WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
O2 Worldwide v. New Ventures Services
Case No. D2017-0800
1. The Parties
The Complainant is O2 Worldwide of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Stobbs IP Limited, United Kingdom.
The Respondent is New Ventures Services of Drums, Pennsylvania, United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <o2email.com> is registered with Domainhysteria.com LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 20, 2017. On April 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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. The Complainant submitted amended Complaints on April 28, 2017 and May 5, 2017, to correct administrative formalities.
The Center verified that the Complaint together with the amended Complaints 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 1, 2017.
The Center appointed Andrew F. Christie as the sole panelist in this matter on June 13, 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.
4. Factual Background
The Complainant is the IP holding company of the O2 Group of telecommunications companies. The latter comprises integrated fixed/mobile businesses in the United Kingdom and Ireland, Germany, Czechia and Slovakia. 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 (United Kingdom trade mark registration no. 2264516). The Complainant has its own email service intended to be used by its customer base, who can log in with their customer details on a dedicated webpage accessible from the website at "www.mail.o2.co.uk".
According to WhoIs data supplied by the Complainant (confusingly, and presumably erroneously, stated in the Complaint to be from a "search conducted on February 18, 2015"), the disputed domain name appears to have been first registered on April 29, 2015. The Complainant has provided a screenshot of the website resolving from the disputed domain name, labelled "October 28, 2016" but stated in the Complaint to have been taken "in March 2017". The screenshot shows the website as containing eight "Related Links", two of which are labelled "O2 Email" and "O2", and the remainder of which are labelled with various phrases that include the words "Games", "Software" and "Dating". At the bottom of the website is the statement "This domain has recently been listed in the marketplace. Please click here to inquire." Currently, the disputed domain name does not appear to resolve to any website.
5. Parties' Contentions
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights because the word "mail" is descriptive of services being provided by the Complainant, and "O2" is recognizable as its distinctive trademark. Thus, consumers viewing the website resolving from the disputed domain name will be confused as to the origin of the website, and will think that it could relate to a website operated by the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Respondent's name does not appear to relate to the disputed domain name in any way; (ii) the Respondent is not running a bona fide business through the disputed domain name, but rather is using the disputed domain name to resolve to a holding page with click-through links intended to generate income; (iii) if the Respondent is looking to offer a service under the name "O2 Mail", in particular a product relating to mail or telecommunications services, that clearly would be a bad faith offering in view of the Complainant's rights in the O2 trademark; and (iv) the similarity of the disputed domain name with the Complainant's registered trademark is such that consumers visiting the website to which it resolves would automatically assume some form of connection with the Complainant, and this could have a negative effect on the Complainant and/or divert trade away from it.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) there is no legitimate reason to register the disputed domain name other than to capitalize on the reputation of the Complainant's brand around the world, and therefore it must have been acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's out of pocket costs; (ii) given that "O2 email" is a service offered by the Complainant to its customers, registering the disputed domain name would prevent the Complainant from reflecting its trademark in a corresponding domain name for relevant goods and services, and could disrupt the business of the Complainant; (iii) the Respondent intentionally registered the disputed domain name for commercial gain, by luring online users to the Respondent's website, and by creating a likelihood of confusion of the Respondent's offering with that of the Complainant as to the source of the website or alluding to a sponsorship, affiliation or endorsement of the Respondent's website and/or goods and services; (iv) as at April 19, 2017, the disputed domain name is listed as "for sale" for GBP 1,077, a price far beyond the Respondent's out of pocket expenses; and (v) the Respondent will have gained click-through income from the relevant links, and there is no reason for any consumers to go to the website other than because of the reputation and rights owned by the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name <o2email.com> contains the Complainant's registered trademark O2 and adds the word "email". The distinctive element of the disputed domain name is O2. The addition of the word "email" does not lessen the inevitable confusion of the disputed domain name with the Complainant's trademark, given that the Complainant provides an email service to its customers. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its O2 trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website which had a number of click-through links, some of which were labelled with the Complainant's trademark and others of which were labelled with words relating to offerings unrelated to the Complainant. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered many years after the Complainant first registered its O2 trademark. The evidence on the record provided by the Complainant with respect to the substantial use and recognition of its trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, the Respondent knew of the Complainant's trademark and knew that it had no rights or legitimate interests in the disputed domain name. It is clear from the evidence in the case record that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion in the minds of the public as to an association between the website and the Complainant. For all of the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <o2email.com> be transferred to the Complainant.
Andrew F. Christie
Date: June 27, 2017