WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Orange Personal Communications Services Limited and Orange 3G Limited v. Richard Sharpe

Case No D2000-1663

 

1. The Parties

The First Complainant is Orange Personal Communications Services Limited, a company incorporated in England number 2178917 whose registered office is at St James Court, Great Park Road, Almondsbury Park, Bradley Stoke, Bristol BS32 4QJ, United Kingdom.

The Second Complainant is Orange 3G Limited a company incorporated in England number 02870920 whose registered office is at St James Court , Great Park Road, Almondsbury Park, Bradley Stoke, Bristol BS32 4QJ, United Kingdom.

The Complainantsí authorised representative is Matthew Jacob of Willoughby & Partners of The Isis Building, Thames Quay, 193 Marsh Wall, London E14 9SG, United Kingdom.

The Respondent is Mr Richard Sharpe of 13 Curry Rise, Mill Hill, London NW7 1SD, United Kingdom.

 

2. The Domain Name and Registrar

The domain name the subject of the dispute is <orange3g.com>. The registrar is Register.com of 575 8th Avenue, 11th Floor, New York, NY 10018, USA.

 

3. Procedural History

The Complaint in email form was submitted to the Center on November 30, 2000 and by hard copy on December 4, 2000. Acknowledgement of receipt of the Complaint was despatched on December 4, 2000. A request for verification of the domain name was sent to the Registrar on December 7, 2000 and a reply was received on December 13, 2000. An amendment to the Complaint was made by email on December 14, 2000 and by way of hard copy on December 27, 2000. Notification of the Complaint and the commencement of the administrative proceedings was given to the Respondent on

January 5, 2001 and to the Registrar by post and by email. No response having been received from the Respondent, Notification of Default was given to him on

January 26, 2001. An administrative panel consisting of a sole panellist Mr Clive Duncan Thorne was appointed on February 7, 2001. The panel is satisfied that the Registrar and the Respondent had notice of the Complaint.

 

4. Factual Background

The First Complainant is a telecommunications company based in the United Kingdom. It owns the Orange Cellular phone network and sells related Orange goods and services. It began trading in the United Kingdom in April 1994 and since then has spent significant sums on advertising and promoting the brand Orange. As an indication of its size and scope of its promotional activities in the year to September 2000 it spent a total of £31 million on advertising in the United Kingdom. As at September 2000 the First Complainant had approximately 8 million subscribers to its network in the United Kingdom alone and in the first quarter of 2000 took 33% of new market share. The Complainants assert that because of such significant expenditure the word Orange when used in connection with cellular technology has become synonymous in the minds of the United Kingdom public with the First Complainantís business. Having considered the evidence set out in the Complaint and in particular the company report at Annex C and the sample advertising material at Annex D the panel is satisfied that the First Complainant has substantial trading good will in respect of the mark Orange within the United Kingdom.

The First Complainant has a large number of trade mark applications and registrations for the mark Orange and associated marks throughout the world. These are exhibited at Annex E to the Complaint. In the United Kingdom it owns a number of trade marks registered in the mark Orange. The Panel notes in particular trade mark registration number 1559167 in class 9 for the mark Orange. Copies of the United Kingdom Trade Mark Certificates are exhibited at Annex F to the Complaint.

The First Complainant has also registered domain names for the mark Orange including <orange.com>, <orange.net>, <orangeworld.com> and <orangenet.com>. Copies of the relevant WHOIS searches are annexed at Annex G to the Complaint.

The Second Complainant is a group company with the First Complainant. It changed its company name from Orange Data Limited to Orange 3G Limited on

December 21, 1999. The letters 3G when used in relation to cellular phones are known by members of the public and trade to refer to the so called "third generation" cellular phone technology. This technology includes allowing cellular phone users to access the internet to send emails and directly through their cellular hand sets.

The Panel is satisfied that together the Complainants are able to establish unregistered rights in the trading name Orange and in the trading name Orange 3G Limited for telecommunications services. The Panel is also satisfied that the Complainants have widespread registered trade mark rights in respect of the mark Orange.

No response having been filed by the Respondent the Panel is not in a position to receive evidence from the Respondent and must therefore decide the Complaint on the basis of the Complainantsí evidence alone.

 

5. History of the Action

The Respondent appears to have registered the disputed domain name on

February 3, 2000. It is not an authorised licensee of the Complainants nor is it authorised to use the Complainantsí trade marks. The Complainants became aware of the Respondentís registration of the disputed domain name in March 2000. Their enquiries led them to discover that the disputed domain name was for sale on the domain name auction site Great Domains.com. A copy of a print out of the relevant pages is exhibited to the Complaint at Annex A in which online invitations to make an offer for the purchase of the domain name are invited. Despite making thorough enquiries the Complainants have found no evidence of the domain name being used in any other way.

On March 3, 2000, the First Complainant instructed its solicitors Willoughby & Partners to send a demand letter to the Respondent claiming trade mark infringement and passing off and seeking transfer of the disputed name to the First Complainant within 14 days. No response was received to this letter. Therefore Willoughby & Partners sent a further letter on April 27, 2000. Again there was no response. So on May 4, 2000 Mr Matthew Jacob at Willoughby & Partners telephoned the Respondent on the number given in the disputed domain names WHOIS search. Copies of the relevant correspondence are exhibited to the Complaint at Annex L.

The telephone conversation that Mr Jacob had with the Respondent is the only evidence of a reaction from the Respondent. He apparently told Mr Jacob that he was domain name registrant of "orange3g.com". He also confirmed that his name was Richard Sharpe and that he lived at the Mill Hill address. He said that he was considering his options and did not see why he could not register the domain name since the Registrar was based in the USA. He indicated that he was aware of the Orange cellular network and 3G cellular technology and that he thought that registering a domain name which combined the two would be "a good idea". He asked whether he could sell the disputed domain name to somebody based in the United States. Mr Jacob confirmed that this would not be acceptable and that if he tried to, the Complainants would consider applying for an immediate injunction. He apparently asked Mr Jacob to send him a further copy of the well known Court of Appeal decision in "One in a Million" as he had mislaid it. Mr Jacob did so and directed him to the WIPO website for a copy of the ICANN policy. The Respondent confirmed that he would read the policy and the decision in deciding whether or not to agree to transfer the domain name to the First Complainant.

Subsequently the Respondent failed to respond to Mr Jacob who again attempted to contact the Respondent by telephone but it would appear that he was constantly unavailable. The Respondent failed to respond to any of the telephone messages left for him so Ms Caron Tayler of Willoughby & Partners sent him a further letter on June 1, 2000 asking him to transfer the domain name and reserving the First Complainantís rights. Again there was no response. Accordingly the Complainants commenced the current Complaint and request this Panel to issue a decision that the contested domain name be transferred to the First Complainant.

 

6. Discussion and Findings

The Complainants contend that in accordance with paragraph 4(a) of the Policy

(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights;

(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain name; and

(iii) The disputed domain name is registered and is being used in bad faith.

The Panel will deal with each of these contentions in turn:-

(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights

For the reasons set out above the Panel is satisfied that the Complainants have registered and unregistered trade mark rights in respect of the mark "Orange". In particular the trading name of the Second Complainant is "Orange 3G Limited". The Panel accepts that the domain name <orange3g.com> is confusingly similar to the mark "Orange" and identical to the trading name Orange 3G Limited of the Second Complainant in which the Second Complainant undoubtedly has trading good will.

(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain name

The Complainant confirms that the Respondent is not authorised or licensed in any way whatsoever to use the First Complainantís trade marks. No evidence has been submitted by the Respondent justifying its interests in respect of the domain name. The best that can be said by the Respondent is the remark arising from the telephone conversation with Mr Jacob on May 4, 2000 to the effect that the Respondent thought that registering a domain name combining Orange and 3G "would be a good idea". The Panel therefore accepts the Complainantís submission that the Respondent has revealed no rights or legitimate interest in either the Orange marks or the disputed domain name.

(iii) The disputed domain name is registered and is being used in bad faith

The Complainants make two submissions in relation to bad faith. Firstly that the Respondent would have been aware of the Orange cellular telephone network and "3G" technology prior to the registration of the disputed domain name. Secondly that the Respondent has failed to reveal any legitimate reason for registering the disputed domain name and that he clearly intended to commercially capitalise on the Orange mark by registering and subsequently attempting to sell the disputed domain name through Great Domains.com.

As far as the first submission is concerned the Panel is prepared to accept the evidence of the telephone conversation with Mr Jacob on May 4, 2000 during which the Respondent confirmed that he was aware of the Orange cellular network and 3G cellular technology and he thought that registering a domain name which combined the two would be a good idea.

As far as the second submission is concerned in the absence of bona fide use of the domain name it seems that the Respondentís purpose in registering the domain name was to sell it or otherwise deal with the domain name by advertising it on the Great Domains.com site. The Panel is satisfied that the Complainantsí submissions are well grounded and that accordingly the disputed domain name was registered and is being used in bad faith.

It follows that the Panel finds for the Complainants in respect of the three limbs of paragraph 4(a) of the Policy.

 

7. Decision

The decision of the Panel is that the domain name <orange3g.com> should be transferred to the First Complainant.

 


 

Clive Duncan Thorne
Sole Panelist

Dated: February 20, 2001