WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
O2 Worldwide Limited v. Domain Administrator, PrivacyGuardian.org / Ryan You
Case No. D2017-2065
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 Respondent is Domain Administrator, PrivacyGuardian.org of Phoenix, Arizona, United States of America (“United States”) / Ryan You of Xiamen, China.
2. The Domain Name and Registrar
The disputed domain name <o2aura.com> (“Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 25, 2017, 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 October 31, 2017 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 November 1, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2017.
The Center appointed Nicholas Weston as the sole panelist in this matter on December 28, 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 operates a telecommunications business with United Kingdom turnover alone exceeding GBP 4 billion in 2005. The Complainant holds registrations for the trademark O2 and O2 AURA in the European Union and numerous other countries which it uses to designate a range of telecommunications and related services. European Union Trade Mark Registration No. 016195711, for the mark O2 AURA, shows an application date of December 21, 2016, and has been registered since June 23, 2017. European Union Trade Mark Registration No. 009279456, for the mark O2, shows an application date of July 28, 2010, and has been registered since December 20, 2013.
The Complainant has operated a website using the domain name <o2.co.uk> since May 2002.
The Respondent registered the Disputed Domain Name <o2aura.com> on December 21, 2016. The Disputed Domain Name previously resolved to a website displaying the statement “02aura.com is for sale! Buy now for $1,500”. The Disputed Domain Name does not currently resolve to an active website.
5. Parties’ Contentions
The Complainant cites its European Union Trade Mark Registration No. 016195711, for the mark O2 AURA, EU Trade Mark Registration No. 009279456 for the mark O2 and numerous other similar European Union registrations, as prima facie evidence of ownership of these marks.
The Complainant submits that the mark O2 is well-known and that its rights in this marks predates the Respondent’s registration of the Disputed Domain Name <o2aura.com> by nearly 15 years. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the O2 AURA trademark and that the similarity is not removed by the addition of the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to an inactive website, and contends that such a respondent has no rights or legitimate interests in the Disputed Domain Name.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the fame and long standing prior use of the Complainant’s trademarks. The Complainant also submits evidence showing that the Respondent offered to sell the Disputed Domain Name for USD 1,500.
The Respondent did not reply to the Complainant’s contentions.
6. Identification of Respondent
Having regard to the remedy sought in the Complaint, and having regard to paragraph 10(b) of the Rules, the Panel must be satisfied that any orders made will address the appropriate Respondent.
Paragraph 1 of the Rules defines “Respondent” as “the holder of a domain name registration against which a complaint is initiated”. The Complainant has named and proceeded against a domain name registration privacy service listed as the registrant of the Disputed Domain Name in the WhoIs prior to the filing of the Complaint.
The use of a privacy service raises three issues for determination by the Panel. First, the Panel must identify the appropriate Respondent. Second, the Panel must determine the applicable mutual jurisdiction. Third, the Panel must determine whether the Center has adequately discharged its responsibility to contact the Respondent by reasonable means.
Given the underlying registrant information disclosed following enquiries differs from the respondent named in the initial Complaint, this Panel is satisfied it is appropriate to add the disclosed underlying registrant to the amended Complaint as a co-respondent and finds that in light of the record the named PrivacyGuardian.org of Phoenix, Arizona, United States and Ryan You of Xiamen, China is the proper Respondent (jointly and severally, “Respondent”) (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.4.2).
As noted having regard to the Complainants’ submissions and the location of the principal office of the Registrar, NameSilo LLC., it appears that the applicable mutual jurisdiction1 is Arizona in the United States.
Finally, the Panel has reviewed the record and finds that the Center has adequately discharged its responsibility to contact the Respondent by reasonable means. The words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand proof of service.
7. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the marks O2 and O2 AURA in the European Union. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the O2 or O2 AURA trademarks, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark O2 AURA followed by (b) the gTLD “.com”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “o2aura”.
It is also well-established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the use of a different gTLD suffix (see Monster Energy Company v. Tank Li, WIPO Case No. D2016-1184; and Monster Energy Company v. Cai Manyi Manyicai, WIPO Case No. D2016-0301).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of respondent’s rights or legitimate interest in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview 3.0, section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because there is no evidence of the Respondent’s use, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services, noting that it resolved to an inactive website, which simply offered the Disputed Domain Name for sale, and now has ceased to resolve to an active website.
This Panel accepts that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and, in the absence of a reply by the Respondent, the Panel finds for the Complainant on paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, the trademark O2 is such a famous mark for telecommunications that it would be inconceivable that the Respondent might have registered the mark without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; O2 Limited v. Sam Ward WIPO Case No. D2005-0094 (“The Complainant’s O2 trademark is very well-known in the United Kingdom”); O2 Holdings Limited v. Guen-Tea Park, WIPO Case No. D2005-0588 (“the Complainant’s trademark is well known worldwide”). The Panel notes that the Disputed Domain Name was registered one day after the trademark O2 AURA was applied for in the United Kingdom.
Further, a gap of ten years between registration of a complainant’s trademarks and a respondent’s registration of the disputed domain name (containing the trademark) could constitute in certain circumstances additional evidence of bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name fifteen years after the Complainant established trademark rights in the O2 mark.
On the issue of use, the offer by the Respondent’s broker to sell the Disputed Domain Name for the sum of USD 1,500 further demonstrates that the Respondent did not have bona fide intent to use the Disputed Domain Name and is evidence of bad faith use in accordance with paragraph 4(b)(i) of the Policy.
Further, the Panel notes that the Disputed Domain Name does not currently resolve to an active website. Previous UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the ‘passive holding’ doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use” (See WIPO Overview 3.0, section 3.3).
In this case, the Complainant has a well-known trademark, no response to the Complaint has been filed, and the Respondent’s broker offered to transfer the Disputed Domain Name for a sum well in excess of its registration costs. This Panel regards such conduct as prima facie evidence of bad faith use in the absence of a response.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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, <o2aura.com> be transferred to the Complainant.
Date: January 11, 2018
1 In general, having regard to the definition of “mutual jurisdiction” in the Rules, it would either be that of the registrant’s address as identified in the registrar’s WhoIs at the time of the filing of the complaint with the Provider or the principal office of the registrar, see Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320. In this case, the Complainant has elected the jurisdiction of the courts at the location of the principal office of the Registrar (i.e. State of Arizona in the United States).