Complainant is Orange Personal Communications Services Ltd. of Bristol, United Kingdom of Great Britain and Northern Ireland, represented by Marguerite Bilalian of France.
Respondent is Luttringer Alexander, Alexander Luttringer of Greenwich, Australia.
The disputed domain names <orangecinemaseries.com>, <orangecinemaseries.net> and <orangecinemaseries.org> are registered with Active Registrar, Inc. The disputed domain name <orangecinemaseries.info> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2008. On December 24, 2008, the Center transmitted by email to Active Registrar, Inc. and Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain names. On December 28, 2008 and January 1, 2009, Active Registrar, Inc. and Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email respectively to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On January 5, 2009, the Center transmitted an email to Complainant notifying the word limit deficiency of the Complaint. On January 9, 2009, Complainant submitted an amended Complaint to the Center. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on January 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 3, 2009.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on February 13, 2009. 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.
Complainant is part of Group France Telecom, an Internet, television and mobile services provider that promotes and markets its services worldwide under the trade name and trademark ORANGE, including in France, Switzerland and Australia. Complainant is the owner of all trademark rights in the mark ORANGE including, but not limited to, the following:
ORANGE France Reg. No. 94511028
ORANGE France Reg. No. 99814928
ORANGE CTM Reg. No. 1950740
ORANGE France Reg. No. 01309915
ORANGE Australia Reg. No. 628777
ORANGE Australia Reg. No. 628778
SQUARE and Design Australia Reg. No. 1067655
ORANGE CINEMA SERIES France Reg. No. 3568460
Complainant is also the owner of the marks ORANGE BUSINESS SERVICES, ORANGE TV, and ORANGE FOOT.
In October 2007, Group France Telecom created a company named Orange Cinema Series to launch a new television service on TV, PC and mobile phones under that name, enabling end-users subscribing to the services to access 5 cinema TV channels and to download on their PC or mobile phone new films, TV series and catalogs from Warner Bros., HBO or Gaumont.
In April 2008, Group France Telecom issued a press release regarding its new services under the name Orange Cinema Series. The announcement was published on Complainant's website at “www.orange.com”. In addition to the <orange.com> domain name, Complainant owns numerous domain names incorporating the word “orange” including <orange.net>, <orange.org>, <orange.info>, <orange.biz>, <orange.mobi>, <orange.us>, <orange.net.au>, <orange.ch>, <orangebusinessservices.com>, <orangecinemas.com>, <orangefilm.com>, <orangeimagineering.com>, <orangemovie.com>, <orangemovies.com>, <orangecinemaseries.fr>, <orange-cinema-series.com>, and <orange-cinema-series.fr>.
On April 8, 2008, the day immediately following Group France Telecom's announcement of the launch of its Orange Cinema Series services, Respondent registered the disputed domain names.
In response to Complainant's cease and desist correspondence in September 2008, Respondent demand 15,000 for transfer of ownership of the domain names.
Complainant contends that the disputed domain names are confusingly similar to Complainant's marks, that Respondent has no rights or legitimate interests in the domain names and that Respondent has registered and used the domain names in bad faith.
Respondent did not reply to Complainant's contentions.
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the disputed domain names; and
(iii) the disputed domain names have been registered and used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a Complaint “on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Complainant has demonstrated that it owns rights in the trademarks ORANGE and ORANGE CINEMA SERIES. The disputed domain names incorporate Complainant's trademarks in their entirety.
Accordingly, the Panel finds that the domain names are confusingly similar to Complainant's trademarks.
Respondent is not a franchisee, affiliated business or licensee of Complainant. Complainant has not authorized Respondent to register the disputed domain names or to otherwise use Complainant's marks.
Respondent is not and has not been commonly known by the disputed domain names. Respondent appears to be operating a sponsored link, pay-per-click website at each of the disputed domain names, from which Respondent derives revenue based on the number of times visitors click on links appearing on the websites. Respondent's website directs end users to the website of Group France Telecom and the websites of its competitors. Such use of the domain names does not constitute a bona fide, legitimate use of the domain names.
Accordingly, the Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of the documented out of pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's website or location of a product or service on Respondent's website or location.
Complainant submitted evidence that Respondent was well aware of Complainant's trademark rights at the time of registering the disputed domain names. Respondent registered the disputed domain names immediately following Complainant's press release announcing its Orange Cinema Series services. In addition, Complainant's investigation revealed that Respondent was a previous employee of Group France Telecom in Switzerland. Moreover, Respondent launched an Internet blog accessible at “www.orangecinemaseries.blogspot.com” on which he displayed an article dated December 5, 2008. In this article Respondent explained that he had been faster than Complainant in the registration of the domain name <orangecinemaseries.com> and expressly admitted that he did so with knowledge of Complainant's rights:
“I was surfing on the web and saw the press release of Orange regarding their new service. I don't know why, but I went on Godaddy . . . and, surprise, FT Group – Orange had “forgotten” to purchase the domain name OrangeCinemaSeries.com.
Of course, I purchased this domain name and all others which go with it, i.e. “orangecinemaseries.org/.info/.net.”
In the same article, Respondent continued:
“A small message for Orange:
Orange seriously . . . would you have proposed 2.000 E with a carambar and an iPhone, I would have said yes . . . I don't give a damn about your domain name, I didn't want to charge you for 15.000 E, but it's a matter of principle you know . . . you cannot ask me to transfer a domain name like that, with no compensation . . . you were the one to make a mistake you see. Well then, now if you wish to talk to me, you send me an e-mail with a sold proposal, not some blah blah . . .
Alex – your friend
Contact: firstname.lastname@example.org. ”
On December 9, 2008, Complainant filed a request with the French Civil Court of Paris for an injunctive order against Google to have the broadcasting and content of this blog suspended within 48 hours. The Court granted the injunction and Google complied with the order.
The evidence therefore indicates that Respondent was fully aware of Complainant's marks at the time Respondent registered the disputed domain names.
In addition, Respondent demanded 15,000 Euros for the transfer of the disputed domain names, which is a sum far in excess of the documented out of pocket costs directly related to the domain names.
Finally, the submitted evidence indicates that Respondent is trading off the goodwill associated with Complainant's marks and Internet traffic intended for Complainant's website. Such use further evidences Respondent's bad faith.
The Panel finds that Respondent has registered and used the domain names in bad faith.
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 <orangecinemaseries.com>, <orangecinemaseries.net>, <orangecinemaseries.org> and <orangecinemaseries.info> be transferred to Complainant.
Lynda J. Zadra-Symes
Dated: March 2, 2009