|Kläger||O2 Holdings Limited|
|Beklagter||Huanglitech, Domain Admin / Above.com Domain Privacy|
The Complainant is O2 Holdings Limited of Slough, United Kingdom of Great Britain and Northern Ireland represented by Ipulse IP Ltd, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Huanglitech, Domain Admin of Shenzhen, People’s Republic of China / Above.com Domain Privacy of Beaumaris, Australia.
The disputed domain name <02videos.com> is registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2011. On October 20, 2011, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 26, 2011, Above.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 October 26, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center furthermore sent an email communication to the Complainant on October 26, 2011, notifying the Complainant that the Complaint was administratively deficient. The Complainant filed an amended Complaint on October 31, 2011.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2011.
The Center appointed John Katz QC as the sole panelist in this matter on December 5, 2011. 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 intellectual property holding company of the O2 Group of telecommunications companies. The witness statement of A. Clay of Telefónica Europe plc, part of the O2 Group, dated September 29, 2010, and filed in relation to a complaint by the same Complainant in O2 Holdings Limited v. Sarang Hodjati, WIPO Case No. D2010-1887, has been filed in relation to the present Complaint as well. To save cost and unnecessary volume of material the Complainant seeks to rely in this Complaint on that same evidence as used in O2 Holdings Limited v. Sarang Hodjati, WIPO Case No. D2010-1887. There can be no objection to such a sensible course.
The evidence on behalf of the Complainant shows the history of the O2 Group of companies from November 2001 when the goodwill formerly owned by British Telecom and BT Cellnet was acquired by O2 Holdings Limited. The statement discloses that the O2 brand was launched in May 2002 whereupon the group company was incorporated and all use of the intellectual property of the Group devolved upon O2 Holdings Limited as owner of the intellectual property rights.
Although there have been a number of mergers and/or acquisitions throughout England and Europe the O2 brand remains as a stand alone brand.
The primary target market for the O2 brand is the 16-34 age category whose users are high value customers using their mobile phones more frequently than other age groups or cohorts and for whatever functionality the mobile phone may provide.
The growth of business has been immense with the United Kingdom total customer base of O2 at the end of 2008 totaling 19.5 million and at the end of 2009 totaling 21.3 million. It can safely be assumed that by end of 2011 the growth would have been exponential.
The turnover of O2 related services in the first decade of this millennium is measured in the thousands of millions of pounds or euros.
The advertising spent across all media and sectors has been in the tens of millions of pounds in the years 2006, 2007 and 2008.
Independent intellectual property brand awareness organisations recognise O2 as one of the leading brands in the United Kingdom, Europe and elsewhere to become one of the world’s leading brands.
The statement goes on in very considerable detail to chronicle the history of the brand in various European countries and Great Britain and also its awards, sponsorships, advertising and marketing.
The O2 brand is clearly valuable and has been protected over the past decade via a number of registered trade marks, previous domain disputes and court litigation, all designed to protect the brand.
The list of registered trade marks relied upon is impressive and features in all instances put in evidence the core or dominant feature O2.
The disputed domain name was registered on October 21, 2009. A WhoIs check discloses the registrant to be Above.com Domain Privacy of Beaumaris, Victoria, Australia. The contact details for the true Respondent are shown to be Huanglitech of Shenzhen, People’s Republic of China. As noted in the procedural history, the Respondent did not reply to the Complaint.
The Complainant contends that as it has such an enormous reputation in its brand and in particular the core or base brand O2 whether used either on its own or in combination with a suffix, that any domain name or website featuring O2 as part of it will be seen as associated with the Complainant, in this case contrary to the fact. That would also arise even regardless of the registered trade marks by virtue of the common law goodwill attaching to the O2 brand.
The Complainant emphasizes that that is so whether the O2 mark is used as a numeral 0 followed by the numeral 2 or the alphabet capital letter O followed by the numeral 2. The subtlety of the difference between the 0 and the O is so fine that few people would detect in a competing use the difference between the numeral 0 and the capital letter O.
The Complainant uses its brand in a very broad reach of telecommunications services and products and any person seeing the disputed domain name would assume it was in some way a use by the Complainant of a video site to sell, promote or utilize the Complainant’s trade marks and brands for its products and services.
The Respondent has defaulted. Thus, little is known of it other than that it utilizes its site for hosting the disputed domain name. Google searches show that Huanglitech and Above.com have been respondents in previous domain name disputes. Above.com provides a variety of services including a parking service for domain names and anonymity for the true owner of the domain name.
The dealings of Above.com are set out in the decision of the panel in La Touraine, Inc. v. Above.com Domain Privacy / Transure Enterprise Ltd, Host Master, WIPO Case No. D2010-1118. That decision discloses the respondent there is well known as a typo-squatter with some 45 previous cases to its history.
The disputed domain name and associated website are currently blocked. The evidence put in by the Complainant however shows that it has been used as a click through site to default to another site featuring what is euphemistically described as adult content. The site also features on a side banner click through facilities to default to sites apparently offering financial services. Presumably all of these are click through options to pay per view sites thereby deriving for the Respondent revenue.
The printed screens in the Complaint show the typical pass through sites that cyber-squatters use including pay per view or pay per click landing page sites which default to adult or porn sites in this instance and sites offering financial services. That is a not unusual phenomenon in the case of a cyber-squatter seeking to capitalize on the reputation of a well-known brand. Even if no confusion arises such sites generate their revenue by virtue of their apparent but wrongful association with the Complainant’s brand.
The Policy is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that the complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The respondent is given full opportunity to respond. In this instance, the Respondent has defaulted.
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) The respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The respondent’s domain name has been registered and is being used in bad faith.
Each of three elements must be established by a complainant to warrant relief.
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trade marks in which the Complainant has rights.
The Complainant must establish that it has such rights either to common law or registered trade marks or service marks and that those rights are being abused by the Respondent.
In this case the core brand of the Complainant O2 has been taken. All that has been added is “videos”. That is purely a generic description for the type of product or service offered through the core or base mark which is part of O2.
The list of registered trade marks show a number which feature O2 as the prefix for the core mark followed by a generic description “zone”, “money”, “comfort”, “communication”.
Where another party adopts the same core mark particularly as a prefix and followed by a generic descriptor that will generally be regarded as sufficient to make good confusing similarity:
- Nokia Group v. Mr. Giannattasio Mario, WIPO Case No. D2002-0782;
- Marie Claire Album S.A. v. Buy This Domain, WIPO Case No. D2002-0677;
- The Ritz Hotel, Limited v. Damin Kruzicevic, WIPO Case No. D2005-1137.
There can be no dispute but 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 and concomitant goodwill.
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out.
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to the trade mark in suit thereby justifying a proprietory right to the mark.
Under paragraph 4(a)(ii) a respondent can justify its registration of a domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate noncommercial or fair use.
Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no rights or legitimate interests or can claim none.
There is however no evidence of any rights or legitimate interests that the Respondent may have, and it is difficult to imagine what they could be.
In this case the disputed domain name contains within it the core mark of the Complainant together with a generic descriptor as suffix. There is nothing in the screens of the Respondent’s website that would enable any inference to be drawn that the Respondent has any connection with O2, that it has any business associated with the trading name O2 or that it has any trading history that it has itself established in the name or brand O2.
That the Respondent’s website is a landing site that offers a pass through or click through to other sites is of itself indicative of a lack of legitimate business interests in the disputed domain name.
There being no response from the Respondent, the Complainant more than satisfies its obligations of proof under this head.
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out.
As to the third ground, this requires that the disputed domain name be registered and used in bad faith. As has previously been said in other panelists’ decisions together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.
Any person who came across the Respondent’s disputed domain name would immediately assume that it was a domain name owned and operated by the Complainant, contrary to the fact. An attempt by the Panel to access the corresponding website was blocked and therefore unsuccessful.
The Complainant has a large number of registered trade marks that predate the registration of the disputed domain name. It also has its enormous goodwill at common law derivative of its trading.
Given the findings under A and B above, and the Respondent’s default together with its apparent history as disclosed in La Touraine, Inc. v. Above.com Domain Privacy / Transure Enterprise Ltd, Host Master, WIPO Case No. D2010-1118, it is not difficult to conclude that the disputed domain name was registered in bad faith.
But a complainant must also establish use in bad faith. The screens which show the actual use of the disputed domain name by the Respondent on websites that feature pornographic content and also pass through icons to other money or financial services sites, establish that the Respondent is more likely than not capitalizing on the Complainant’s goodwill by attracting Internet users by use of the O2 prefix.
There is no evidence nor any basis to surmise that there is any business connection with the sites that the Respondent utilizes as pass through sites and the prefix O2.
Nevertheless, the important point is that the front page featuring clearly adult content can only be seen as extremely damaging to the commercial interests of Complainant and its O2 brand and is entitled to disavow any association with such websites.
This is not to say that the Complainant can seek to impose any sort of regulation or censorship in relation to sites such as those offered by the Respondent. Nevertheless, the Complainant is perfectly entitled to insist that its goodwill and reputation are preserved and not damaged by what it might reasonably perceive to be inappropriate associations.
There is nothing put in by the Respondent by way of response. So the Panel is left to surmise whether any of the listed grounds under paragraph 4(b) of the Policy would apply. These are all indicia of bad faith and it is clear that at least one or more is established in this instance.
The Panel accordingly finds that paragraph 4(a)(iii) of the Policy is made out.
For all 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 <02videos.com> be transferred to the Complainant.
John Katz QC
Dated: December 14, 2011