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O2 Limited v. Sam Ward [2005] GENDND 299 (20 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

O2 Limited v. Sam Ward

Case No. D2005-0094

1. The Parties

The Complainant is O2 Limited of Slough, Berks, United Kingdom of Great Britain and Northern Ireland (the “Complainant”), represented by Boult Wade Tennant, of London, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Sam Ward, of Blackpool, Lancs, United Kingdom of Great Britain and Northern Ireland (the “Respondent”).

2. The Domain Names and Registrars

The disputed domain names <02airwave.com>, <02airwave.net>, <02airwave.org> and <02services.com > (together the “Domain Names”) are registered with Easyspace, Tucows and eNom (together the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2005. On January 28, 2005, the Center transmitted by email to the Registrars requests for registrar verification in connection with the Domain Names. On January 28, 2005, eNom transmitted by email to the Center a partial verification response in respect of <02services.com> confirming that the language of the proceedings is English and that that Domain Name would remain under Registrar Lock throughout the proceeding. In addition to eNom’s partial response, the Center made a WHOIS printout, which showed that that Domain Name was registered with eNom, and that the Respondent was the current registrant. On February 1, 2005, Tucows transmitted by email to the Center its verification response in respect of<02airwave.net> and <02airwave.org> confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. On February 15, 2005, Easyspace transmitted by email to the Center its verification response in respect of <02airwave.com> confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 4, 2005. 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”), 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 Amended Complaint, and the proceedings commenced on March 8, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2005.

The Center appointed Tony Willoughby as the sole panelist in this matter on April 6, 2005. 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.

On or about January 28, 2005, in advance of formal notification of the Complaint, the Respondent sent an email to the Center purporting to respond to the Complaint. In the absence of anything else, the Panel proposes to treat that email as the Respondent’s response to the Complaint, it having been sent to the Center shortly after he had received the Complaint from the Complainant.

4. Factual Background

The Complainant is O2, the result of a demerger from BT in November 2001. O2 is a household name in the UK, being a leading provider of mobile communications services under that name in the UK, Germany and Ireland.

The Complainant is also the owner of O2 Airwave, a digital emergency communications service, which it launched in 2002.

The Complainant is the proprietor of a variety of trademark registrations of or incorporating the mark O2 including, for example, UK registration number 2,233,188 for O2 dated May 19, 2000, for various goods/services in Classes 16, 18, 25, 38 and 41. O2 AIRWAVE is the subject of further UK trademark registrations in the name of the Complainant.

Little is known of the Respondent save for his name and address and the fact that he appears to be the prime mover behind a limited company, 02 Airwave Limited, of the same address, the respondent in a related case, O2 Limited v. 02 Airwave Limited, WIPO Case No. D2005-0095. The Domain Names were registered on various dates in January, May and June 2004.

The Respondent is also the proprietor of a number of domain names in the <.co.uk> sub-domain, which feature 02 (i.e. zero2) followed by ‘airwave’, ‘services’ and ‘ireland’, being names used by the Complainant in conjunction with its primary mark O2.

There have been email communications between the parties in which the Respondent has:

a) claimed that his “company and website registrations were actioned well before the launch of [the Complainant’s] O2 business” (email dated September 21, 2004);

b) described his name variously as ‘zero2’ (email dated September 21, 2004) and ‘nil2’ (email dated July 15, 2004);

c) indicated that, having read about O2 T-shirts put out by the Complainant, is himself getting T-shirt designs produced featuring the 02 AIRWAVE, 02 SERVICES, 02 IRELAND and 02 trademarks (email dated July 15, 2004); that email goes on “I do not think that my T shirts will have the same message as yours.”

d) indicated that his “business is non-destructive testing mainly ultrasonics, radiography, magnetic particle and dye pennetrant inspection” and that he is “also qualified for airwave inspection due to the course that [he] took in the USA”. (email dated September 21, 2004). In that email, he also goes on to say: “should any legal action be taken by your client, copies of my qualifications and extensive experience shall be produced.”

The Respondent’s final email to the Complainant’s representative is dated September 22, 2004, and reads:

“Sorry to trouble you once again. As I have stated, I am willing to release all my domain names and liquidate my company to resolve this matter with your client paying all costs, but this still leaves me out of pocket with the time and advice that I have had to seek, also stationery, business cards etc. I do not see why I have to be out of pocket. If this matter can be resolved, I can’t see why we cannot come to a settlement.”

5. Parties’ Contentions

A. Complainant

The Complainant points to its trademark registrations for O2 and O2 AIRWAVE and to the fact that on its website it makes prominent use of the name O2 Services. The Complainant contends that the Domain Names are confusingly similar to its O2 and O2 AIRWAVE trademarks and to its O2 Services trading name.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names were registered and are being used in bad faith.

The Complainant points to the fact that all the Domain Names (and the related domain names of the Respondent and 02 Airwave Limited) ‘track’ the Complainant’s names and differ only in the fact that the Respondent is using a zero whereas the Complainant uses the letter “O”.

The Complainant contends that this cannot be coincidental claiming, contrary to what the Respondent has claimed, that in the case of each of the names in question, the Complainant’s use has predated the Respondent’s registration of the corresponding domain name.

The Complainant contends that the Respondent’s explanations for selection of the Domain Names and the related domain names are specious and have been inconsistent. The Complainant also points to the threat evident in the email relating to the T-shirt designs dated July 15, 2004, and quoted in the Factual Background (above).

The Complainant contends that confusion has occurred among staff at the Complainant with emails going astray. The Complainant contends that it was this confusion which prompted the Complainant to make contact with the Respondent back in April 2004.

The Complainant points to what it regards as being abusive behaviour on the part of the Respondent indicative of the Respondent’s bad faith intent, namely the fact that, following the Complainant having made its concerns clear to the Respondent, the Respondent proceeded to set up his company, 02 Airwave Limited, in May 2004, and also to register three of the four Domain Names and the other related domain names.

The Complainant observes that while the Respondent claims that the names were intended to be used for his non-destructive testing and airwave inspection business, no explanation has been given for the 02 element of his names even if the other parts of the names are apt.

B. Respondent

The Respondent did not formally file a Response to the Complainant’s contentions, but, as indicated above, the Panel is prepared to accept as a response the email from the Respondent to the Center shortly prior to the commencement of this administrative procedure.

The Respondent contends that he registered the first of the Domain Names, <02airwave.com>, in good faith with the intention of building a website dedicated to Non Destructive Testing.

He contends that nothing that he was planning to use that Domain Name for could be confused with the activities of the Complainant.

He contends that he did not acquire any of the Domain Names for the purpose of selling them at a profit to the Complainant. He says that reluctantly he will be prepared to release the Domain Names to the Complainant, but only on the basis that a fair offer for transfer of the Domain Names is made to him to cover costs incurred such as the taking of advice and the necessary changes to his business stationery.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names the Complainant must prove that

(i) The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Names; and

(iii) The Domain Names have been registered in bad faith and are being used in bad faith.

A. Identical or Confusingly Similar

For the purpose of assessing identity or confusing similarity, the domain suffix can be ignored. Accordingly three of the Domain Names feature the prefix 02 (zero 2) in combination with the name ‘airwave’ and the fourth features the same prefix in combination with the word ‘services’.

The prefix is highly distinctive and very similar to (indeed, to many, indistinguishable from) the Complainant’s famous trademark O2. Moreover, ‘Airwave’ and ‘Services’ are words/names of which the Complainant makes regular use in combination with its O2 trademark. O2 AIRWAVE is a registered trademark of the Complainant.

The Panel finds that the Domain Names and each of them are confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

While the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Names, the Complainant does not address this issue directly in the Complaint. The Complainant’s case in this regard appears to be that its case under the heading of ‘bad faith’ demonstrates that the Respondent can have no rights or legitimate interests in respect of the Domain Names.

Clearly, the Respondent must have been aware of the Complainant’s trademarks and trading names when he registered the various domain names (including the Domain Names). The Complainant’s O2 trademark is very well-known in the United Kingdom. The evidence in the Complaint clearly establishes that the Complainant’s rights pre-date the registration by the Respondent of the Domain Names. The Respondent’s unsupported assertion to the contrary in the correspondence is contradicted by the documentary evidence. In the absence of a credible explanation from the Respondent, the Panel cannot accept that the similarities between the Domain Names and the Complainant’s trademarks are purely coincidental.

There is no evidence (beyond a bare assertion as to intent) to suggest that the Respondent has ever made preparation to use the Domain Names or any of them for a bona fide offering of goods or services, still less has the Respondent produced any evidence that he has so used the Domain Names or any of them.

The Respondent’s name is Sam Ward, not anything corresponding to any of the Domain Names or any name approximating to the Domain Names. He might argue that one of the names by which he is known is his company name, 02 Airwave Limited, but since that company name was registered after the Complainant had launched its O2 Airwave service and after the Respondent had been approached by the Complainant, the Panel discounts that possibility. There is no credible evidence before the Panel to suggest that the Respondent can properly be said to be known by the Domain Names or any of them.

Nor is there any evidence before the Panel to suggest that the Respondent has made any legitimate non-commercial or fair use of any of the Domain Names.

In these circumstances, there is clearly a case for the Respondent to answer, but the Respondent has not seen fit to provide any proper and/or properly particularized answer. This is surprising given the Respondent’s statement in the email of September 21, 2004, that “should any legal action be taken by your client, copies of my qualifications and extensive experience shall be produced.” This statement was made in the context of a debate as to the rights and wrongs of the Respondent’s selection of the various domain names (including the Domain Names). The Respondent’s sole response to the Complaint has been the email referred to under Procedural History and Respondent’s contentions (above). He has not produced evidence of those qualifications which he seems to believe are relevant, nor has he explained why he selected the ‘02’ prefix.

The Panel cannot think of any sensible reason why the Respondent could be said to have rights or legitimate interests in respect of the Domain Names or any of them. Accordingly, in the absence of a proper explanation from the Respondent, the Panel finds that the Respondent has no such rights or legitimate interests.

C. Registered and Used in Bad Faith

While the Complainant contends that the Domain Names were registered in bad faith and are being used in bad faith, the Complainant does not expressly tie that allegation to any of the examples set out in paragraph 4(b) of the Policy. Indeed, the claim is summarized somewhat speculatively in the Complaint as follows:

“Putting together the variety of stories that have been suggested in respect of the reasons for owning the various relevant domain names, with the fact that Mr. Ward refused to transfer the domains in question without some form of payment, coupled with the fact that the 02IRELAND.COM and .CO.UK domain names were only registered after an initial approach and initial contact between the respective parties, we can only assume that the domain names in question were both registered and are being used in bad faith.”

However, the Panel does not feel that that summary does justice to the substance of the Complaint. Here we have a registrant who registers a series of domain names featuring a distinctly special prefix, namely ‘02’ (zero2), a prefix which most people in the UK would immediately associate with the Complainant’s trademark O2. He registers his company name (a name substantially identical to a well-known service mark of the Complainant, O2 AIRWAVE) and the Domain Names with knowledge of the Complainant’s rights. All the Domain Names feature not only a mark closely resembling the Complainant’s O2 trademark, but also either ‘Airwave’ or ‘Services’, both words being words which the Complainant regularly uses in combination with its primary mark and O2 AIRWAVE being a registered trademark of the Complainant. Moreover, at the time the Respondent registered his company and the majority of the Domain Names, he was aware of the Complainant’s concerns including the concern as to emails going astray.

The Respondent was given every opportunity to explain the reason for his choice of the various names in question, all of which are substantially identical to the Complainant’s various names and marks. The explanations, such as they were, were incomplete and unconvincing and the Respondent has not seen fit to produce the evidence he said he would produce. Significantly, none of the explanations explains the choice of the ‘02’ prefix.

The demand for money in order to settle the dispute, on its own, would not have been enough to convince the Panel that the Respondent registered the Domain Names primarily with a view to selling them to the Complainant at a profit. There are many circumstances in which a respondent might legitimately demand that his expenses be recovered.

However, the circumstances under which the Domain Names were registered, combined with the other matters set out above and taken with the Respondent’s failure to respond properly to the Complainant’s allegations, lead the Panel to conclude that the Respondent’s intentions when registering the Domain Names were abusive, whether the intention was to sell them to the Complainant at a profit or whether it was to foment the confusion that the first of the Domain Names had been causing. In that regard, the Panel would have liked to have seen greater particularization of that confusion, but the Respondent has not denied that it has been occurring and it does not surprise the Panel that confusion of the kind described has resulted.

In such circumstances, the Panel finds that the Respondent’s retention of the Domain Names is likely to result in continuing confusion, represents a continuing threat hanging over the head of the Complainant and, as such, constitutes continuing bad faith use of the Domain Names.

The Panel finds that the Domain Names were registered in bad faith and are being used in bad faith.

7. Decision

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 Names, <02airwave.com>, <02airwave.net>, <02airwave.org> and <02services.com> be transferred to the Complainant.

Tony Willoughby
Sole Panelist

Dated: April 20, 2005