|Kläger||O2 Holdings Limited|
|Entscheider||Kunze, Gerd F.|
The Complainant is O2 Holdings Limited of Berkshire, United Kingdom of Great Britain and Northern Ireland represented by Boult Wade Tennant, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Daniel Jonsson of Dublin, Ireland.
The disputed domain name <02treatcard.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2009. On January 15, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On January 16, 2009 GoDaddy.com, Inc. 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 23, 2009 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 26, 2009. 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 20, 2009.
The Center appointed Gerd F. Kunze as the sole Panelist in this matter on February 24, 2009. 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.
The Complainant is the IP holding company of the O2 group of companies, which is a leading mobile telecommunications group of companies in Europe with subsidiaries in the United Kingdom (or “U.K.”), Ireland, Spain, Germany and the Czech Republic. The Complainant owns trademark registrations both for the O2 trademark and for the variant trademark 02.
It owns in particular the following registrations for the trademark O2:
U.K. registration No 2279371 in classes 9 and 38; U.K. registration No 2415984 in classes 9,16,38,41,42; CTM registration No 427484 in classes 9 and 16, CTM registration No 2109627 in classes 9,35,36,38,39; international registration No. 908721 in classes 9,16,38,41,42.
For the variant trademark 02 the Complainant owns the U.K. registration 2296255 in classes 9 and 38 and the U.K. registration 2471558 in classes 9,38,41,42.
All these registrations have a filing date which is prior to the registration date of the domain name <02treatcard.com>.
The Respondent registered the domain name <02treatcard.com> on November 11, 2008. He uses the domain name for a so called “click-through” website, which shows a rotating list of links allowing Internet searches to be carried out in respect of different services offered by these links, but not related to the Respondent.
The Complainant submits that it has developed a high reputation in the trademark O2 at least in the United Kingdom, in Ireland and in Germany. It furthermore submits that it has used for a number of years the terms “treats” and “treatcard” and that based on continuous use since 2005 in the United Kingdom and since November 3, 2008, in Ireland it has acquired trademark rights in these terms and also in the combined term “o2 treat card” in the United Kingdom and in Ireland.
These submissions are supported by appropriate evidence.
The Respondent did not reply to the Complainant's contentions. He has therefore not contested the allegations of the Complaint and the Panel shall decide on the basis of the Complaint's submissions, and all the inferences that can reasonably be drawn there from (Rules, paragraph 14(b)).
The domain name <02treatcard.com> consists of a combination of the registered trademark 02, in which the Complainant has rights in the United Kingdom, and the term “treatcard”, in which the Complainant claims trademark rights. The term “treatcard” combines the two descriptive terms “treat” and “card”. If one follows the submission of the Complainant that due to its use of the combined term “treatcard” it has acquired common law trademark rights in the United Kingdom and in Ireland, the domain name <02treatcard.com> is identical to trademarks in which the Complainant has rights (the gTLD <.com> need not be taken into consideration when judging identity or confusing similarity).
The Panel needs not to decide whether the Complainant has acquired trademark rights in the term “treatcard”, a combination of the two descriptive terms “treat” and “card”, because the domain name <02treatcard.com> is confusingly similar to the trademark O2 and 02, which based on the reputation acquired by the Complainant, for which the Complainant submitted convincing evidence, must be considered to be well-known. See also the case O2 Holdings Limited v. Gwen Tea Park, WIPO Case No. D2005-0588 in which the Panel held that the trademark O2 of the Complainant is well-known worldwide. The part 02 of the domain name <02treatcard.com> is quasi identical to the well-known trademark O2, and identical to the variant trademark 02 of the Complainant. The addition of the term “treatcard” cannot exclude the risk of confusion of Internet users, who are aware of the well-known trademark O2. This is particularly true, in view of the fact that customers of the Complainant in the United Kingdom and in Ireland are accustomed to the use of this term (in combination with the trademark O2) by the Complainant. Internet users will therefore believe that the domain name <02treatcard.com> belongs to the Complainant.
02 is not a descriptive term, in which the Respondent might have a legitimate interest. It is quasi identical to the well-known trademark O2 of the Complainant and identical to the Complainant's trademark 02. The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent's use of the domain name, which is including its trademark 02.
Furthermore, none of the circumstances listed under paragraph 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent does not use the domain name for his own legitimate commercial or non-commercial activities, if any, and he has not demonstrated any preparations for such use. Finally, for the same reason that the Respondent does not promote his own commercial activities with the help of this domain name, the Respondent has not been able to become commonly known under it.
In the absence or any submission of the Respondent, the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name <02treatcard.com>.
The Respondent has not offered the domain name to the Complainant for sale and he does not use it for his own non-commercial activity. However, he does not simply stockpile the domain name. He uses it for a “click-through” website, which is set up to provide “click-through” revenue for the Respondent. Internet users, seeking the products or services of the Complainant are, in view of the Complainant's use of the term “o2treatcard”, likely to type “www.O2treatcard.com” (which appears to be one of Complainant's websites) or “www.02treatcard.com” into a web browser in an attempt to locate these products or services. In the latter cases such users will be diverted to the web page of the Respondent where amongst other services also different mobile telecom products are offered. Under the circumstances, the Respondent has intentionally attempted to attract Internet users to his website, for commercial gain, by creating a likelihood of confusion with the Complainants trademarks O2 and 02 as to the source, sponsorship, affiliation or endorsement of the Respondent's website.
The domain name has also been registered, and is being used, with the intention of disrupting the Complainant's business through diversion of Internet users attempts to locate the Complainant and through preventing the Complainant from registering the term <02treatcard.com> as a domain name.
In conclusion the Respondent has registered and is using the domain name <02treatcard.com> in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <02treatcard.com> be transferred to the Complainant.
Gerd F. Kunze
Date: March 2, 2009