WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

O2 Worldwide v. Nick Kett

Case No. D2020-0028

1. The Parties

The Complainant is O2 Worldwide, United Kingdom (“UK”), represented by Stobbs IP Limited, UK.

The Respondent is Nick Kett, UK.

2. The Domain Name and Registrar

The disputed domain name <o2spain.com> is registered with 1&1 IONOS S.E. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2020. On January 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2020, 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 January 14, 2020 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 on January 16, 2020. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 17, 2020.

The Center verified that the Complaint together with the amendment to the 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 January 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2020.

The Center appointed Clive N.A. Trotman as the sole panelist in this matter on February 19, 2020. 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 factual background is based on information provided in the uncontested Complaint.

The brand and trademark O2 (sometimes displayed as O2 or O2) is that of a major group of telecommunications companies, of which the Complainant is the IP holding company, operating worldwide, including Spain. The O2 brand is also well known in the context of entertainment and music and has been ranked as one of the top 180 most valuable brands in the world. The Complainant also now owns such rights in the trademark O2 as were previously owned by Locus Telecommunications in the United States of America (the “USA”).

The Complainant owns at least 15 registered trademarks for O2, of which the following are representative for the purposes of the present proceeding:

O2, UK Intellectual Property Office (UKIPO), registered October 31, 2008, registration number UK00002415862, classes 16, 35, 36, 37, 38, 39, 41, 42, 43, 44, and 45;

O2, United States Patent and Trademark Office (USPTO), registered September 14, 2010, registration number 3848986, classes 16 and 38;

O2, European Trademark, registered December 20, 2013, registration number 009279456, classes 1, 2, 4, 6, 7, 8, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 39, 42, 43, 44, and 45.

Nothing of significance is known about the Respondent except for the contact details that were provided to the Registrar for the purpose of registration of the disputed domain name, which was evidently registered on October 3, 2018. The disputed domain name has resolved recently to a website comprising a page with links or link category headings concerning accommodation, mobile phones and phone cards.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has rights as the owner of the trademarks listed in section 4 above and has attached copies of registration records available online, showing them to be registered in its name. The rights in the relevant trademarks were transferred from a predecessor company to the Complainant under its present name on December 31, 2015.

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant’s trademarks comprise either the element O2 in standard character format, or incorporating the digit “2” as a subscript or superscript character. The Complainant says the trademark element O2 is wholly incorporated as a distinctive and dominant part of the disputed domain name and that the additional element, being the geographical location “Spain”, will be perceived as a descriptive element.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant’s trademarks and its substantial reputation under the O2 trademark predate the registration date of the disputed domain name on October 3, 2018.

The Complainant says that the Respondent’s use of the disputed domain name has been to divert consumers misleadingly or to tarnish the Complainant’s trademarks and it has not apparently had any other usage. The inclusion of the Complainant’s trademark together with the word “Spain” would cause consumers to associate the disputed domain name with the Complainant. The Respondent is not evidently known by the disputed domain name. The registered ownership of the disputed domain name is hidden, which in conjunction with the use of the corresponding website to host click-through advertising links relating to mobile phones, appears to point to a lack of legitimate interest by the Respondent. The Complainant launched its offering in Spain under the O2 trademark in September 2018. It is inconceivable that the Respondent was not aware of the Complainant and its rights in the O2 trademark when the disputed domain name was created in October 2018.

The Complainant contends that the disputed domain name was registered and is being used in bad faith and reiterates the lack of any legitimate reason for its registration other than to capitalise on confusion with the Complainant’s trademark. The Complainant says it sent a letter to the Respondent stating its position. There was no reply.

The Complainant is concerned that the disputed domain name may have been acquired with the intention of eventual sale to another party, which could be a competitor of the Complainant or an entity involved in scams. Given the substantial goodwill in the Complainant’s trademark, the disputed domain name may attract a high price. It is impossible to imagine how any use of the disputed domain name by another would not cause consumers to confuse it with the Complainant. The Complainant says the registration of the disputed domain name appears to have been primarily for the purpose of disrupting the business of the Complainant and as a blocking registration. The corresponding website has recently displayed links relating to mobile phones, through which links the Respondent may benefit by the attraction of visitors by confusion with the Complainant.

The Complainant has annexed a comprehensive Witness Statement signed as believed to be true by the Head of Brand Management of Telefónica Europe plc. The Witness Statement, which is dated September 29, 2010, and runs to some 63 pages, canvasses in exhaustive detail the history and reputation of that company, and others in the O2 group, in a number of European countries individually, including the UK, Germany, Ireland, the Czech Republic, and Slovakia.

The Complainant has cited previous decisions under the Policy, including cases involving the Complainant, that it considers to be relevant.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:

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

(ii) you have no rights or legitimate interests in respect of the domain name; and

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

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

A. Identical or Confusingly Similar

The copies of trademark registration documentation produced in evidence are accepted by the Panel as confirming the Complainant’s ownership of and rights in the trademarks for O2 listed in section 4 above.

The disputed domain name <o2spain.com> starts with “o2” which, since upper and lower case are not distinguished in domain names, is the closest possible representation of the Complainant’s trademark O2. To that extent the disputed domain name is similar to the Complainant’s trademark. The additional word “Spain” in the disputed domain name can reasonably be interpreted as a reference to the European country of Spain, which the Panel does not find to be distinguishing in this instance. On the basis of a side-by-side comparison, the Complainant’s trademark is easily recognisable in its leading position within the disputed domain name, and incidentally is unlikely to be pronounced in any other way than “O, 2”, being widely recognised as the chemical notation for molecular oxygen (written O2). The Panel finds confusing similarity between the disputed domain name and the Complainant’s trademark and finds for the Complainant under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has stated prima facie that the Respondent does not have any legitimate interest in the disputed domain name.

Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:

“(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 a 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”.

The Respondent has not asserted or produced any evidence of use or intended use of the disputed domain name in connection with any bona fide offering of goods or services. The screen capture of the website to which the disputed domain name has resolved shows only links connected with accommodation and telecommunications, which the Panel does not find to constitute bona fide use within the meaning of paragraph 4(c)(i) of the Policy. There is no evidence the Respondent, named Nick Kett, has ever been known as O2 (paragraph 4(c)(ii) of the Policy) or that the disputed domain name has been in noncommercial or fair use (paragraph 4(c)(iii) of the Policy).

The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.

The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel.

In terms of bad faith, the Complainant has suggested various possible motives that may lie behind the Respondent’s registration and use of the disputed domain name. These include at intention to capitalise on the Complainant’s trademark by confusion, particularly in connection with the launching of O2 telephone services in Spain in September 2018, shortly after which the disputed domain name, including the word “Spain”, was registered; the potential for the Respondent to sell the disputed domain name for a high price, given the Complainant’s fame, for use by others fraudulently or in competition with the Complainant; or as a blocking registration to prevent the Complainant from itself registering the disputed domain name. The voluminous Witness Statement submitted by the Head of Brand Management of Telef√≥nica Europe plc, compiled for a different case and now nearly 10 years old, nevertheless provides sufficient detail of the history of companies that have used the O2 trademark, including their scale, advertising, sponsorships, awards, and reputation, to leave little doubt that the O2 trademark is internationally known and of considerable value.

The most concrete evidence of bad faith, however, is to be found in the screen capture, produced by the Complainant on December 10, 2019, of the website to which the disputed domain name resolved at that time. The single page appears to be a parking page, headed with the disputed domain name. Below are stated to be “Related Links”, headed respectively “Accommodati - Malaga Hotels; Mobile Phone - Mobil Phone; Mobile Phones - Prepaid Karte”.

A reasonable interpretation of the purpose of the Respondent’s parking page is that the disputed domain name is held for some speculative purpose, which the Respondent may not yet have decided. It has become common to await unsolicited inquiries from potential purchasers rather than to advertise a domain name for sale, in the hope possibly of avoiding a finding under paragraph 4(b)(i) of the Policy. Whatever the Respondent’s intentions, the disputed domain name has meanwhile apparently been monetised, in accordance with the usual business model, through a revenue-sharing service that generates remuneration from pay-per-click advertising links. It may reasonably be concluded, on balance, that the Respondent is using or intending to use the disputed domain name for the commercial purpose of deriving revenue from advertising links, which activity in turn relies on Internet users visiting the corresponding website. The Panel finds it more likely than not that a proportion of visitors would have done so by being confused into expecting to be taken to the Spanish online presence of the Complainant, if only initially, constituting attempted initial interest confusion. On the totality of the evidence, and on the balance of probabilities, the Respondent’s activity is found to fall within the contemplation of paragraph 4(b)(iv) of the Policy, constituting use of the disputed domain name in bad faith. Furthermore, on the evidence, the Panel finds that the disputed domain name was registered for the bad faith purpose for which it has been used. Accordingly registration and use of the disputed domain name by the Respondent in bad faith are found by the Panel in the terms of paragraph 4(a)(iii) of the Policy.

The Complainant has produced a copy of a letter sent to the Respondent on February 14, 2019, explaining the Complainant’s rights, and requesting transfer of the disputed domain name and cessation of the use of the Complainant’s trademark. There was no reply. The Panel finds bad faith to be compounded by the Respondent’s failure to acknowledge the Complainant’s cease and desist communication (Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632).

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 <o2spain.com> be transferred to the Complainant.

Dr. Clive N.A. Trotman
Sole Panelist
Date: February 26, 2020