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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

O2 Worldwide Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Ray Merton

Case No. D2017-0175

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Ray Merton of Queensbury, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <my-02.com> (“the Disputed Domain Name”) is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2017. On January 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 31, 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 February 1, 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 February 2, 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 February 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2017.

The Center appointed Isabel Davies as the sole panelist in this matter on March 1, 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 is well-known in the telecommunications, entertainment and music sectors.

Following the assignment of the trademark portfolio from O2 Holdings and Locus Telecommunications, the Complainant is now the proprietor of many registered trademarks for O2 in the United Kingdom, the European Union and United States of America (“United States”) dating back to March 9, 1999 and for MY O2 inter alia in the European Union, registered on February 20, 2009.

The Disputed Domain Name was registered on January 3, 2017. The Disputed Domain Name used to resolve to a website looking similar to the Complainant’s website and displaying a “My O2” account login.

5. Parties’ Contentions

A Complainant

A. The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))

The Complainant states that it is the IP holding company of the O2 Group of telecommunications companies which has become extremely well-known in the telecommunications, entertainment and music sectors in view of their use of their trademarks and the unusual nature of the trademark in the context of these services.

The Complainant states that “My O2” is a section of its website which can be found at “www.o2.co.uk/myo2” where its customers can manage their accounts, view bills and check usage amongst other things.

The Complainant states that in a recent survey its O2 brand was ranked as one of the top 100 most valuable brands in the world and the O2 Group of Companies has won many awards in relation to its brand.

The Complainant also states that it owns many trademark registrations for or including the element “O2”, “02” and “My O2”. These include registered trademarks for O2 in the United Kingdom, the European Union and the United States dating back to 1999 and My O2 in the US dated February 20, 2009.

Accordingly, the Complainant submits, it has established that it owns relevant prior trademark rights in accordance with paragraph 3(b)(viii) of the UDRP Rules.

The Complainant further submits that, in accordance with paragraph 3(b)(ix)(1) of the UDRP Rules it is clear that its earlier rights are confusingly similar to the Disputed Domain Name.

The Complainant states that it is a very large organisation whose core business is telecommunications and entertainment as evidenced in a previous witness statement which is annexed to the Amended Complaint. It is submitted that consumers viewing the site “www.my-02.com” will think that it is linked with the Complainant.

The Complainant submits that the “02” element of the Disputed Domain Name is identical to its European Union Trade Mark No. 15145188, and is almost identical to its other O2 trademarks. It submits that the vast majority of consumers will pronounce both “O2” and “02” as “oh-two” and this demonstrates that some consumers may believe that the Complainant is in fact 02 and not O2. The Complainant refers to O2 Holdings Limited v. Huanglitech, Domain Admin / Above.com Domain Privacy, WIPO Decision No. D2011‑1785 concerning the domain name <02videos.com> wherein the Panel stated “There can be no dispute that “02videos” is confusingly similar to any one or more of the Complainant’s registered trade marks and additionally to its common law trade marks derivative of its extensive trading on concomitant goodwill”. The Disputed Domain Name, the Complainant submits, should be considered confusingly similar to its own domain name as it utilises “02” and, as was found by the previous UDRP panel, consumers would think of the Complainant and its rights in O2 and 02.

The Complainant states that it has conducted a Google search, which it annexes, which clearly shows that when one searches for the term “My O2”, all of the links relate to the Complainant and its “O2” or “My O2” offering. The Complainant states that it utilises the mark MY O2 very extensively as “My O2” is a section of its website where it offers a variety of different services to its customers. The Complainant explains that each customer has its own login to “My O2” and that this is not just used by its United Kingdom business, but also its other businesses, such as Germany and, historically, Ireland.

Therefore, the Complainant submits, it would not be far fetched for consumers to use the Disputed Domain Name to look for the “My O2” login for their account. Consumers may believe that, by typing in “www.my‑02.com”, they would find the “My O2” business of the Complainant. Therefore, if they came across a site entitled “www.my-02.com”, consumers would be confused as to the origin of this site, and could think that it was the Complainant. The Complainant submits that it is clear that the Disputed Domain Name is similar to the various trademark rights of which it is proprietor.

The Complainant states that it has clearly illustrated that it owns confusingly similar trademarks to the Disputed Domain Name. It states that, bearing in mind the fact that it operates in a wide variety of sectors and its customers can login to their “My O2” account, and bearing in mind the fact that the evidence of use of the O2 brand shows how famous it is in the telecommunications field, it is clear that the Disputed Domain Name is confusingly similar to its rights in its O2 trademark and My O2 trademark.

Finally, the Complainant submits, bearing in mind the fact that the mark O2 is distinctive and unusual as a brand, it is plain that the Complainant has established that the Disputed Domain Name is confusingly similar.

B. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;

(Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))

The Complainant avers that the Respondent does not have any legitimate interest in the Disputed Domain Name as the Respondent’s name does not appear to relate to the Disputed Domain Name in any way. Therefore, the Complainant submits, it is clear that the Respondent does not have any rights in relation to the Disputed Domain Name.

The Complainant annexes a printout from the Respondent’s website that is attached to the Disputed Domain Name from January 2017 stating that it is clear that the Respondent has copied the trademarks and branding from the Complainant’s own website. Moreover, it provides a login portal which is almost identical to the Complainant’s. As such, and in view of the fact that the Disputed Domain Name is <my-02.com>, consumers would assume that this website is operated by the Complainant and that they could use this to login to their “O2” accounts. The Complainant submits that it is clear that it is the Respondent’s intention to create confusion in the mind of the consumers to extract personal information from the Complainant’s consumers and states that this is very serious as consumers identities and personal information could be stolen through entering details into their “login” section. As such, the Complainant submits that the Respondent has no legitimate interests in the Disputed Domain Name and that it mainly intends to mislead consumers to extract personal information by creating confusion in the mind of consumers as to its source.

C. The Disputed Domain Name was registered and is being used in bad faith.

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The Complainant states that it believes that there is no legitimate reason to register the Disputed Domain Name other than to capitalise on the reputation of the Complainant’s brand around the world. The way in which it is being used confirms this, the Complainant submits, as it refers to the Complainant, and also uses its branding in an attempt to mislead consumers that it is in fact the Complainant.

In the alternative, the Complainant submits that it was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to it. The fact that the Respondent had used the Complainant’s own brand imagery to attract traffic to the site, the Complainant submits, simply serves to confirm this and confirm that some form of illegitimate intention must have been present in its purchase and on-going use.

Furthermore, the Complainant submits, it would not be far fetched for the Respondent to try to sell the Disputed Domain Name to the Complainant for a large sum of money in order to stop running a corresponding site as the Respondent itself appears to have no legitimate interest in the Disputed Domain Name and so this is a reasonable assumption to draw bearing in mind the rights identified above.

The Complainant also suggests that the Respondent may have acquired the Disputed Domain Name in order to sell this to another party, a “scammer” or to a competitor of the Complainant for a large amount of money which could occur in view of the substantial goodwill in the “O2” brand.

In addition, as “My O2” is a key business area of the Complainant, the Complainant submits that the registration of the Disputed Domain Name would prevent the Complainant from reflecting the mark in a corresponding domain name for such services.

The Complainant also submits that the Disputed Domain Name was registered primarily for the purpose of disrupting the Complainant’s business. The Respondent is using the Complainant’s trademarks and brand imagery and provides a login portal which is almost identical to the Complainant’s. As such, consumers seeing the website associated to it would believe that this is a website operated by the Complainant and as such would attempt to login on the Respondent’s website in order to access to the services of the Complainant. Not only does this mislead the Complainant’s consumers who will not be able to access the services they were looking for – which is in itself a disruption to the Complainant’s business – but the Respondent is very likely to have access to the login details of the Complainant’s consumers attempting to login through the Disputed Domain Name and as a result to their personal details associated with their accounts, which causes very serious security issues and harms the reputation of the Complainant.

The Complainant submits that it is impossible to imagine how any use of the Disputed Domain Name would not cause confusion to any relevant consumer. Any average consumer familiar with the “O2” brand would assume that it was related to the provision of the Complainant’s “My O2” service and so would assume that the business provided was formally connected with the Complainant. As such, the Complainant submits, it is a reasonable assumption that the Respondent intentionally registered the Disputed Domain Name to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website.

As a result the Complainant submits that this registration was registered and is being used in bad faith in accordance with paragraph 4(b) of the UDRP Rules.

B Respondent

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

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a), that must be established by the Complainant to obtain relief. These elements are:

(i) The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

Each of these elements will be addressed below.

The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under, the Rules, including the Respondent’s failure to file a Response.

In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Disputed Domain Name.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant is the IP holding company of the O2 Group of telecommunications companies which has become well-known in the telecommunications, entertainment and music sectors in view of their huge use of their trademarks and the unusual nature of the trademark in the context of these services.

The Panel accepts that “My O2” is a section of the Complainant’s website which can be found at “www.o2.co.uk/myo2.com” where its customers can manage their accounts, view bills and check usage amongst other things.

The Panel accepts that the “O2” brand was ranked as one of the top 100 most valuable brands in the world and the O2 Group of Companies has won many awards in relation to its brand.

The Panel accepts that the Complainant has prior trademark rights which the Disputed Domain Name is confusingly similar to and that consumers viewing the site “www.my-02.com” will think that it is linked with the Complainant. This is evidenced by the Google seach annexed to the Complaint which shows that, on a search of the term “My O2” all of the links relate to the Complainant, and its “O2” or “My O2” offering in which, the Complainant states, it utilises the mark MY O2 very extensively as “My O2” is a section of its website where it offers a variety of different services to its customers including providing customers with their own log in.

The Panel accepts that consumers could use the Disputed Domain Name to look for the “My O2” login for their account. Consumers may believe that by typing in “www.my-02.com” that they would find the “My O2” business of the Complainant.

The Panel finds that the addition of a hyphen does not differentiate the Disputed Domain Name from the Complainant’s trademarks which it is confusingly similar to.

B. Rights or Legitimate Interests

The Panel accepts that the Respondent’s name does not appear to relate to the Disputed Domain Name in any way.

The Panel accepts that the Respondent has copied the trademarks and branding from the Complainant’s website and provides a login portal which is almost identical to the Complainant’s website which creates confusion and can result in personal information being extracted.

Although no arguments have been made by the Complainant, the fact that the Respondent has failed to reply to the Complaint and put in no evidence to counter the Complainant’s submissions that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name the Panel accepts that:

The Respondent does not own any trademark applications or registrations for “My O2” or “O2”.

The Respondent is not commonly known as “My O2”.

The Respondent does not own any domain names that contain the term “My O2” apart from the Disputed Domain Name.

The Complainant has not given its consent for the Respondent to use its registered trademarks in a domain name registration.

The Respondent’s use cannot constitute “fair use” as defined in paragraph 4(c)(iii) of the Policy.

The Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

The Panel accepts that there was no legitimate reason for the Respondent to register the Disputed Domain Name other than to capitalise on the reputation of the Complainant’s brand.

The Panel accepts that the way in which the Disputed Domain Name is being used includes the Complainant’s branding in an attempt to mislead consumers that it is in fact the Complainant or associated with the Complainant.

The Panel accepts that the Respondent has used the Complainant’s own brand imagery to attract traffic to its site and this confirms that some form of illegitimate intention must have been present in its purchase and on-going use.

The Panel accepts that, as “My O2” is a key business area of the Complainant, the registration of the Disputed Domain Name would prevent the Complainant from reflecting the mark in a corresponding domain name for such services.

The Panel also accepts that the Disputed Domain Name was registered primarily for the purpose of disrupting the Complainant’s business as the Respondent is using the Complainant’s trademarks and brand imagery and provides a login portal which is almost identical to the Complainant’s. The Panel accepts that consumers seeing the website associated to it would believe that this is a website operated by the Complainant and as such would attempt to login on the Respondent’s website in order to access to the services of the Complainant. This would mislead the Complainant’s consumers who will not be able to access the services they were looking for – which is in itself a disruption to the Complainant’s business – and the Respondent is very likely to have access to the login details of the Complainant’s consumers attempting to login and as a result to their personal details associated with their accounts, which causes very serious security issues and harm to the reputation of the Complainant.

The Panel accepts that the Respondent intentionally registered the Disputed Domain Name to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website.

In the light of the Panel’s findings set out above, although the Disputed Domain Name may have been registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the its registration ultimately to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to it, the Panel does not need to consider these issues further.

The Panel therefore finds that the Disputed Domain Name was registered and is being used in bad faith in accordance with paragraph 4(b)(iv) of the UDRP Rules.

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 <my-02.com> be transferred to the Complainant.

Isabel Davies
Sole Panelist
Date: March 4, 2017

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