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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

O2 Holdings Limited v. Protected WHOIS, Domain Contact

Case No. D2013-0572

1. The Parties

The Complainant is O2 Holdings Limited of Slough, Berkshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stobbs IP Limited, United Kingdom.

The Respondent is Protected WHOIS, Domain Contact of New Hope City, Sea of Tranquility, Moon of Earth, United States of America (“United States”); Golden, Colorado, United States.

2. The Domain Name and Registrar

The disputed domain name <o2music.com> is registered with Web Business, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2013. On March 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 29, 2013, the Registrar 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 April 4, 2013 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 April 15, 2013.

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 April 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2013.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on May 16, 2013. 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 several trademark registrations for or including the element O2, in different countries and commencing from at least 1995. In addition the Complainant owns trademark rights in O2 MUSIC in the United Kingdom, Germany, and the European Union. Its trademarks are widely known in the telecommunications, entertainment and music sectors.

The disputed domain name was created on September 16, 2011.

The disputed domain name resolves to a website which makes references to the Complainant and also to competitors of the Complainant (Annex 7 of the Complaint). The Complainant alleges that the “click through” website is likely to be generating revenue for the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant alleges, firstly, that the disputed domain name <o2music.com> is confusingly similar to the Complainant’s trademark.

Secondly, it alleges that the Respondent has no rights to or legitimate interests in respect of the disputed domain name.

Thirdly, it alleges that the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.

A. Identical or Confusingly Similar

The Panel holds that the disputed domain name is identical to the Complainant’s trademark O2 MUSIC. It is most likely that consumers will access the “www.o2music.com” website on the assumption that the disputed domain name, is owned by, associated with, or otherwise authorized, by the Complainant.

The Panel concludes that the disputed domain name is identical to the Complainant’s trademark, in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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 legitimate noncommercial 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.” (Policy, paragraph 4(c)).

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the disputed domain name or to seek the registration of any domain name incorporating the O2 MUSIC trademark.

There is no evidence that the Respondent is commonly known by the disputed domain name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather it appears that the Respondent is using the disputed domain name to operate a website that consists of a series of advertising links to sites competing with Complainant services. Such use does not give rise to a legitimate interest.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or:

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.

The Panel finds that there are more than sufficient reasons to find bad faith in this case.

The Respondent registered the disputed domain name on September 2011, while the Complainant’s first O2 trademark registration is dated 1999 and O2 MUSIC trademark registrations were filed on 2004 and 2005. The disputed domain name is identical to the trademarks of the Complainant. The disputed domain name was registered about ten years after the O2 trademark registrations of the Complainant.

The Complainant stated that music is one of the key areas for downloads in the context of mobile phones and that the Complainant operates its own downloadable music site at O2 Tracks.

The Respondent linked the disputed domain name with a domain name parking service which had sponsored links to pay-per-click advertising competing services. The disputed domain name is also for sale. As stated by the Complainant, it is impossible to imagine how any use of the <o2music.com> domain name would not cause confusion to any relevant consumer. Thus, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website.

For the reasons given above, the Panel finds that that this third and final element has been established.

7. Decision

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 <o2music.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: May 22, 2013

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