Panel considers that the burden that would be imposed on the Panel should it proceed to entertain this single Complaint against the Respondents would not be procedurally efficient. That this is so is demonstrated by the fact that the Panel would be required to give separate consideration to the individual positions of the various Respondents from whom communications were received, in addition to considering the position of the remaining Respondents from whom no communications were received.
Also relatedly, but separately, the Panel considers that it would not be fair and equitable to all parties to permit consolidation of the Complaint against the Respondents. That this is so is reflected in the fact that the 20 informal communications and the two formal Responses do not all raise the same considerations. A number of the Respondents asserted that they were never, or are no longer, the registrant of a disputed domain name. Other Respondents asserted (in essence) that their registration and/or use of the disputed domain name was justified on the basis that it was to be, and/or had been, used for marketing of the O2 Worldwide MLM products. At least one Respondent asserted that they had no knowledge of the Complainant when they registered the disputed domain name, while another Respondent asserted (in essence) that the disputed domain name was not confusingly similar to the Complainant's trademark. Despite the apparent diversity of the various Respondents, the Complainant sought to treat each Respondent identically – that is, as if they were one and the same person. While such an approach might be fair and equitable where the respondents are in some respect merely the alter ego of one person (e.g., merely the fictitious names of one person, or persons whose actions are directed by one person), it is unlikely to be fair and equitable where, as in this case, the Respondents appear to be separate persons whose positions are not necessarily identical. If consolidation were permitted in a case such as this, there is the danger that separate Respondents in potentially different positions would be "tarred with the same brush". That would not be fair and equitable.
For the above reasons, the Panel denies the Complainant's request to consolidate its Complaint against the Respondents.
The Complainant separately requested that if any of the disputed domain names were found not to be suitable for consolidation, a consolidated Complaint be permitted to proceed against the remaining disputed domain names. The Panel has given due consideration to this request. The Panel has decided to refuse the request, for the following reasons. The Panel believes that, given the diversity of the Respondents and their relatively loose connection to each other (membership of a multi-level marketing scheme), the Complainant should have understood that consolidation of this Complaint would not be procedurally efficient and would not be fair and equitable to all parties. In the Panel's view, what the Complainant has sought to do is throw a large number of disputed domain names registered by a large number of separate Respondents into one Complaint, request consolidation on the basis of a general assertion of connectedness, rely on the Center to verify the situation of every disputed domain name and Respondent to identify those against whom the Complaint can proceed, and rely on the Panel to work through the case of every Respondent to determine in respect of whom consolidation would be fair and equitable. The Panel does not wish to encourage Complainants to adopt this approach. Accordingly, the Panel will not accede to the Complainant's request to allow consolidation to proceed in respect of some sub-set of the disputed domain names.
For the foregoing reasons, the Complaint is denied. The denial of the Complaint is made subject to the right of the Complainant to file a complaint against any of the Respondents, whether individually or in some combination, in relation to any of the disputed domain names that are the subject of this Complaint.
Andrew F. Christie
Date: June 29, 2017