WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
O2 Worldwide Limited v. Rodolfo A. Barcenas, Golden State Homes Realty
Case No. D2018-2772
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 Rodolfo A. Barcenas, Golden State Homes Realty, of Montebello, California, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain names <o2dropsbiz.com>, <o2opportunity.biz>, <o2opportunity.com>, <o2opportunity.net>, <o2opportunity.org>, <o2wideworld.biz>, <o2wideworld.com>, <o2wideworld.net>, <o2wideworld.org>, <o2worldwidebiz.com>, <o2-worldwide.com>, <o2worldwide.org>, <o2ww.biz>, <o2ww.info>, <o2ww.net>, <o2ww.org>, <o2www.biz>, <o2www.net>, <02-worldwide.com> are registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2018. On December 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 5, 2018, the Registrar transmitted by email to the Center its verification response:
(a) confirming it is the Registrar for the disputed domain names;
(b) disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint;
(c) confirming the registration agreements are in English;
(d) confirming the disputed domain names were registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to both disputed domain names.
The Center sent an email communication to the Complainant on December 17, 2018, 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 amendment to the Complaint and an amended Complaint on December 20, 2018.
The Center verified that the Complaint together with the amendment to the Complaint and the amended Complaint satisfied the formal requirements of the Policy, 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 December 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 15, 2019.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 21, 2019. 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 a member of the O2 group of telecommunications companies. Since a public launch in the United Kingdom in May 2002, the O2 group has provided telecommunications services by reference to the O2 trademark, particularly in the United Kingdom, Germany, Ireland, the Czeck Republic and Slovakia. It has also acquired the prepaid calling card business conducted under the trademark O2 in the United States of America by Locus Telecommunications.
In 2006, the Spanish telecommunications company, Telefonica, acquired the O2 group for approximately GBP 17.7 billion. In each of the years 2006 – 2008, the O2 group’s revenues were approximately EUR 7 billion. Its advertising expenditure promoting its services by reference to the trademark O2 grew from GBP 53 million to GBP 75 million. By December 2008, the O2 group had some 45 million customers throughout Europe.
The O2 group’s business has expanded into a number of fields including O2 Money, O2 Health, O2 Online, O2 Blue, O2 Music and O2 Drive.
According to the Complaint, the O2 trademark has been ranked in the tope 155 most valuable brands in the world.
The Complaint also includes evidence of numerous trademark registrations in the Complainant’s name throughout the world. For present purposes, it is sufficient to note registrations for “O2”:
- United Kingdom Registered Trademark No. 2264516, which has been registered since June 7, 2002 for a range of relevant services in International Classes 38, 39 and 42;
- European Union Registered Trademark No. 2109627, which has been registered since May 13, 2004 in respect of relevant goods and services in International Classes 9, 35, 36, 38 and 39; and
- United States Registered Trademark No. 3,848,986 which was filed on March 3, 2004 and registered on September 14, 2010 in respect of goods and services in International Classes 16 and 38.
The Complainant owns numerous other registrations in addition to these examples.
The Complainant became the owner of these registered trademarks and the associated goodwill as successor in title to the intellectual property rights of that group previously held by O2 Holdings Limited in December 2015.
The disputed domain names were registered by the Respondent between December 31, 2015 and January 31, 2016 except for the disputed domain name <o2dropsbiz.com> which was first registered on November 11, 2017.
At the time the decision is being prepared, all but two of the disputed domain names redirect or resolve to a website at <o2wideworld.org> or <o2wideworld.com>.
The website which these two disputed domain names resolve to promotes the products and services of “Lurra Life”. The products apparently offered for sale include O2 Drops, Dr Miller’s Detox Tea and Thrive, “Age-Proof Your Heart and Body”. Purchasers of these products appear to become eligible to commission payments and other incentives and bonuses on purchases made by people they introduce to the Lurra Life system.
According to the “About” page of the website, Lurra Life’s three founders are Dan Putnam, Derek Martin and Rich Johnson. Mr Putnam at least has previously been involved in similar, short-lived schemes using the “Let Us Close” marketing system. The Complainant also brought a successful complaint against his registration and use of a number of domain names very similar to the disputed domain names, O2 Worldwide Limited v. Putnam, WIPO Case No. D2017-1909.
At the time the decision is being prepared, the disputed domain name <o2worldwidebiz.com> resolves to a typical parking page with pay-per-click links to Transport, Mobile Phones, Free, Hotline and Tickets.
The disputed domain name <o2wideworld.net> redirects to a URL which does not appear to be active: “http://whyo2worldwide.com/dynamic.php?page=68&user=rudybarcenas”.
In addition to being the registrant and site contact for the Lurra Life website, the Respondent has a website at “www.barcenas.com”. The website at “www.barcenas.com” invites users to opt in to an email list for “o2 Worldwide” and features prominently advertisements for the o2 Worldwide Turnkey Marketing System.
5. Discussion and Findings
No response has been filed. Notice of the Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(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.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of numerous registered trademarks for O2. In addition, as the Complainant contends, the Complainant and the O2 group of companies have a valuable and extensive reputation and goodwill in the trademark.
The second stage of this inquiry simply requires a visual and aural comparison of each disputed domain name to the proven trademark. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (“gTLD”) component of the disputed domain names as a functional aspect of the domain name system. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the gTLD component, the Complainant’s trademark is clearly visible and recognisable in all of the disputed domain names except <02-worldwide.com>. Each of those domain names adds to the Complainant’s trademark only a descriptive term such as “opportunity”, “wideworld” or elements such as “ww” or “www”. Such descriptive or quasi-functional elements do not save the relevant disputed domain name. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
The disputed domain name <02-worldwide.com> substitutes the numeral “zero” for the letter “o”. Given how easy it is to confuse the two characters, that form of substitution constitutes typosquatting which has long been recognised as leading to a finding of confusing similarity. That element of confusion is only reinforced by the addition of “worldwide” to the disputed domain name given the same term is the second word in the Complainant’s name.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g. WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent, or the business at the website which most of the disputed domain names resolve to, affiliated with it.
The disputed domain name is plainly not derived from the Respondent’s own name.
Arguably, the disputed domain names could be derived from the o2 drops which are one of the products being offered for sale from the website to which the disputed domain names resolve.
However, all but the disputed domain name <o2dropsbiz.com> were first registered between December 31, 2018 and January 31, 2016. That was very shortly after the intellectual property rights of O2 Holdings Limited were transferred to the Complainant in December 2015. (The disputed domain name <o2dropsbiz.com> was registered shortly after the Complainant filed the complaint in the dispute leading to o2 Worldwide Limited v. Putnam WIPO Case No. D2017-1909.) It does not appear that there is in fact a company incorporated under the name “o2 Worldwide”. Originally, that is from early in 2016, it appears that the o2 drops were being offered for sale as part of the “let us close” marketing scheme. Now, as noted above, the product is being marketed as a product of “Lurra Life”. The Complainant also points out that elements of the colour scheme and trade dress adopted by the Respondent on its website closely approximate features of the Complainant’s own colour scheme and trade dress.
Bearing in mind the length and extent of use of the Complainant’s trademark and the very valuable reputation and goodwill the Complainant has developed in the trademark, the factors outlined above support an inference that the Respondent did not adopt the name “o2 Worldwide” or the disputed domain names in good faith.
The two disputed domain names which do not, or no longer, resolve to the Respondent’s Lurra Life website can be in no better position.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish, for each disputed domain name, that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
In this case, the reasons leading to the finding that the Respondent does not have rights or legitimate expectations in the disputed domain names also lead to the conclusion that each of the disputed domain names has been registered and used in bad faith. In particular, for the reasons given in section 5B above, the Panel finds on the record in this case that the Respondent registered the disputed domain names with knowledge of the Complainant’s trademark and the intention of trading on the goodwill in that trademark.
Accordingly, the third requirement under the Policy has also been established.
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 names <o2dropsbiz.com>, <o2opportunity.biz>, <o2opportunity.com>, <o2opportunity.net>, <o2opportunity.org>, <o2wideworld.biz>, <o2wideworld.com>, <o2wideworld.net>, <o2wideworld.org>, <o2worldwidebiz.com>, <o2-worldwide.com>, <o2worldwide.org>, <o2ww.biz>, <o2ww.info>, <o2ww.net>, <o2ww.org>, <o2www.biz>, <o2www.net>, <02-worldwide.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: February 4, 2019