|Kläger||O2 Holdings Limited|
|Beklagter||Contact Privacy Inc. / Flashfire Marketing|
The Complainant is O2 Holdings Limited of Slough, Berkshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) , represented by Ipulse IP Ltd, United Kingdom.
The Respondent is Contact Privacy Inc. of Queensland, Australia / Flashfire Marketing of Toronto, Canada.
The disputed domain name <02sexy.com> is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2011 against Contact Privacy Inc. On October 20, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On October 20, 2011, Tucows 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 25, 2011 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 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 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 24, 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. 2010-1887, 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 Complaint O2 Holdings Limited v. Sarang Hodjati, supra. 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 United Kingdom 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 United Kingdom 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 name disputes and court litigations, 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 is <02sexy.com>. A WhoIs database discloses the registrant of the disputed domain name to be Flashfire Marketing of Toronto, Canada. The disputed domain name was created on March 28, 1999.
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 did not reply to the Complaint in a formal way other than to send emails of October 25 and 31, 2011 which is discussed in more detail below. It is to be noted however that the disputed domain name has been registered since March 1999 which would suggest over a decade of use if it has been active during that period of time and legitimately so. Nevertheless, as the Respondent has defaulted it still remains incumbent on the Complaint to make out its case in accordance with the Policy.
The website screens put in by the Complainant show that the website (when last accessed by the Complainant) was a click-through website which linked to other websites containing pornographic material.
It appears as if the website “www.02sexy.com.com” was no more than a pass-through or click-through website to other websites one of which was “www.freemobesex.com” which website contained commercial and sales information, but which once again was a website offering pornographic material.
The Policy adopted by ICANN 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 a 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. A 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) A respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which a complainant has rights;
(ii) A respondent has no rights or legitimate interests in respect of the domain name; and
(iii) A 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. There is however a slight difference. Whilst that is the core or base part of the Complainant’s suite of trade marks, the disputed domain name begins with the figure 0 followed by the figure 2 so it is 02 rather than O2, which would normally be pronounced “ohtwo” rather than “zerotwo” or “noughttwo”. As there is no forward slash in the Respondent’s zero few people would detect that the disputed domain name begins with the figure 0 rather than the capital letter “O”.
The Respondent has simply added the adjective “sexy” to the prefix.
Given the plethora of trade marks registered in the name of the Complainant and followed in some instances by a descriptor it is clear that the public will have become accustomed to trade marks or brands beginning O2 or 02 as more likely than not being associated with the Complainant.
The use of the adjective “sexy” is a mere descriptor or feature or attribute which in current times would often be regarded by many as no more than a slightly provocative way of describing a product or service but without any sexual connotation. Thus, many people seeing the disputed domain name would likely regard it and express it orally as “Ohtoosexy”. Consumers are now well used to the adjective “sexy” being used in this context. Thus it would not be unlikely for consumers to be misled or fooled into thinking that there was some link or association between a website “02sexy” and the Complainant. This is not to suggest that the Complainant would have any interest in describing its products or services in this manner, rather it is the reasonable perception of the public and whether the public might be misled or confused.
The Panel finds that this is so and that the disputed domain name is confusingly similar to a number of the registered trade marks of the Complainant and also its common law marks.
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 the disputed 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.
This is a difficult issue in the present case. Notwithstanding the default of the Respondent, save for its email responses, it is not sufficient simply to assume that the Respondent has no legitimate rights or can claim none.
The initial burden of proof clearly rests with the Complainant and it must in a case even where the Respondent has defaulted, satisfy the Panel that the Respondent has no basis to claim any rights or legitimate interests.
The disputed domain name has been registered for over a decade and some time before any of the Complainant’s trade mark registrations or its use at common law of the mark O2. Although the Respondent has technically defaulted in not replying formally to the Complaint it has sent to the Centre an email dated October 25, 2011. This email is from the contact person identified as Ourdoms Opensrs with an email address of […]@carbon-wireless.com>. That email says:
“I have owned the domain since 1999, long before the company you acting on behalf of was even incorporated [sic]. Have a good look at the laws regarding this! So quite frankly I will be ignoring this. Thank you.” [emphasis in original]
In response to the amended Complaint as notified on October 31, 2011 the Respondent sent an email, in which it said:
“Flashfire marketing was bought out by Carbonwireless pty ltd 8 years ago. It is the current owner. 02sexy was just part of a parcel of domains that was moved to Carbonwireless pty ltd when it took over the Flashfire Marketing operations. 02sexy was not a focus for Carbonwireless pty ltd but had maintained a minimal presence on the web up until about 4 months ago. All of this falls under Australia Law. So there is a continuance of ownership from 1999. Now your client o2 Holdings has had years to make this claim over 02sexy.com, why now? Anyway there is a perfectly verifiable history of ownership of this domain and has never claimed to have any affiliation with 02 holdings or any other UK based company.”
Even though these are not a formal response under the Policy they cannot be ignored. The emails were copied to or forwarded by the Center to the Complainant. The Panel has taken fully into account what the author of the emails has said.
It is very difficult in these circumstances to tell what rights or legitimate interests the Respondent may be able to claim in the disputed domain name beyond an earlier start date for use of the prefix O2. Given that the first figure is zero or nought rather than the capital letter “O”, it is possible that the spoken articulation of the prefix would and was intended to be verbalized as “oh too sexy”. Indeed that is the likely manner in which the disputed domain name would be spoken or understood.
The considerations under this Section B Rights or Legitimate Interests, to an extent elide with those in the following Section C, Registered and Used in Bad Faith. Accordingly the Panel finds it convenient to discuss the findings under these two Sections together and will proceed immediately to Section C.
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.
This, as with the previous Section, is difficult. As the disputed domain name was registered in 1999, some three (3) or so years before any of the Complainant’s marks were begun to be used, it cannot be said that the disputed domain was registered in bad faith.
However, in general the registration is annual and is renewed every year. It has on occasions been held by other panelists and this Panel previously that an original registration not being made in bad faith can in certain circumstances become a registration subsequently used in bad faith. That can occur if with the passage of time the renewals of the registration can be shown to be in bad faith. The preponderance of views however is that renewals generally do not admit of themselves of any element of bad faith.
The Complainant has not addressed this point at all in its Complaint. Nor has it addressed the emails from the Respondent which must be considered legally to be a claim to prior rights or honest concurrent user. There is simply insufficient material to justify the Complainant’s assertion that the disputed domain name was registered to capitalize on the goodwill of the Complainant and is being used in bad faith. Demonstrably that cannot be so given that the disputed domain name registration predates any of the Complainant’s registered trade marks or trading activities under or by reference to O2. Nor is there any evidence that the registration has passed through various different entities.
The evidence and submissions before the Panel are unsatisfactory as neither deals with the emails from the Respondent of October 25 and October 31, 2011 nor the clear fact that the disputed domain name was registered prior to any rights that the Complainant can claim. This clearly would have been a central issue to focus upon at the outset but more particularly following the referenced email. The Complaint is therefore deficient in this respect.
The Panel had given consideration to issuing an interim decision and inviting further submissions on the limited point. On reflection however this does not appear to be an appropriate course. The Panel’s view is that there is unlikely to be anything to which the Complainant could point and in accordance with the Policy and Rules that could satisfy the Panel in relation to either Sections B or C above.
It is also noted that the Complainant is apparently not without its remedies in other fora. The Respondent appears to be a Canadian entity, Flashfire Marketing of Toronto, Canada. Thus the Complainant, which will undoubtedly have a reputation and concomitant goodwill in Canada, presently has an ability to issue ordinary proceedings in the Canadian courts to protect its rights if it feels that those rights are being violated by the Respondent. In any event, naturally this present decision under the Policy would in no way limit or preclude such option if pursued via the appropriate court system.
For the reasons set out above, this decision is that the Complaint is denied.
John Katz QC
Dated: December 19, 2011