WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ogilvy & Mather Worldwide v. Robert Hol’kin

Case No. D2020-1367

1. The Parties

Complainant is Ogilvy & Mather Worldwide, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.

Respondent is Robert Hol’kin, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <ogilvymanila.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2020. On May 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 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 Complainant on June 12, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 15, 2020.

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 Respondent of the Complaint, and the proceedings commenced on June 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 7, 2020.

The Center appointed Roberto Bianchi as the sole panelist in this matter on July 23, 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

Complainant Ogilvy & Mather Worldwide, founded by David Ogilvy in 1948, is a leading advertising, marketing and public relations agency with its headquarters in New York. The company currently has 132 offices in 83 countries, including offices in Manila and Moscow. Complainant is a 100 percent wholly owned indirect subsidiary of WPP plc. In a letter sent to Complainant’s counsel, WPP plc’s Chief Counsel states that WPP plc is a public company, whose shares are openly traded on the London Stock Exchange and on the New York Stock Exchange, that the Ogilvy Group LLC is a 100 percent wholly owned indirect subsidiary of WPP plc., and that Complainant is a 100 percent wholly owned indirect subsidiary of WPP plc. Annex 6 to the Complaint

Complainant owns, inter alia, the following trademark registrations:

Russian Federation: OGILVY, Registration No. 297843, Registration date September 11, 2005, Classes 35 and 42.

Russian Federation: OGILVY & MATHER, Registration No. 476539, Registration Date November 12, 2012, Class 35.

European Union: OGILVY, Registration No. 001822618, Registration Date June 5, 2002, filed on August 17, 2000, Classes 16, 35, 38, 41, and 42.

Philippines: OGILVY & MATHER, Registration No. 62527, Registration Date February 5, 1996, filed on June 11, 1993, Class 35.

Ogilvy Group INC owns the following registration:

United States: OGILVY, Registration No. 2544073, Registration date March 5, 2002, filed on April 4, 2000, Class 35 (first use in commerce August 17, 1999).

Complainant also owns the <ogilvy.com> domain name, registered on May 22, 1995.

At the time of rendering the Decision, the disputed domain name resolved to a website displaying adult content and offering sexual services.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. By virtue of its trademark and service mark registrations as shown, Complainant is the owner of the OGILVY trademark. The disputed domain name captures, in its entirety, Complainant’s OGILVY trademark, simply adding the geographical term “manila”, thus rendering the disputed domain name confusingly similar to this trademark. Respondent’s use of this particular term in conjunction with Complainant’s trademark only serves to underscore and increase the confusing similarity between the disputed domain name and Complainant’s trademark as this specific term is closely linked and associated with Complainant. More specifically, in the Philippines Complainant operates as Ogilvy & Mather (Philippines) Inc. and has a physical office location in Manila (Annex 6.3). Thus, by adding this particular geographical term to Complainant’s trademark, Respondent seeks to create the impression that the disputed domain name is somehow connected to Complainant and its trademark and brand, which enhances the confusing similarity with Complainant’s trademark.

Respondent has no rights or legitimate interests in respect of the disputed domain name. The granting of registrations by the relevant authorities to Complainant for the OGILVY trademark is prima facie evidence of the validity of the term “ogilvy” as a trademark, of Complainant’s ownership of this trademark, and of Complainant’s exclusive right to use the OGILVY trademark in commerce on or in connection with the goods and/or services specified in the registration certificates. (Annex 1.) Respondent is not sponsored by or affiliated with Complainant in any way. Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names. Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests. Furthermore, Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s trademark.

Respondent is using the disputed domain name to direct Internet users to a website that features adult content. Numerous past panels have held that use of a disputed domain name that is confusingly similar to a complainant’s trademarks to link to a website featuring pornographic or adult content evinces a lack of legitimate rights or interests.

Respondent registered the disputed domain name on October 15, 2019, which is significantly after Complainant filed for registration of its OGILVY trademark, and also significantly after Complainant’s first use in commerce of its trademark in 1948.

By registering a domain name that incorporates Complainant’s OGILVY trademark in its entirety along with the geographical term “Manila”, Respondent has created a domain name that is confusingly similar to Complainant’s trademark, as well as its domain name. As such, Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. Further, the composition of the disputed domain name makes it illogical to believe that Respondent registered it without specifically targeting Complainant. In light of the facts set forth within this Complaint, it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” Complainant’s brands at the time the disputed domain name was registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The OGILVY trademark is so closely linked and associated with Complainant that Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith – where a domain name is “so obviously connected with such a well-known name and products, […] its very use by someone with no connection with the products suggests opportunistic bad faith”. See e.g., Parfums Christian Dior v. Javier Garcia Quintas, WIPO Case No. D2000-0226.

Because the disputed domain name incorporates Complainant’s OGILVY trademark in its entirety along with the geographical term “Manila”, “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks”. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.

Furthermore, at the time of registration of the disputed domain name, Respondent knew, or should have known, of the existence of Complainant’s trademarks and that registration of domain names containing well‑known trademarks constitutes bad faith per se. In addition to the numerous trademarks filed in connection with Complainant’s business prior to Respondent’s registration of the disputed domain name on October 15, 2019, Complainant has 132 offices across different countries, including in Manila, Philippines, and Moscow (Respondent’s home city). Moreover, Complainant maintains and operates the domain name which it uses to promote its business in Respondent’s home region. Complainant has worked on influential and impactful campaigns and promotions for high-profile clients including American Express, Coca-Cola, IKEA, and KFC, which demonstrates Complainant’s fame. Further, performing searches across a number of Internet search engines for “Ogilvy Manila” returns multiple links referencing Complainant and its business.

The website of the disputed domain name features sexually-explicit, pornographic content, which provides evidence of Respondent’s bad faith registration and use of this domain.

The disputed domain name is causing confusion among Internet users as to the source of the disputed domain name, and must be considered as having been registered and used in bad faith.
Respondent has ignored Complainant’s attempts to resolve this dispute outside of this administrative proceeding. Past Panels have held that failure to respond to a cease-and-desist letter may properly be considered a factor in finding bad faith registration and use of a domain name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

By submitting printouts taken from official trademark databases, Complainant has proved that it owns trademark rights in the OGILVY and OGILVY & MATHER trademarks in various jurisdictions. See section 4 above.

The Panel notes that the disputed domain name consists of the OGILVY trademark plus the geographical term “Manila” and the generic Top Level Domain “.com”. Such additions do not avoid the confusing similarity between the disputed domain name and Complainant’s OGILVY mark. See InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“Is a domain name consisting of a trademark and a descriptive or geographical term confusingly similar to a complainant’s trademark? Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”)

The Panel concludes that the disputed domain name is confusingly similar to the OGILVY mark, in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant contends it has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names. Furthermore, says Complainant, it has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s trademark. The Panel does not see any evidence proving the contrary.

In addition, according to the relevant WhoIs data as provided by the Registrar, the name of the registrant of the disputed domain name, i.e., Respondent, is “Robert Hol’kin”, and nothing on the casefile indicates that this person is known – commonly or otherwise – by the disputed domain name. Therefore, Policy paragraph 4(c)(ii) does not apply.

Complainant has shown that the disputed domain name resolves to a website exclusively displaying adult content and offering Internet users – presumably looking for Complainant´s advertising agency in Manila – to contact related adult services. (Annex 3 to the Complaint.)

In the view of the Panel, offering this kind of content and services to users looking for Complainant’s renowned advertising agency is both a misleading maneuver with regard to Internet users and likely to tarnish Complainant´s OGILVY and OGILVY & MATHER trademarks. In any case, this use of the disputed domain name is not a bona fide offering of goods or services under Policy paragraph 4(c)(i), or 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 pursuant to Policy paragraph 4(c)(iii).

This evidence is sufficient to Complainant to raise a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. For its part, Respondent failed to submit any explanation of his reasons to register and use the disputed domain name as shown. Therefore, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Complainant has shown that it began doing business in 1948 since its foundation by David Ogilvy, and that its registrations for the OGILVY and OGILVY & MATHER trademarks predate the registration of the disputed domain name by several years, including in the Philippines and the Russian Federation.

The Panel recognizes that Complainant is one of the most important advertising agencies in the world.¹ Moreover, considering that the disputed domain name refers to Complainant’s OGILVY trademark and the city of Manila, the Panel cannot overlook the fact that Complainant actually has advertising agencies in Manila and Moscow, in the last of which Respondent purportedly lives. For these reasons, the Panel concludes that Respondent most likely knew of, and targeted Complainant and its marks at the moment of registering the disputed domain name. In the circumstances of this case, this means that the registration of the disputed domain name was in bad faith.

As seen above, the evidence shows that the disputed domain name resolves to a website displaying adult content and offering sexual services of prostitutes, thus misleading and deceiving Internet users presumably looking for Complainant’s advertising agency in Manila. Clearly, this use of the disputed domain name is in bad faith. See Policy paragraph 4(b)(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 web site or location or of a product or service on your web site or location.”)

Lastly, the courier entrusted with delivering the notice of the Complaint to Respondent was unable to do so because the address provided by Respondent at the time of registering the disputed domain name was incomplete, incorrect or false, in violation of the domain name registration agreement. This is an additional factor suggesting that Respondent is acting in bad faith.

The Panel concludes that the disputed domain name was registered and is being used in bad faith.

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 <ogilvymanila.com> be transferred to Complainant.

Roberto Bianchi
Sole Panelist
Date: August 6, 2020

¹ See “www.en.wikipedia.org/wiki/Advertising_agency#Largest_agencies” (visited on August 3, 2020).