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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

O2 Holdings Limited v. Guen-Tea Park

Case No. D2005-0588

1. The Parties

The Complainant is O2 Holdings Limited, Slough, Berks, United Kingdom of Great Britain and Northern Ireland, represented by Boult Wade Tennant, London, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Guen-Tea Park, Gwangmyeong-Si, Gyeonggi-Do, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <theo2.com> is registered with Communigal Communications Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the  “Center”) on June 7, 2005. On June 10, 2005, the Center transmitted by email to Communigal Communications Ltd. a request for registrar verification in connection with the domain name at issue. On June 20, 2005, Communigal Communications Ltd. 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 administrative, billing, and technical contact. The Center verified that the Complainant 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 proceedings commenced on June 27, 2005. In accordance with the Rules, paragraph 5(a), the due date for response was July 17, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2005.

The Center appointed Thomas P. Pinansky as the sole panelist in this matter on August 18, 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.

4. Factual Background

a. The Complainant is a United Kingdom company called the O2 Holdings Limited. O2 Holdings Limited owns extensive trademark rights in the trademark O2.

b. The Complainant owns in particular the following trademarks:

The United Kingdom trademark O2, No. 2279371 in classes 9 and 38; No. 2296255 in classes 9 and 38; No. 2233188 in classes 16, 18, 25, 38 and 41; No. 2249386A in classes 25, 35, 37, 39, 41 and 42; No. 2249368B in classes 25, 35, 37, 39, 41 and 42; and Community trademark O2, No. 2109627 in classes 9, 35, 36, 38 and 39.

c. In addition the Complainant owns a number of trademark applications for THEO2 as follows:

The United Kingdom trademark THE O2, No. 2383977 in classes 9, 16, 38 and 41 filed on February 9, 2005; and the Community trademark THE O2, No. 004347514 in classes 3, 4, 6, 8, 9, 14, 16, 18, 21, 24, 25, 28, 29, 30, 32, 33, 34, 35, 36, 38, 39, 41, 43, 44 and 45.

d. All of the O2 registrations predate the domain name of Guen-Tea Park. The applications for THEO2 postdate the domain name registration.

e. The Complainant has extensively marketed the O2 mark in the sales of telecommunications equipment advertising and sponsorship (e.g. Arsenal Football Club, and the England Rugby Team).

5. Parties’ Contentions

A. Complainant

O2 Holdings Limited has developed a high reputation in the O2 trademark and it has recently been announced that the Complainant has entered into a high-profile sponsorship arrangement relating to the “Millennium Dome” in the United Kingdom. In addition, it has been announced that its name will be changed to “THE O2”. This was the reason for filing additional trademark applications for this mark.

Grounds for the Complaint are:

a. The domain name <theo2.com> is identical or confusingly similar to the trademark owned by the Complainant.

b. Respondent is not authorized or licensed to use the Complainant’s trademark and Complainant is unaware of any relationship, contractual or otherwise, between it and Respondent. To the best of the Complainant’s knowledge, Respondent does not own any trademark or other rights in the O2 mark and does not offer any goods or services in relation to the O2 mark. Respondent does not refer to Complainant’s trademark on its websites.

c. The Respondent has obtained the domain name registration so as to potentially obtain remuneration from the Complainant, or potentially to use the domain name in some way that could cause confusion to consumers, or damage the Complainant. As a consequence, the Respondent is not making any good faith use of the disputed domain name. For all these reasons, the Respondent has engaged in bad faith registration and use of the domain name <theo2.com>.

B. Respondent

The Respondent did not reply to the Complainant’s contentions by the due date.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Moreover, under paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.

In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as he considers appropriate (See paragraph 14(b) of the Rules; See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

Under paragraph 4(a) of the Policy, complainants must prove each of the following:

(i) the domain name is identical or confusingly similar to complainant’s trademark or service mark; and

(ii) respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Language

The Complaint was filed in the English language. It is noted that the language of the registration agreement for the domain name is English. According to Paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise.

The Panel decides that English shall be the language of administrative proceeding in this case. However, Korean language documents submitted, specifically Respondent’s e-mail, have been reviewed by the Panel.

B. Identical or Confusingly Similar

The domain name <theo2.com> incorporates the Complainant’s registered trademark. Numerous panels have held that where a domain name substantially incorporates the complainant’s trademark, that is sufficient to make the domain name “confusingly similar” within the meaning of the Policy. See Amazon.com, Inc. v. MCL International Limited, WIPO Case No. D2000-1678; Nicole Kidman v. John Zuccaarini, d/b/a/ Cupcake Party, WIPO Case No. D2000-1415; Xerox Corporation v Imaging Solution, WIPO Case No. D2001-0313.

Moreover, as previous panels have found, the addition of a generic top-level domain name such as “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark. See, e.g., Aous Uweydav v. Abdallah Sheet, NAF Claim No. FA165119 and Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416.

For the foregoing reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s marks pursuant to the Policy, paragraph 4 (a)(i).

C. Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name. In connection with the burden of proof, several past UDRP decisions have held that “once a complainant establishes prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the respondent to rebut the showing” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; See also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).

The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the domain name; the Panel further notes that the Respondent is not, and has never been, commonly known by the domain name. The Panel’s view is that these facts must be taken as proven provided that they have not been denied by the Respondent.

The Respondent has not submitted a proper response. Therefore, he has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the domain name under paragraph 4(c) of the Policy. Accordingly the Panel holds that the Respondent has no legitimate interests or rights in the domain name pursuant to paragraph 4(b) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out, by way of example, a list of circumstances which, if found to be present by a panel, should be treated as evidence of registration and use of a domain name in bad faith. Even though none of the examples set forth in paragraph 4(b) of the Policy seem to apply, it is to be noted that the set of circumstances is not exhaustive and other circumstances may demonstrate bad faith registration and use.

The Panel notes that both under past UDRP decisions (See for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see paragraph 2 of the Policy), a well-established principle is that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s trademark is well known worldwide, it is unlikely that the Respondent, at the time of registration of the domain name or thereafter, was not aware that he was infringing the Complainant’s trademarks.

Bad faith can be presumed based on the fame of Complainant’s marks, such that the Respondent was aware or should have been aware of Complainant’s well-known marks and claims of rights thereto.

In light of the above, the Panel concludes that the Complainant has proven bad faith in registration and use on the part of the Respondent.

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 name <theo2.com> be transferred to the Complainant.

Thomas P. Pinansky
Sole Panelist

Dated: August 26, 2005