The Complainant is O2 Holdings Limited of Berkshire, United Kingdom of Great Britain and Northern Ireland, represented by Ipulse IP Ltd, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Sarang Hodjati of Los Angeles, California, United States of America.
The disputed domain name <o2prepaid.com> (“the Domain Name”) is registered with DomainPeople, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2010. On November 8, 2010, the Center transmitted by email to DomainPeople, Inc. a request for registrar verification in connection with the Domain Name. On November 9, 2010, DomainPeople, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name.
The Center verified that 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 November 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2010. On November 30, 2010 the Respondent requested a 30-day extension of time to file a Response, citing a “personal health issue” (no details were provided) and a desire to obtain legal assistance. The Complainant agreed to the proposed extension, and on December 7, 2010, in accordance with paragraph 5(d) of the Rules, the Center extended the due date for the Respondent to submit a Response to January 2, 2011. The Respondent did not submit any formal Response, but on January 3, 2011 sent an informal email communication to the Center requesting a further extension of time to file a Response, to February 15, 2011. The Respondent stated that his health issue had required an “extension of care”, and that it had “very much effected [his] daily life“ since October 2010. He said that he had not been able to obtain legal assistance because of his illness. The Respondent said that he would be released from the health care facility by February 15, 2011, and “hopefully” could “promptly” respond to the Complaint by then.
On January 4, 2010, the Center declined to order any additional extension of time for the filing of a Response, noting that the Respondent had failed to provide any medical certificate, and that he had already been granted one 30 day extension. The Center advised that it would proceed with the appointment of an administrative panel, and that the panel (when appointed) would have a discretion to accept any late submission the Respondent might submit.
The Center appointed Warwick Smith as the sole panelist in this matter on January 11, 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 Respondent did not submit any further documents.
The Complainant is a leading provider of mobile telecommunications services in the United Kingdom. Formerly operating as BT Cellnet, part of the British Telecom Group, the Complainant was launched under the O2 brand on May 1, 2002.
The Complainant produced with the Complaint a detailed statement from its head of brand management, setting out in considerable detail the various business, promotional, and other activities the Complainant has engaged in since its launch in May of 2002. The statement makes it clear that by December 1, 2004 when the Domain Name was registered, the Complainant had established a substantial reputation, trading under its O2 brand, in the United Kingdom and in certain other countries within the European Union (primarily Germany, Ireland, the Czech Republic, and Slovakia). In a recent survey referred to by the Complainant, the Complainant’s O2 brand was ranked as one of the top 100 most valuable brands in the world.
The Complainant holds registrations for the word mark O2 in the United Kingdom and in the United States. It also holds an O2 Community Trademark. The Complainant’s United States-registered O2 mark covers pre-paid telephone calling cards in international class 16, and pre-paid wireless telephone services (provided via pre-paid telephone calling cards), in international class 38. The application was filed on March 1, 2004, and it eventually proceeded to registration on September 14, 2010.
The Complainant’s registered United Kingdom and Community Trademarks for the word mark O2 date from 2001.
The Complainant has only recently acquired the United States registration of the O2 mark. The mark was originally registered in the United States by a corporation called Locus Telecommunications (“Locus”), which had carried on a business relating to pre-paid telecommunication cards in the United States.
The statement from the Complainant’s brand manager confirmed that the Complainant has used its O2 mark consistently since the brand launch in May of 2002. That use has consisted not merely of the word mark O2, but also graphics consisting of oxygen bubbles and a graduated blue background (i.e. graduated through several shades of blue, from a lighter shade to a darker shade).
The Domain Name was created on December 1, 2004. It resolves to a website (“the Respondent’s website) which contains two prominent logos. One of the logos features three different shades of blue, graduated from a lighter shade on the left to a darker shade on the right.
The only text on the Respondent’s website were the words “Just Pre-paid!” above the larger of the two logos, an email address incorporating the expression “O2”, and the words “Coming soon”.
Apart from attaching a copy of the Respondent’s website, the Complainant did not provide any information in the Complaint about the Respondent.
The Complainant contends:
1. The Domain Name is confusingly similar to the Complainant’s O2 mark. Any relevant consumer seeing the name “O2 Prepaid” would assume that it relates to pre-paid telecommunications services provided by the Complainant.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name. First, the Respondent’s name does not appear to relate to the Domain Name in any way. Secondly, there is no business running through the Respondent’s website. Thirdly, bearing in mind the nature of the Complainant’s rights, there is no rational or legitimate explanation for the Respondent’s registration of the Domain Name. It could only have been registered to capitalize on the reputation and rights owned by the Complainant.
3. The Domain Name was registered and is being used in bad faith. The Complainant relies upon the following:
(i) The Respondent failed to respond to a letter sent by the Complainant.
(ii) The Respondent’s website uses an “O2” email address for contact, and utilizes a range of blue coloring similar to that which has been used extensively in the Complainant’s branding since 2002. The blue color and the blue graduation through to a lighter blue have become synonymous with the Complainant.
(iii) As the Respondent had no reason to register the Domain Name other than to capitalize on the reputation of the Complainant’s brand around the world, the Domain Name must have been acquired primarily for the purpose of selling, renting, or otherwise transferring the Domain Name 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 the Domain Name.
(iv) The Respondent’s registration of the Domain Name would prevent the Complainant from reflecting its O2 mark in a corresponding domain name for a website promoting pre-paid cards and pre-paid telecommunications services. In those circumstances, it is reasonable to assume that the Domain Name was registered primarily for the purpose of disrupting the business of the Complainant.
(v) Bearing in mind the Complainant’s rights, it is impossible to imagine how any use of the Domain Name would not cause confusion to consumers, who would assume that the Domain Name was related to the provision of pre-paid telecommunications services by the Complainant. It is a reasonable assumption that the Respondent intentionally registered the 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 of a product or service on the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
The Policy provides for a summary administrative proceeding, in which the times allowed for taking steps are relatively short. Subject to any extension which might be ordered, a respondent is allowed only 20 days to file a Response, and the panel is obliged to ensure that the proceeding takes place with “due expedition” (Rules, paragraph 10(c)). Absent exceptional circumstances, the panel is required to give its decision within 14 days of its appointment.
In this case, the Respondent was granted an additional 30 days to file a Response, but did not do so. Instead, the Respondent requested a second extension of time, this time for an additional 44 days.
The Respondent referred in his emails to a “personal health issue”, and an alleged need for an “extension of care”, but elected not to explain what the “health issue” was or to provide any supporting medical certificate. Even when the Center (in declining to grant a second time extension) pointed out that the Respondent had failed to provide any medical certificate, the Respondent made no effort to retrieve the situation by obtaining and providing one.
A genuinely ill respondent may pose real difficulties for a panel dealing with a complaint under the Policy. What proof of the illness should be provided? How long should the panel and the complainant wait for the respondent to recover sufficiently to file a response? The answers will depend on the facts of the particular case, but in the normal run of cases it must be presumed that a respondent who is able to receive, understand and respond to email communications from the Center must also be able to provide at least some explanation of the health problem, and why more time is required for the filing of a response. Even a very ill respondent is likely to have a family member or friend who could be asked to contact the Center and explain the situation.
In this case, the Respondent sent several perfectly lucid emails to the Center, and it is obvious that he understood the relevant time limits. Furthermore, he said that he expected to be released from the health care facility where he claimed to be, by February 15, 2011, and that he hoped to be able to attend to the Response on his release.
In the Panel’s view, the Respondent has clearly been capable of explaining any medical difficulties he may have had (and how they are said to have prevented him from filing a timely Response), but for his own reasons he has elected not to do so. The Respondent is entitled to take that stance, but he cannot expect either the Center or the Panel to grant time extensions which are not supported by adequate reasons and appropriate documentation (in this case, a medical certificate). As it is, the vague medical grounds advanced by the Respondent do not provide a sufficient basis for the Panel to consider allowing further time for the Respondent to submit a Response.
As for the claimed need to obtain legal advice, the Respondent has had 50 days to obtain advice – more than twice the amount of time which the Rules allow for filing a Response. Again, this cannot provide a reason for the Panel to delay giving its decision in the proceeding.
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
The incorporation of a complainant’s trademark in full within a disputed domain name will often be sufficient to establish confusing similarity under paragraph 4(a)(i) of the Policy (see for example Nokia Group v. Mr. Giannatasio Mario, WIPO Case No. D2002-0782). And where the disputed domain name consists only of the complainant’s trademark and a term which is descriptive of one of the products which the complainant sells 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).
In the present case, the Complainant is the registered proprietor of the mark O2 in the United Kingdom, the United States, and the European Union, and that mark is incorporated in its entirety within the Domain Name.
And “prepaid” is a well-understood description of one of the mobile telephone services covered by the Complainant’s O2 trademark registration.
Having regard to the foregoing facts, the Complainant has sufficiently proved this part of the Complaint.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“…a Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
In this case, the Domain Name is confusingly similar to the Complainant’s O2 mark, and the Complainant has not authorized the Respondent to use its mark, whether in a domain name or otherwise. There is nothing to suggest that the Respondent or any business operated by the Respondent might be commonly known by the Domain Name, and thus no basis for any right or legitimate interest under paragraph 4(c)(ii) of the Policy. Nor is the Respondent making a noncommercial or fair use of the Domain Name, in circumstances which might raise the possibility of a right or legitimate interest under paragraph 4(c)(iii) of the Policy – the use of the expression “Just Pre-paid!” suggests that the Respondent intends to use the Respondent’s website for commercial gain, and the use (in the Domain Name) of the Complainant’s mark immediately beside a description of one of the Complainant’s services suggests an intention to misleadingly divert consumers. That impression is reinforced by the use on the Respondent’s website of colors which are very similar to those used by the Complainant in its branding.
Those considerations are sufficient, in combination, to establish a prima facie case of “no rights or legitimate interests”, under paragraph 4(a)(ii) of the Policy. The evidentiary burden therefore shifts to the Respondent. The Respondent having failed to file any Response, that burden has not been discharged, and the Complainant must succeed on this part of its Complaint.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 is also satisfied that the Complainant has proved this part of the Complaint.
The Domain Name was created on December 1, 2004, but it is not clear whether the Respondent was the original registrant or whether he acquired the Domain Name at some later date. In the event, it is not necessary to determine the point, as the Panel is satisfied that the Respondent has been using the Domain Name in bad faith under paragraph 4(b)(iv) of the Policy, and in the absence of countervailing evidence suggesting that the Respondent registered the Domain Name in good faith, proof of circumstances falling under that paragraph may in appropriate cases suffice to establish bad faith registration as well as bad faith use, regardless of when the registration may have been effected (see the decision of the majority in A Natterman & Cie GmbH and Sanofi-Aventis v. Watson Pharmaceuticals Inc., WIPO Case No. D2010-0800).
Whenever the Respondent registered or acquired the Domain Name, it was his responsibility under paragraph 2 of the Policy to determine whether the registration of the Domain Name would infringe or violate someone else’s rights, and the Respondent represented to the Registrar when the Domain Name was registered that, to the Respondent’s knowledge, the registration of the Domain Name would not infringe upon or otherwise violate the rights of any third party (Policy, paragraph 2(b), which is deemed to be incorporated in the registration agreement). Even if the Respondent was the original registrant of the Domain Name, by December 2004, the Complainant already held registered O2 trademarks in the United Kingdom and in the European Union, and an application was pending in the United States. A search of the trademark registers maintained in those jurisdictions would have disclosed the application or the registrations, as would a simple Internet search on an engine such as Google have indicated the Complainant and its evidently wide use of those marks, including in the Internet itself.
Furthermore, “O2” is not an obvious name for anyone to think of in connection with the provision of “pre-paid” services of any kind, and in the absence of any Response the Panel considers it more likely than not that, in registering the Domain Name, the Respondent had in mind the pre-paid mobile communications services provided either by the Complainant (in the United Kingdom and in the European Union) or by Locus (in the United States). In either case, the Respondent must have appreciated that any website established at the Domain Name would attract Internet users who would mistakenly assume that such website was operated or associated by or with the Complainant or Locus. In those circumstances, the Panel is satisfied that the Respondent was “targeting” the O2 mark, now owned by the Complainant in all of the relevant jurisdictions, in the sense that the Respondent was seeking to attract to any website which the Respondent might establish at the Domain Name Internet users who were familiar with the O2 mark used in respect of mobile phone services by the Complainant or (in respect of the American O2 registration) by the Complainant’s predecessor in title.
The different shades of blue in the logo on the Respondent’s website, graduated from a pale shade through to a dark blue, suggest that the Respondent has probably been targeting the Complainant, rather than Locus – there is nothing in the evidence to suggest that Locus has used graduated shades of blue in its product branding. In the absence of a Response, the Panel infers that the Respondent has used the graduated-shades-of-blue color scheme to reinforce the false impression, created by the Domain Name itself, that the Respondent’s website is operated by or associated with the Complainant.
Having regard to the foregoing, and in the absence of any Response from the Respondent, the Panel is satisfied that the Respondent probably acquired the Domain Name for the bad faith purpose described at paragraph 4(b)(iv) of the Policy.
It is true that there is not yet any functioning business website at the Domain Name. However, the Respondent has pointed the Domain Name to a website (the Respondent’s website) where Internet users are given advance notice of a new website soon to be established at the Domain Name, and that the new website will sell or promote pre-paid services (only). The use of the word “prepaid” implies that the new website will be operated for commercial gain. While the Respondent appears not to be deriving any immediate commercial gain from his use of the Domain Name, commercial gain appears to be the longer term goal, and in the Panel’s view that is sufficient for the Respondent to be caught by the wording of paragraph 4(b)(iv) of the Policy: the Respondent has used the Domain Name by pointing it to a website (the Respondent’s website) at which site visitors are offered certain information about a new business which is soon to be established at the website. In so doing, the Respondent has intentionally attempted to attract Internet users to that website by creating a likelihood of confusion with the Complainant’s O2 mark, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Just as in the physical world there may be commercial benefit to be derived by posting a sign at a particular location saying that a new business will shortly be established at that location, so in cyberspace a sign saying that a new business will soon be established at a particular domain name is likely to have been posted for (longer term) commercial gain. In such a case, the Panel is of the view that the disputed domain name is already being “used” within the meaning of paragraph 4(b)(iv) of the Policy.
If the Respondent’s use of the Domain Name is caught by paragraph 4(b)(iv) of the Policy, as the Panel has found to be the case, that bad faith use may provide sufficient evidence, in the absence of any evidence to the contrary, that the Domain Name was also registered in bad faith (see the decision of the majority of the panel in A Natterman & Cie GmbH and Sanofi-Aventis v. Watson Pharmaceuticals Inc., supra, at page 7: “Thus the abuse of a domain name as specified in paragraph 4(b)(iv) of the UDRP is evidence of bad faith registration and use but is not conclusive. It may be rebutted by contrary evidence that the registration was in fact made in good faith”). There was no contrary evidence in this case.
If (contrary to the Panel’s assessment) the Respondent is not in the process of establishing an online business selling or promoting pre-paid mobile services at the Respondent’s website, then it is hard to conceive of any reason why the Respondent would (i) register a domain name incorporating the Complainant’s O2 mark and referring to one of its principal services and (ii) use colors on the Respondent’s website which are very similar to colors used consistently by the Complainant in its branding, unless the Respondent’s intention was to provoke an offer from the Complainant for the purchase of the Domain Name at a profit to the Respondent. If the Respondent did register the Domain Name with that intention, the registration and use would be in bad faith under paragraph 4(b)(i) of the Policy.
In the absence of any Response, the Panel concludes that bad faith registration and use has been proved, whether under paragraph 4(b)(i) of the Policy or under paragraph 4(b)(iv).
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, <o2prepaid.com>, be transferred to the Complainant.
Warwick Smith
Sole Panelist
Dated: January 19, 2011