|Kläger||O2 Holdings Limited|
|Beklagter||Huang Li Technology Corp|
The Complainant is O2 Holdings Limited of Slough, Berkshire, United Kingdom of Great Britain and Northern Ireland, represented by Ipulse IP Ltd, United Kingdom.
The Respondent is Huang Li Technology Corp c/o Dynadot Privacy of San Mateo, California, United States of America.
The disputed domain name <02academy.com> (the “Domain Name”) is registered with Dynadot, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2012. On April 17, 2012, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the Domain Name. On the same date, Dynadot, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 20, 2012.
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” 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 April 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2012.
The Center appointed Nicholas Smith as the sole panelist in this matter on May 23, 2012. 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 telecommunications companies. Formerly operating as BT Cellnet, part of the British Telecom Group, the O2 Group was launched under the O2 brand on May 1, 2002.
Since 2002, there has been considerable growth in the O2 business. At the end of 2009 the customer base of the Complainant and its related entities in the United Kingdom was 21.3 million people.
On November 6, 2008 the Complainant and Live Nation/Academic Music Group (hereinafter “AMG”) announced a strategic alliance. As part of that alliance, on January 1, 2009 11 venues owned by AMG were renamed “O2 Academy” followed by a reference to the venue’s geographical location. Numerous concerts and other performances have occurred at the O2 Academies in various locations around the United Kingdom since January 2009.
The Complainant has held a trade mark registration for O2 (the “O2 Mark”) since 2002. In 2004, the Complainant filed an application for the O2 Mark to be registered as a trade mark in the United States, where the Respondent is based. The O2 Mark was registered in the United States in 2010. The Complainant has also registered as a mark the number “02” (the “02 Mark”) in the United Kingdom since 2004.
The Domain Name <02academy.com> was created on July 2, 2009. It currently resolves to an Internet site consisting of a series of links to third party sites and advertisements, some of which relate to concert tickets and concert venues including the O2 Academy.
The Complainant makes the following contentions:
(i) that the Domain Name is confusingly similar to the Complainant’s O2 Mark and in the alternative, to the Complainant’s 02 Mark;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the O2 Mark and the 02 Mark. It holds several registrations for the O2 and 02 Marks around the world, including in the United States. The Complainant submits that the O2 Mark has become well known in the the telecommunications sector, and also in the entertainment and music sector.
Bearing in mind the extensive nature of the reputation and rights owned by the Complainant in the O2 Mark in relation to entertainment and telecommunications it is undoubted that any relevant consumer seeing the Domain Name would assume that it relates to the Complainant and in particular the O2 Academy venues that are branded by reference to the Complainant.
There appears to be no legitimate interest held by the Respondent in relation to the Domain Name. The Respondent’s name does have any relation to the Domain Name, nor does any legitimate interest arise from its use of the Domain Name. Bearing in mind the nature of the Complainant’s rights there is no rational or legitimate explanation for the registration of the Domain Name unless it is to capitalise on the reputation and rights owned by the Complainant in the O2 and 02 Marks.
The Complainant submits that there is no legitimate reason to register the Domain Name other than to capitalise on the reputation of the Complainant’s O2 Mark. The number “02” (or its equivalent “O2”) at the start of the Domain Name has no relevance to the content of the website. The only relevance that the number “02” could have is to the Complainant and its reputation in its O2 and 02 Marks.
By using the Domain Name the Respondent attracts consumers to its website, and to the websites linked through its website, by tricking customers into thinking it is connected to the Complainant. Once a visitor visits the site, if they decide they want to click on the links, the Respondent will generate money from the site. This amounts to registration and use of the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the O2 Mark, having registrations for O2 as a trade mark throughout the world, including in the United States, where the Respondent is based. The Complainant also owns the 02 Mark, having registrations for 02 as a trade mark throughout the world.
The addition of a generic term to a trade mark is not sufficient to provide any distinctiveness to a domain name – see O2 Holdings Limited v. Sarang Hodjati, WIPO Case No. D2010-1887 and O2 Holdings Limited v. Huanglitech, Domain Admin / Above.com Domain Privacy, WIPO Case No. D2011-1785, both involving the present Complainant. Where the disputed domain name consists only of the complainant’s trademark and a term which is descriptive of a good or service provided by a complainant under that mark, a finding of confusing similarity is almost inevitable (see, for example, Marie Claire Album S.A. v. Buy This Domain, WIPO Case No. D2002-0677 and The Ritz Hotel Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137).
The Domain Name consists of the 02 Mark and the suffix “academy”. Given the visual and (sometimes) aural similarity between “02” and “O2” and the fact that the Complainant has naming rights to a chain of arenas known as the “O2 Academy” the suffix “academy” does not distinguish the Domain Name from the 02 Mark or the O2 Mark in any significant way. The Panel finds that the Domain Name is confusingly similar to both the Complainant’s 02 Mark and the O2 Mark.
Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the 02 or O2 Marks or a mark similar to the 02 or O2 Marks. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate non-commercial use. Rather it appears that the Respondent is using the Domain Name to operate a portal website that consists of a series of links to sites that sell, among other things, concert tickets including concert tickets to the Complainant’s O2 Academy venues. Such use does not give rise to a legitimate interest.
The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name’ registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the O2 Mark at the time the Domain Name was registered. The O2 Mark has been extensively promoted by the Complainant both in the United Kingdom and internationally. Furthermore, the Domain Name precisely replicates the name “O2 Academy”, which is the name of a number of live music venues in the United Kingdom branded by reference to the Complainant. Finally, the website that the Domain Name revolves to contains references to the O2 Academy and advertisements for tickets to shows at the various O2 Academies.
The registration of the Domain Name in awareness of the Complainant’s Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The website at “www.02academy.com” consists of a portal website that consists of a series of advertisements and links to third party sites, some of which appear to offer the sale of concert tickets. In particular the website contains advertisements offering to sell tickets to events held at the O2 Academies.
Such portal websites are operated for commercial gain, as advertisers generally pay on a pay-per-click basis for Internet users redirected to their sites. Consequently, the Respondent registered and is using the Domain Name to intentionally attempt to attract, for commercial gain, internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <02academy.com> be transferred to the Complainant.
Dated: May 25, 2012