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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> O2 Ltd –V- 02 Airwave Ltd [2005] DRS 01758 (14 April 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/01758.html Cite as: [2005] DRS 01758, [2005] DRS 1758

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Nominet UK Dispute Resolution Service
Dispute no. 2342
O2 Limited –V- 02 Airwave Limited Decision of Independent Expert
1. Parties

Complainant: O2 Limited

Country: United Kingdom

Respondent: 02 Airwave Limited

c/o Sam Ward

Country: United Kingdom

2. Domain Name

<02ireland.co.uk> (the "Domain Name")

3. Procedural Background
4. .1 The Complaint entered Nominet's system on 26 January 2005. It was validated and sent to the Respondent on 1 February 2005. No response was received by the deadline for response on 25 February 2005. Mediation not being possible and the Complainant having paid the relevant fee, the Complaint was referred to me on 24 February 2005 for a Decision. On that date, I confirmed that I was not aware of any reason why I could not act as Independent Expert in this case
5. Outstanding Formal/Procedural Issues
6. .1 There are no such issues in this case.
7. The Facts
8. .1 The Complainant is O2 Limited, a well-known mobile telecommunications company in the United Kingdom. The Complainant is the registrant of .
9. .2 The Domain Name was registered in the name of the Respondent (by whom it continues to be held) on 30 June 2004. The Respondent is a company incorporated in the United Kingdom on 28 May 2004.
10. The Parties' Contentions

Complainant

11. .1 The Complainant seeks transfer of the registration of the Domain Name into its name on the grounds that it is almost identical to a name(s) or mark(s) in which it has rights and the registration of the Domain Name in the name of the Respondent is in bad faith. The Complainant asserts that in a recent application for an interim injunction filed on behalf of the Complainant, the Judge (Mr Justice Pumfrey) in that case acknowledged that Complainant had "developed a huge reputation" in respect of the "O2" trade mark in the UK. The Complainant also asserts that it operates and trades through a subsidiary company in Ireland known as O2 Ireland and that "as a result of this O2 Limited have also generated significant rights in relation to the O2 Ireland trade mark."
12. .2 The Complainant states that it owns rights in the O2 trade mark in many jurisdictions around the world.
13. .3 The Complainant owns a number of trade mark registrations for its O2 mark, including but not limited to the following:

Territory	No.	Mark.	Class	Type
UK	2279371	O2	9, 38	Device
UK	2296255	O2	9, 38	Device
UK	2233188	O2	16,18,25,38,41	Word
UK	2249386A	O2	25,35,37,39,41,42	Device
UK	2249386B	O2	25,35,37,39,41,42	Word
CTM	2109627	O2	9,35,36,38,54	Word

14. .4 The Complainant asserts that the Respondent has numerous domain names which relate to trade marks held by the Complainant.
15. .5 The Complainant asserts that the Domain Name is being used in "bad faith" as it is so similar to the rights owned by the Complainant that they can see no legitimate reason for the ownership or use of the domain names. In particular, the Complainant asserts that:

(i) following a dispute which had arisen between the Complainant and Mr Sam Ward regarding the domain name <02airwave.co.uk> registered by the Mr Ward, and;

"despite the fact that Mr Ward was aware that the domain names in question were causing confusion, and aware that O2 Limited owned trade mark rights in relation to identical and/or similar trade marks, Mr Ward then arranged for additional domain names (and in particular 02Ireland.com and 02Ireland.co.uk to be registered on behalf of 02 Airwave Limited). This company was set up by Mr Ward in May 2004."

(ii) "O2 Limited believe that they have trade mark prior rights in relation to each of the relevant marks (and they submit that the alteration on an "O" for a "0" makes no difference, in view of the fact that consumers will often fail to acknowledge the difference between the letter O and the numeral 0)."

(iii) correspondence received by the Complainant from the Respondent stated;

"Read with interest about your T-shirts with the logo of O2. I am getting my designs for 02 T-shirts for 02 AIRWAVE plus 02 SERVICES plus 02 IRELAND as well as Nil 2. I do not think my T-shirts will have the same message as yours. Thanks."

This the Complainant suggests was;

"a threat that Mr Ward would produce similar merchandise to that being produced by O2 Limited."

(iv) the Complainant refers to the communications between the Complainant and the Respondent regarding why the name "02" was adopted by the Respondent and asserts that:

"[a]t no point during these conversations did Mr Ward ever put forward a reasonable explanation for ownership of 02 SERVICES or 02 IRELAND domain names. In relation to 02 IRELAND he had suggested that his intention was to register domains relating to Wales, Scotland and Ireland, and possibly even set up different businesses relating to these countries. However, only the 02 IRELAND domain names were registered (the co-incidence with the fact that O2 Limited have a specific business called O2 IRELAND, but not a specific business called O2 Scotland or O2 Wales was obvious here). 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."

(v) the Respondent sought "some form of payment" for the transfer of the Domain Name and stated in an email dated 21 September 2004 that;

"If your clients wish to purchase the registrations and pay for the transfer then I would be prepared to consider any reasonable offer to achieve closure on this matter."

Respondent

16. 9 No response was received from the Respondent.
17. Discussion and Findings

What needs to be proved

18. .1 To succeed under the Nominet Dispute Resolution Service Policy (the "Policy") the Complainant must prove on the balance of probabilities, first, that he has rights in respect of a "name or mark" that is identical or similar to a Domain Name and secondly, that the Domain Name is an Abusive Registration.
19. .2 Abusive Registration is defined in paragraph 1 of the Policy in the following terms:

Abusive Registration means a Domain Name which either:

i. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the complainant's rights; OR

ii. has been used in a manner which took unfair advantage of or was unfairly detrimental to the complainant's rights;

Complainant's Rights

20. .3 As I have already described above, the Complainant owns at least three "word" trade marks in O2. So far as those marks are concerned the question arises as to whether they are similar to the Domain Name which comprises the figure zero, the figure 2 and the country name "Ireland". In considering this question it is first convenient to consider the status and nature of the figure zero in the Domain Name. So far as internet domain names are concerned, the figure zero and the letter O are distinct. To replace one with the other in a domain name will create a new domain name that may point to a different website. However, the position as far as trade marks and UK word marks are concerned is somewhat different.
21. .4 My understanding is that Patent Office practice insofar as word marks are concerned is that a "0" and an "O" are interchangeable. Therefore, I have little difficulty in coming to a conclusion that there is similarity between "02" and "O2" in this case. Indeed I would have come to that conclusion regardless of the practice of the UK Patent Office in this respect. The case would be similar to that in the WIPO decision in relation to <0xygen.com> in Oxygen Media LLC v Primary Source [D2000-0367]. Of course in the case of UDRP decisions the test is one not of mere "similarity" but one of "confusing similarity", but for present purposes I do not think that this difference matters.
22. .5 However, in this case the Domain Name is not "02.co.uk" but "02Ireland.co.uk". Does this make a difference? In the specific circumstances of this case I think not. The Respondent in this case has simply added a geographical suffix to "02". Prima facie the "Ireland" element of the Domain Name is no more than a geographical qualification or limitation on the "02" aspect of the Domain Name. Such a qualification does not prevent a conclusion that the word marks and the Domain Name are similar. For example in Harrods Limited v DJV Associates [DRS 01758] the Expert had little difficulty in concluding that the domain name was similar to the mark "Harrods". Similarly the Expert in Hewlett-Packard Development Company, L.P. v Inter-Mediates Limited [DRS 01738] held the domain names ; and all to be similar to the trade marks "HP" and "hp". In this case I conclude that there is similarity with the Complainant's O2 word marks. In coming to that conclusion I bear in mind the comments of the appeal panel in Seiko UK Limited v. Designer Time/Wanderweb [DRS 00248] regarding the domain name that "the requirement to demonstrate 'rights' is not a particularly high threshold".
23. .6 Given this finding in relation to the O2 word marks, it is not necessary to form a view in relation to the other trade marks relied upon by the Complainant.
24. .7 In the circumstances I conclude that as at the date of the registration of the Domain Name on 30 June 2004, the Complainant had rights in a name or mark "similar" to the Domain Name. Accordingly the Complainant has successfully made out the requirement of paragraph 2(a)(i) of the Policy.

Abusive Registration

25. .8 As described above, the registration of the Domain Name by the Respondent appears to have been within the context of and at the same time as a pre-existing dispute between the parties in relation to <02airwave.co.uk>.
26. .9 The Complainant's advisors throughout the Complaint refer to "bad faith". These contentions are confusing and misconceived. Bad faith is one of the elements that have to be shown in UDRP proceedings. These are not UDRP proceedings, rather they are Nominet proceedings. Under Nominet, the Complainant is required to show abusive registration. There is a list of examples of abusive registration in the Policy. Somewhat unhelpfully the Complainant's advisors do not point to any of these examples in this case.
27. .10 Notwithstanding the problems with the way in which the Complainant has presented its case, it appears that four of the examples of abusive registration may be relevant in this case. These are:

(i) paragraph 3(a)(i) A: circumstances indicating that the respondent registered or acquired the Domain Name:

"for the purposes 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 documented out-of-pocket costs directly associated with acquiring or using the Domain Name";

(ii) paragraph 3(a)(i) C: circumstances indicating that the respondent registered or acquired the Domain Name:

"[primarily] for the purpose of unfairly disrupting the business of the Complainant;"

(iii) paragraph 3(a)(ii):

"Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;" and

(iv) paragraph 3(a)(iii):

"The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;"

28. .11 In my opinion this is a case which is akin to a typo-squatting case; the practice of acquiring a domain name which is a variation on a popular trade mark or domain name with the expectation that typographical mistakes will result in diverted website traffic away from the Complainant's site to the Respondent's site. As is clear from Yahoo! Inc -v- Simon Charles Smith [DRS 1770] and Addiktion Cycles Ltd -v- Leisure Wheels (Hemel Hempstead) Ltd [DRS 1026] it is undoubtedly the case that "typo-squatting" constitutes abusive use under paragraphs 3(a)(i) C and 3(a)(ii) of the Policy.
29. .12 I believe that typo-squatting is and was the Respondent's intention. The reasons for this are as follows:

(a) I am satisfied that the Complainant has demonstrated that the reasons proffered by Mr Ward to the Complainant following the registration of the Domain Name for the use of the term "02" are not only inadequate, but contradictory. The Complainant's evidence in this respect is primarily in the witness statement of Julius Stubbs of the Complainant's advisor Boult Wade Tennant. In that statement he refers to a conversation between Mr Ward and a Ms Felicity Hide on 19 July 2004, in which Mr Ward stated the name "was chosen because it had descriptive connotations in relation to non-destructive testing in the metallurgical industry." However, no further explanation was given and the Complainant contends that "O2" or Oxygen has "very little relevance" to this activity. The witness statement goes on to assert that in later conversations between Mr Wade and Mr Stubbs, Mr Wade's story had changed. In particular, he then "suggested that actually the number in question related to a unit that he had served with, or to a number that related to him from previous service". The Respondent does not deny either of these contentions.

(b) I accept the Complainant's contention that it and the "O2" name has a very strong reputation in the United Kingdom. It is also inherent in the way in which the Complainant has worded its Complaint that it contends that the Respondent was aware of that reputation at the time that the Domain Name was chosen and registered. The Respondent has not contradicted this contention. Indeed, it would have not have been credible had the Respondent argued otherwise given that the Respondent only registered the Domain Name after it had been involved in a dispute with the Complainant in relation to <02airwave.co.uk>.

(c) The Complainant contends that there has been actual confusion by members of staff due to the <02airwave.co.uk> domain name. I am also prepared to accept that there is also a likelihood of confusion in the case of the Domain Name. There is a slight difficulty here in that Paragraph 3(a)(ii) of the Policy says there must be "circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses". No such evidence has been adduced in this case. Nevertheless this does not preclude a finding of abusive registration. The approach of some Experts in such circumstances has been to conclude that the mere fact that actual confusion has not been shown does not preclude a finding of "circumstances" indicating this. A somewhat more straightforward approach has been to concede that Paragraph 3(a)(ii) of the Policy requires evidence of confusion but that since the list in paragraph 3(a) is not exhaustive it does not matter and likelihood of confusion is in many cases sufficient.

30. .13 In support of a specific finding that the Respondent has attempted to unfairly disrupt the business of the Complainant, it is also noteworthy from the email evidence provided that the Respondent intended to produce T-shirts using "02". I am prepared to accept at face value the Complainant's assertion in this respect (which has not been denied by the Respondent) that this shows the Respondent was prepared to disrupt the Complainant's business by the production of t-shirts similar to merchandise being produced by the Complainant in relation to sponsorship deals with Arsenal football club and England rugby club.
31. .14 Accordingly, I conclude that the Complainant has successfully made out a case of abusive registration by reason of typo-squatting and/or the Respondent's attempt to unfairly disrupt the Complainant's business. In the circumstances, it is not necessary to consider whether the Complainant has succeeded in demonstrating that the circumstances of abusive registration as detailed above in paragraphs 3(a)(i) A or 3(a)(iii) have occurred in this case.
32. Decision
33. .1 I find that the Complainant has Rights in the mark O2, which is similar to the Domain Name, and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
34. .2 I therefore determine that the Domain Name should be transferred to the Complainant.

…………………..

Matthew Harris

14 April 2005