WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Orange Personal Communications Services Ltd. v. Orangebroadband Ltd

Case No. D2006-0511

 

1. The Parties

The Complainant is Orange Personal Communications Services Ltd., London, United Kingdom of Great Britain and Northern Ireland, represented by Willoughby & Partners, London, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Orangebroadband Ltd, West Sussex, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <orange-broadband.com> is registered with Melbourne IT trading as Internet Names Worldwide.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2006. On April 26, 2006, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On April 28, 2006, Melbourne IT trading as Internet Names Worldwide 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 and technical contact. The Center verified that the 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 proceedings commenced on May 1, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2006.

The Center appointed Anthony Robin Connerty as the sole panelist in this matter on June 6, 2006. 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

The Complainant owns a number of United Kingdom and European Community trademarks for the word ORANGE, the Orange square device, and the colour Orange in relation to telecommunications and other goods and services (the “ORANGE Trade Marks”). The Complainant also owns a Benelux trademark registration for the mark ORANGE BROADBAND.

Annex 8 to the Complaint contains details of these trademarks, some of which are mentioned below.

Some of the marks relate to the United Kingdom, namely, in respect of the word ORANGE, Trademark 154 2752 registered on the October 7, 1994, and Trademark 1542751A registered on the February 13, 1990. Trademark 2007850 was registered on January 15, 1999, and concerns an application in relation to “the colour Orange Panatone No. 151 as an element of the mark”. Similar trademarks were registered on August 30, 2002; January 15, 1999; January 8, 1999 and December 8, 2000.

Community Trademarks include Trademark E127837 which was registered on March 29, 2001, in connection with the word ORANGE in relation to Austria, Benelux, Denmark, France, Germany, Ireland, Spain and the United Kingdom.

Annex 8 also contains a Schedule of the Complainant’s other trademark registrations in various countries around the world in relation to the ORANGE word mark, the Orange colour device, and the Orange colour. In all, there are registrations in well over 30 countries.

The Respondent registered the domain names <orangebroadband.co.uk> and <orange-broadband.co.uk> (the “UK domain names”) on August 21, 2003. The disputed domain name <orange-broadband.com> was registered by the Respondent, Orange Broadband Limited, on August 22, 2003.

 

5. Parties’ Contentions

A. Complainant

The following matters are taken from the Complaint of April 24, 2006. That Complaint is supported by documentation contained in 19 Annexes.

The Complainant’s Activities

The Complaint states that Orange Personal Communications Services Limited operates the well-known Orange mobile telephone network in the United Kingdom. That network was launched in 1994, and the Complainant supplies related goods and services. The Complainant also licenses other companies in Europe, Africa, and the Caribbean (and until recently had also licensed companies in Asia) to use the ORANGE brand in relation to their mobile phone networks.

The Complainant says that the core elements of the ORANGE brand include use of the word “ORANGE.”; use of the colour orange, being a shade known as “Panatone 151” under the Panetone colour classification; and the Orange square device comprising the word “Orange” in white lower case font on an orange-coloured square.

In 2005, the Complainant gained over 14 million subscribers to its United Kingdom mobile telephone service, achieving a market share of 23% of the United Kingdom mobile telephone market.

The Complainant’s annual United Kingdom turnover increased from £23 million in 1994, to over £4 billion in 2004.

Since 1994, the Complainant and its licensees have invested heavily in promoting telecommunications goods and services under the ORANGE brand. For example, since 1997, the Complainant has spent over £50 million per annum on advertising and promotion in the United Kingdom. Such investment, says the Complainant, “has resulted in substantial goodwill in the brand, a strong brand identity and high-level brand recognition.” The Complainant also sponsors a number of high-profile activities and events including the annual Orange Prize for fiction, the British Academy Film Awards, the Orange Arrows Formula 1 team, and the Glastonbury Festival.

One of the Annexes contains printouts from the Complainant’s United Kingdom website <www.orange.co.uk>. Those printouts show how the ORANGE brand is used online.

As to Orange broadband, the Complainant says that broadband services were offered by fixed-line phone providers in the United Kingdom following the award of licenses in the year 2000. “Orange broadband” refers to broadband services available via Orange 3G mobile handsets which have been available since 2004. The Complainant says that it intends to use the ORANGE BROADBAND name in future for Internet services via a fixed-line connection. Such services are currently offered by affiliates of the Complainant, such affiliates being subsidiaries of the Complainant’s parent company, France Telecom.

Reference to the Complainant’s various ORANGE Trademarks - in the United Kingdom and overseas - was made earlier.

The Respondent’s Activities

The Complainant says that in September 2005, it came to its attention that the domain name <orangebroadband.co.uk> had been registered by the Respondent without its authority. The Complainant later became aware that the Respondent had also registered a second United Kingdom domain name, and in addition had registered the disputed domain name <orange-broadband.com>. All three are similar to the Complainant’s ORANGE word mark.

The Complainant says that the Respondent hosted a website at the domain name <orangeband.co.uk> which website purported to offer a high-speed Internet connection service. That website displayed a copy of the Complainant’s Orange square device which had been modified so as to depict a satellite dish and the word “broadband”. The Complainant alleges that the home page “also copied the look and feel of the Complainant’s genuine website, positioning the logo on the top lefthand corner of the page, using an orange colour similar to Pantone 151 and using orange-coloured text on a white background.” The Complainant states that it believes that the second United Kingdom domain name was also directed to the Respondent’s website.

West Sussex Trading Standards Office contacted the Complainant following a complaint from a third party who had seen the Respondent’s website. The Trading Standards Office, the Complainant, and the Complainant’s solicitors have attempted unsuccessfully to make contact with the Respondent’s Managing Director.

The website at “www.orange broadband.co.uk” was at one stage taken down but later reinstated. The domain name has intermittently pointed to the website of Evolutions Creative Design Agency (“ECDA”). As at the date of the Complaint, that domain name was currently pointing to a predominantly blank page bearing the ECDA logo.

The domain name <orange-broadband.co.uk> and the domain name <orange-broadband.com> were, at the date of the Complaint, directed to a holding page of Namesco Limited, which advertises a high-speed broadband connection service.

The Complainant says that it is concerned that, “if left in the hands of the Respondent, the Domain Name may be used to host the same or similar deceptive content as that previously hosted at the “.co.uk” domain names and there is nothing to suggest that this will not happen.” Having had no response from the Respondent, the Complainant says that it has submitted a Nominet Complaint in respect of the “.co.uk” domain names.

Remedy Requested

In relation to the .com domain name, the request in the Complaint filed with the Center is for the transfer to the Complainant of the disputed domain name <orange-broadband.com>.

B. Respondent

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

 

6. Discussion and Findings

The Rules state that the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate: paragraph 15 of the Rules. Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:

(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.

For the purposes of paragraph 4(a)(iii), paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name. Again, the list of circumstances is non-exhaustive.

A. Identical or Confusingly Similar

The Complainant alleges that the disputed domain name <orange-broadband.com> is similar to the Complainant’s ORANGE word mark as it exactly reproduces that word mark, but with the addition of the descriptive word “broadband”. The Complainant argues that the addition of that word, “which is descriptive and generic in the telecommunications industry, is insufficient to distinguish the Domain Name from the ORANGE trademark and is therefore confusingly similar to that mark.” The Complainant further argues that the disputed domain name is “identical to the Complainant’s ORANGE BROADBAND trade mark registration”, and argues that “it is well established that the .com suffixes are ignored for the purpose of this comparison.”

The Panel has little difficulty in accepting those submissions.

On the basis of the unchallenged evidence put in by the Complainant, the Panel is satisfied that the Complainant has rights in the ORANGE Trademarks.

The disputed domain name incorporates in its entirety the Complainant’s ORANGE word mark. The addition of the word “broadband” does not assist the Respondent. Indeed, if anything, it strengthens the case against the Respondent since that word describes the business of the Complainant and therefore the likelihood of confusion on the part of Internet users is increased. See The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137: “Numerous WIPO panels have found that a domain name that wholly incorporates the complainant’s registered mark may be sufficient to establish confusing similarity for the purposes of the Policy – see, for example, Nokia Group v. Mr Giannattasio Mario, WIPO Case No. D2002-0782, and the decisions referred to at pp 4 to 5 of the decision in that case. There may be some cases where a domain name which incorporates in full another party’s registered trademark will not be confusingly similar to that trademark because sufficient additional letters or numbers have been added to the registered mark to remove any confusion. That is not the position here. The distinctive part of the Domain Name is the word ‘RITZ’ – the hyphen, the ‘.com’, and the word ‘hotel’, are all either generic or descriptive.

Indeed, the addition of the word ‘hotel’ tends, if anything, to increase the likelihood of confusion, because the word is descriptive of the business operated by the Complainant under the RITZ mark: see in that regard ACOR, Society Anonyme a Directoire et Conseil de Surveillance v. SEOCHO, WIPO Case No. D2002-0517.”

And the addition of the phrase “.com” is non-distinctive because it is a gTLD required for registration of a domain name. See for example, Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127: “the addition of the generic top-level domain (gTLD) name ‘.com’ is … without legal significance since use of a gTLD is required of domain name registrants.”

The Panel is satisfied that the Complainant has proved the requirements of paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

As mentioned earlier, paragraph 4(c) of the Policy sets out a number of circumstances, without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the 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 domain name or a name corresponding to the 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 domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) where the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As to sub-paragraph (i), the Complainant says that it does not know the extent of the Respondent’s trade under the name, but believes it to be limited. Further, any connection with the ORANGE Trademarks established through any such trade under the Orange Broadband name “results from the Respondent’s passing off, and thus cannot constitute a legitimate connection.”

As to sub-paragraph (ii), the Complainant contends that the Respondent has not been commonly known by the name “Orange Broadband”, and says that its market-wide intelligence and monitoring has not come across any trade by the Respondent.

There is no evidence to indicate that the Respondent might be able to bring itself within the sub-paragraph (iii).

The Complainant states that, to the best of its belief, the Respondent has no trademark or service mark rights in respect of the disputed domain name, and is not authorised by the Complainant to use the ORANGE Trademarks.

The Panel is satisfied that the Complainant has proved the requirements of paragraph 4(a)(ii) of the Policy. The Panel again notes the failure of the Respondent to put in a response to the Complainant’s evidence and submissions.

Registered and Used in Bad Faith

The Complainant, for the purposes of paragraph 4(a)(iii), must show that the Respondent both registered and used the disputed domain name in bad faith.

As mentioned earlier, paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b)(iii)

As to registration in bad faith, the Complainant relies upon circumstances set out in paragraph 4(b)(iii), namely that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor.

The Complainant deals first with a preliminary matter.

The Complainant says that although the registration of the domain name predates the registration of the Complainant’s trademark ORANGE BROADBAND, (the domain name <orange-broadband.com> was registered by the Respondent in August 2003, whereas ORANGE BROADBAND appears to have been registered in late 2005), the disputed domain name was registered speculatively in 2003 when services were being offered by fixed or landline providers and were under consideration and development by mobile phone companies. The Complainant says that at that stage its ORANGE Trademarks were well-established. In this respect, the Complainant relies upon Decision No.4017/2004 of the Office of Harmonisation of the Internal Market (OHIM) dated November 30, 2004, which found that as at October 2000, the ORANGE mark and the Orange square device enjoyed a reputation and a high level of distinctiveness: at any rate in the United Kingdom.

It seems clear that bad faith can be found if the disputed domain name was registered before the trademark was registered: “In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.

Relevant decisions:

ExecuJet Holdings Ltd. v. Air Alpha America, Inc. WIPO Case No. D2002-0669 <execujet.com>, Transfer.

Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc) WIPO Case No. D2003-0320 <kangwonland.com>, Transfer .

Madrid 2012, S.A. v. Scott Martin-MadridMan Websites

WIPO Case No. D2003-0598 <madrid2012.com> among others, Transfer.

General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Center Online WIPO Case No. D2003-0845 <provotownecentre.com>, <provotownecentre.net>, Transfer.”

See: WIPO Overview of WIPO Panel Views on Selected UDRP Questions at http://www.wipo.int/amc/en/domains/search/overview/index.html.

Next, as to actual disruption, the Complainant alleges that the Respondent used the fame of the ORANGE name so as to attract visitors and capture as much traffic as possible - traffic which believed it was seeking the Complainant’s services: “seeing what purported to be an ‘Orange broadband’ service offered there, internet visitors are likely to have been deceived into believing that they were dealing with the Complainant or a company within the Complainant’s group and are likely to have looked no further for broadband services associated with the Complainant. This may have resulted in the Complainant losing customers to either the Respondent or third parties.”

In the absence of any explanation in response from the Respondent, the Panel is satisfied that the domain name was registered in bad faith.

Paragraph 4(b)(iv)

As to use in bad faith, the Complainant relies upon the provisions of paragraph 4(b)(iv), namely, the circumstance that the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The Panel has already indicated that the disputed domain name incorporates in its entirety the Complainant’s ORANGE word mark, and that the addition of the word “broadband” does not assist the Respondent. Indeed, if anything that fact strengthens the case against the Respondent since that word describes the business of the Complainant and therefore the likelihood of confusion on the part of Internet users is increased.

The Complainant argues that the use of a registered trademark to divert traffic to a competitor’s site is a well-recognised phenomenon, often referred to as “initial interest confusion” or “bait and switch”, and constitutes a situation which will ordinarily deprive a Respondent of any rights or legitimate interest in the disputed domain name. The Complainant relies upon the decision in Autosales Incorporated v. Don Terrill, WIPO Case No. D2001-1341. The sole Panelist in that case said that “A number of cases, including UDRP Panel and Federal Court decisions, recognize that intentional use of plaintiff’s well known mark to attract purchasers into an initial interest in defendant’s goods or services causes likelihood of confusion and amounts to bad faith.” The panelist then went on to refer to a number of decisions.

Further, the Complainant contends that bad faith use should be inferred from the fact that the disputed domain name is pointing to a holding page in circumstances where there is no evidence of any possible legitimate use of the domain name by the Respondent. The Complainant relies upon the decision in Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037.

In that case a similar situation arose where the domain name in question had been “parked”: was it being “used” for the purposes of paragraph 4(b)(iv)?

The sole Panelist in that case stated:

“Article 4(a)(iii) requires that the dispute domain name was not only registered in bad faith, but also ‘is being used’ in bad faith. This language requires that the bad faith must be continuing at the date of the decision. The Respondent in the present case is no longer using the disputed domain name to direct users to a site selling discount medicines, but has desisted from this use and has ‘parked’ the disputed domain name. However, the Respondent has not for this reason ceased to use the disputed domain name in bad faith, because the evidence satisfies the Panel that the Respondent continues to hold and use this domain name with the intention of deceiving internet users and being in a position to take advantage of the commercial reputation of the Complainants’ trademark. Further, current bad faith use might be inferred from passive holding of a domain name in circumstances where (as in the present case) there is no evidence of any possible legitimate use of the domain name by the Respondent (see Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003 (February 18, 2000); Aventis, Aventis Pharma SA. v. John Smith (WIPO Case Nos. D2004-0565 and D2004-0624 (September 22, 2004)).”

This Panel adopts the basis of the decision of the panelist in the Aventis Pharma case, and holds that on the evidence submitted in this case – and in light of the failure by the Respondent to respond to the Complainant’s evidence and submissions - the Complainant has satisfied the requirements of paragraph 4(b)(iv) as to use in bad faith.

For the above reasons the Panel finds that the disputed domain name was both registered and 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 name <orange-broadband.com> be transferred to the Complainant.


Anthony Robin Connerty
Sole Panelist

Dated: June 20, 2006