The Complainant is Orange Personal Communications Services Limited of Bristol, United Kingdom of Great Britain and Northern Ireland, represented by Bilalian Avocats, France.
The Respondent is Abdou Salam Drame of Bamako, Mali.
The disputed domain name <orangetogo.com> (the “Disputed Domain Name”) is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2009. On May 14, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Disputed Domain Name. On May 14, 2009, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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”).
On various dates the Center received informal email communications from the Respondent requesting to file the Response in French, for the reason that neither him nor his lawyer could communicate in English and that no translation could be made from French to English for financial reasons. The Center advised that in accordance with Rules, paragraph 11, the language of the administrative proceeding shall be the language of the registration agreement, in this case English (as confirmed by the registrar), unless otherwise agreed by the parties subject to the authority of the Panel, when appointed to determine otherwise having regard to the circumstances of the administrative proceedings. The Center also invited comments from the Complainant who stated that the proceedings must be English as required by the Rules and disputed the arguments put forward by the Respondent.
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 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2009. The Response was filed in French with the Center on June 8, 2009.
The Complainant made a supplemental filing by email to the Center on June 24, 2009, which essentially consists of commenting on and rejecting the arguments raised by the Respondent in the Response.
The Center appointed Jacques de Werra as the sole panelist in this matter on June 16, 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.
The Center has rightly put before the Panel for consideration (or otherwise) at its discretion under the Rules the Complainant's unsolicited supplemental filing made by email of June 24, 2009, in reaction to the Response. In The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447, this Panel summarised the position regarding supplemental filings in proceedings under the Policy in the following terms:
“Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and a party's request may be regarded as an invitation to the Panel to exercise this discretion.
The principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rules. […] The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
These principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. One of the matters which the Panel has to bear in mind is that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules.”
In the present case, the Complainant's supplemental filing essentially consists of observations which the Panel is capable of discerning by itself.
On this basis, the Panel is not satisfied that exceptional circumstances justifying the admission of the Complainant's supplemental filing have been made out. Furthermore, if the Complainant's supplemental filing were admitted, the Panel would feel bound to afford the Respondent an opportunity to comment on it. This would delay the conclusion of the procedure without any apparent benefit. The Panel has therefore decided not to admit the Complainant's supplemental filing.
The Complainant is a United Kingdom company operating in the telecommunication sector which is a part of the French Group France Telecom. Its operations are conducted under the ORANGE brand which covers 123 million customers throughout the world.
Among the countries in which Group France Telecom operates, are France (where the Group is, under the trademark ORANGE, the first Internet access provider, as well as the first mobile and fix telephone services provider), Mali, Egypt, Côte d'Ivoire, Senegal, Madagascar, where the Group is, under the brand ORANGE, the main actor in the telecommunication field.
In November 2008, the Group France Telecom entered into an agreement with the Togolese government under which an exclusivity for the negotiation of a new global operator license in Togo under the ORANGE brand was granted. This information was released in the media in November and December 2009, whereby some of the media sources referred to the creation of “Orange Togo” telecommunication services.
The Complainant is the owner of various trademarks for ORANGE including the following (the “Trademarks”):
- French word trademark 94511028 filed on March 15, 1994 and registered in classes 09 and 38;
- French word trademark 99814928 filed on September 30, 1999 in classes 09, 36 and 38;
- French word trademark 013099915 filed on May 11, 2001 registered in classes 16, 18, 25, 28, 35, 36, 37, 39, 41 and 42;
- Word community trademark 1950740 filed on November 13, 2000 registered in classes 16, 35 and 36;
- OAPI word trademark 44373 filed on February 9, 2001 and registered in classes 9, 16, 18, 25 and 28;
- OAPI word trademark 44374 filed on February 9, 2001 and registered in classes 35, 36, 37, 38, 39, 41 and 42.
The Complainant also owns (directly or through its licensees' local companies ) the following domain names: <orange.com>, <orange.net>, <orange.org>, <orange.info>, <orange.biz>, <orange.mobi>, <orangefrance.fr>, <orangemali.com>, <orangeromania.com >, and <orangepoland.com>.
By letter dated February 17, 2009, also sent by email, the Complainant sent a cease and desist letter to the Respondent requesting the transfer, within 48 hours, of the Disputed Domain Name.
Respondent answered by letter of February 18, 2009 and stated that the Disputed Domain Name reflected the name of company that he had created with Togolese and Malian partners in order to sell oranges in Togo, without any “infringing” purposes. He also noted that unless proven otherwise, the trademark “Orange” belonged to the Complainant, but the “orange” fruit and “Togo” as a country do not, and that he was not aware of the announcement by Group France Telecom of its will to enter into exclusive negotiation with Togo at the time of registration of the Disputed Domain Name. He finally mentioned that his partners and himself were determined to keep the Disputed Domain Name given that they had invested hundreds of millions CFA Francs in their business.
By email dated February 20, 2009, the Complainant indicated to the Respondent that, even though it would have preferred to put an amicable end to this issue, it would, in view of his answer, transfer this matter to its Counsel.
By email of the same day (i.e. February 20, 2009), the Respondent replied that he would also have preferred to find an amicable settlement to this issue, but that they had invested in the Disputed Domain Name which they intended to use for their interactive communication purposes. He also indicated that they had been informally contacted by “Orangecounty.com” in the United States of America, which had expressed its wish to buy the Disputed Domain Name in order to make a tourism website given that the Disputed Domain Name would also have an English sounding.
By email dated February 23, 2009, the Complainant indicated to the Respondent that it had serious doubts about the alleged investments made in the Disputed Domain Name which was still not actively exploited. It had even more serious doubts about the alleged “contact” coming from the owner of the domain name <orangecounty.com>, as it was more than difficult to see any link between this website and the potential appeal of the Disputed Domain Name in the English language. The Complainant also asked the Respondent about its real intentions relating to the Disputed Domain Name given that it appeared that Respondent would be ready to sell it to a third party.
By email of the same day (February 23, 2009), Respondent answered that he believed that his intentions were clear, that there should not be any doubt about the investments they made, and that the website of their company was almost ready so that they would be able to see it for themselves in the very following days. The Respondent however stated that he was ready to sell the Disputed Domain Name should a third party make an interesting offer. Otherwise, he would keep it and use it.
The Complainant responded immediately by email of the same day (February 23, 2009) and stated that it understood that the Respondent registered the Disputed Domain Name with the sole intent to resell it and that such a registration was prejudicial to its rights on the Trademarks so that the Complainant therefore had no intention of making any financial proposal.
The Respondent also answered immediately by email of the same day (February 23, 2009), stating once again that he had purchased the Disputed Domain Name for the sale of fruits in Togo and that he was not aware of the activities of France Telecom in Togo at the time of the registration.
By email of March 19, 2009, the Complainant (acting by its counsel) sent an ultimate cease and desist letter to the Respondent requesting the transfer of the Disputed Domain Name within 48 hours. This was left unanswered by the Respondent.
The Disputed Domain Name resolves to a webpage containing the text: “This domain is already reserved” and is consequently not actively used by the Respondent.
The Complainant first alleges that the Disputed Domain Name reproduces the Complainant's Trademarks, which are identically and entirely reproduced and that the term “Togo”, adjoined to the Trademarks in the Disputed Domain Name, does not create a new word along with the term “Orange”, which would have its own meaning so that the Disputed Domain Name is only the juxtaposition of these two terms. In view of the worldwide reputation of the Trademarks (which has been established by a study filed by the Complainant), the terms “Orange Togo” would therefore be considered as a declination of the trademark ORANGE.
The confusion would be all the more certain given that the Complainant's Group has already created and filed as domain names variations of its ORANGE Trademarks combining such trademarks with the relevant country names in order to promote its products and services in other countries, including Togo's neighboring African countries, such as for example <orangemali.com> (which was registered on February 2, 2006).
The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it has never been authorized by the Complainant to make use of the Trademarks in any way, and in particular to reserve or use a domain name incorporating the Trademarks. In addition, to the Complainant's best knowledge, the Respondent has neither registered the terms “Orange Togo” as a trademark in any jurisdiction, nor is Respondent commonly known under this name in Togo. Finally, the total lack of use or exploitation of the Disputed Domain Name - not even for the alleged sale of oranges in Togo - further confirms that the Respondent has no legitimate interest in it, whereby the Complainant emphasizes that in his email of February 23, 2009 the Respondent indicated that the website of his company was “almost ready” and was about to be launched in the next days, which was never accomplished.
The Complainant finally alleges that the Respondent registered and uses the Disputed Domain Name in bad faith because the Trademarks are highly distinctive and that the Complainant, its Group and the Trademarks are so widely known and have such a huge reputation, that the Respondent could not possibly be unaware of their existence. As a result, the registration of the Disputed Domain Name by the Respondent can, therefore, not have been made in good faith. Such reservation can even less have been made in good faith by the Respondent because the registration of the Disputed Domain Name was made on December 17, 2008, i.e. shortly after the public announcement of the signature of a contract between the Togolese government and France Telecom granting France Telecom an exclusivity for the negotiation of a new global operator telecommunication license in Togo under the ORANGE brand, whereby this information was announced on November 19, 2008, and widely publicized through the Togolese and, more largely, African press media, as well as through the Internet at the end of November and during December 2008.
Under these circumstances, the Respondent cannot seriously deny his knowledge of this information and cannot claim to have registered the Disputed Domain Name without knowing such information. His intention would be all the more obvious given that the structure of the Disputed Domain Name (i.e. <orangetogo>) is identical to other domain names registered and used by Group France Telecom in neighbouring African countries, such as Mali where Respondent is based (i.e. <orangemali.com>).
The registration of such domain names was further due to the fact that, until recently, it was not possible to register “geographical” domain names (as opposed to “generic” ones), ending with the national extension corresponding to those countries, as this was the case in Togo up to a recent time.
The Complainant alleges that the Respondent's bad faith is also confirmed by the unsupported or contradictory statements that the Respondent made in his exchange with the Complainant. The Complainant states in this respect that a research that it conducted did not allow to identify any Togolese company named “Orange Togo” and that the Respondent was insistent on the alleged important investments that were made in such company, of which no evidence was brought. It also noted that the Respondent had alleged that his website was almost ready and would be launched in the very next days (in February 2009), even though such website is still not activated.
The Respondent's contradictory attitude also supports a finding of bad faith as a result of the fact that he claimed that he wanted to use the Disputed Domain Name for his legitimate business purposes while mentioning that he had been “approached” by “Orangecounty.com”, thus suggesting that he would be willing to negotiate a sale of the Disputed Domain Name. On this basis, the Complainant considers that even if the Respondent deliberately refrained from formulating a clear and precise statement - i.e. to communicate a sale's price for the Disputed Domain Name to the Complainant, the Respondent's communications to the Complainant were clearly inviting the latter to formulate a purchase offer of the Disputed Domain Name. As a result, the Complainant considers that the Respondent registered the Disputed Domain Name following the announcement of the granting to Group France Telecom/Orange of a 3G licence in Togo, with the deliberate aim to prevent Group France Telecom/The Complainant from registering the Domain Name and to force Group France Telecom/the Complainant to purchase it at the highest price.
The Respondent first alleges that he registered the Disputed Domain Name in order to create a company marketing oranges in Togo. After a market study made by a company (Catek) in September 2008, it appeared that the marketing of oranges in Togo could be a good business. The Respondent claimed that he was not aware of the projects of France Telecom in Togo at the time when he registered the Disputed Domain Name and that he was subsequently threatened by France Telecom in order to obtain the transfer of the Disputed Domain Name if he wanted to avoid going into litigation. He also stated that he did not pursue his business project because of these threats so that it is no surprise that the Disputed Domain Name has not been actively used and that France Telecom has not been able to identify a registered company named “Orange Togo” so far.
The Respondent also claims that he did not have the intent to sell the Disputed Domain Name at the time when he registered it, but that this idea came into his mind after having been contacted by France Telecom whereby he felt that this contact implied an offer to acquire the Disputed Domain Name. In this respect, the Respondent stated that the reference that he made “Orangecounty.com” was a means of stating that France Telecom should also sue “Orangecounty.com” because the word “orange” is associated with the word “county”.
The Respondent subsequently claims that the ORANGE trademark is not only associated with the telecommunication sector and that there are at least eight websites which refer to the color, to the city, to the fruit, etc. (“www.ville-orange.fr”, “www.otorange.fr”, “www.orangeamps.com”, “www.orangebikes.co.uk” “www.orangecountyfl.net”). On this basis, the Respondent claims that he hopes that France Telecom has initiated legal proceedings against the respective owners of these domain names.
Finally, the Respondent alleges that he is not a cybersquatter and that France Telecom would be claiming without proof that he would have registered the Disputed Domain Name following the public release of the information that France Telecom would enter into exclusive negotiations with Togo. However, the Respondent claims that if that information were true, the question would be why France Telecom would not have reserved the Disputed Domain Name several days after the disclosure of such information. He stated in this respect that the most realistic answer is that such information to enter into negotiations with Togo is not credible as far as the Respondent is concerned to it or that France Telecom never had the real intent to enter the Togolese market. If this were its intent, it would have had to register the domain name <orange.tg>, as used in other neighbouring countries (i.e. <orange.cf> for the Central African Republic and <orange.sn>, for Senegal). The Respondent also claims that he cannot be qualified as a cybersquatter given that he has not been involved in any similar disputes and that it is the first time that he registered a domain name. On this basis, the Respondent claims that the Complaint should be rejected.
Paragraph 11 of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding subject to the Panel's discretion to decide otherwise, having regard to the circumstances of the case. The Panel's discretion must be exercised in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time, and costs. It is important that the language finally chosen by the Panel for the proceeding is not prejudicial to the parties in their ability to articulate the arguments for the case. International Data Group, Inc. v. Lingjun, WIPO Case No. D2004-0398.
In this case, the Panel first notes that both parties are fluent in French as this results from the communications between them before these proceedings were initiated. It also notes that the registration agreement relating to the Disputed Domain Name is in English, which is the language in which the Complainant filed its Complaint, whereby the Complainant also filed documents in French without English translation and offered to translate them into English if requested by the Panel.
The Panel also notes that the Respondent has requested that French shall be the language of the proceedings because he would not be in a position to file its Response in English, which he ultimately filed in French. The Panel further notes that the Respondent has not alleged at any time during the proceedings that he would not have been in a position to understand English and that he did not understand the content of the Complaint which was filed in English.
On this basis, the Panel holds that the language of the proceedings shall be English, which is understood by both parties and that the documents (in particular the Response) which were filed in French do not need to be translated into the language of the proceedings (i.e. English) given that both parties (as well as the Panel) fully understand French.
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in a UDRP proceeding. Thus, for the complainant to succeed, it must prove all of the three elements under the Policy:
(i) the respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the respondent's domain name has been registered and is being used in bad faith.
The Panel is satisfied that the Complainant has rights to the Trademarks in various countries and specifically in Mali (via a regional OAPI trademark) which is the country where the Respondent is located.
The Panel also notes that the Trademarks have reached a certain degree of recognition, as evidenced by the documents filed by the Complainant, which is not disputed by the Respondent.
A comparison between the Disputed Domain Name and the Trademarks shows the Disputed Domain Name contains the geographic term “Togo” in addition to the Complainant's Trademarks. It is well established that a domain name consisting of a well-known trademark combined with a geographic term remains confusingly similar to the trademark at issue. See e.g. Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709 relating to the domain name <thairedbull.com>; Red Bull Gmbh v. Tony Marinelli, WIPO Case No. D2001-0522, relating to the domain names <redbullwesterncanada.com>, <redbullcanada.org> and <redbullcanada.net>, where the panel finding was that “the combination of a trademark with a geographical name is common practice for many domain names … and does not exclude confusing similarity”; Inter-IKEA v. Polanski, WIPO Case No. D2000-1614, relating to the domain name <ikeausa.com>; Wal-Mart stores Inc v. Walmarket Canada, WIPO Case No. D2000-0150, relating to the domain name <walmartcanada.com>.
Furthermore, the confusion is even more likely in this case given that the Complainant, either directly or via its licensees, operates websites in some countries in which it operates by adding its Trademark ORANGE to the name of the relevant country (e.g. “www.orangemali.com”, “www.orangepoland.com”).
Consequently, the addition of the geographic term “Togo” to the term “Orange” in the Disputed Domain Name does not prevent the finding of confusing similarity between the Disputed Domain Name and the Trademarks owned by the Complainant, but rather contributes to create confusion between them.
As a result, based on the rights of the Complainant in the Trademarks and on the confusing similarity between the Trademarks and the Disputed Domain Name, the Panel finds that the conditions of paragraph 4(a)(i) of the Policy are met.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) 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.
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
In the Panel's opinion, the Complainant has demonstrated a prima facie case and the Panel accepts the Complainant's assertions based on paragraph 4(a)(ii) of the Policy. The question for the Panel to now determine is whether the Respondent can demonstrate rights or legitimate interests in the Disputed Domain Name, it being noted that the Disputed Domain Name is not actively used given that it merely resolves to a webpage containing the text: “This domain is already reserved”.
The Respondent's line of arguments essentially results from the claim that the two words composing the Disputed Domain Name (i.e. “Orange” and “Togo”) are generic terms and that registering them in the Disputed Domain Name does not violate the rights of the Complainant under the Policy. In this regard, the Panel accepts the principle that if the words in question are generic and if the Disputed Domain Name was not registered with the Trademarks and the Complainant in mind, the registration and the use of the Disputed Domain Name for a commercial website which would be operated by the Respondent might have been considered as bona fide.
It is unquestionable that the two words contained in the Disputed Domain Name are descriptive in English (which is the language of these proceedings) as well as in French which is the language in which exchanges were made between the parties. However, this fact does not automatically show that the use of these words in the Disputed Domain Name amounts to a bona fide offering of goods and services.
The Respondent contends in this respect that the Disputed Domain Name was chosen because it reflected the business of trading oranges in Togo that the Respondent planned to launch with unidentified partners and in which they would have significantly invested.
However, as alleged by the Complainant and as noted by the Panel, the Respondent has still not activated the use of the Disputed Domain Name and has not brought any convincing evidence showing the reality of the contemplated business (i.e. trade of oranges in Togo). The Respondent has not brought either any convincing explanation why he has not activated the use of the Disputed Domain Name (alleging that this would be due to the threats of litigation by France Telecom). On this basis, the Panel considers that the Respondent has not shown that he has made demonstrable preparations to use the Disputed Domain Name in connection with any bona fide offering of goods or services. See Vector Aerospace Corporation v. Daniel Mullen, WIPO Case No. D2002-0878 (holding that the holder of the domain name had no legitimate interests in it in the absence of credible evidence of the use of, or of demonstrable preparations to use, the domain name in connection with any bona fide offering of goods or services).
The contradictory answers and positions adopted by the Respondent in the course of his exchanges with the Complainant further confirm the view of the Panel that the Respondent had no bona fide intent to use the Disputed Domain Name. The Respondent indeed first stated that the Disputed Domain Name was to be used for his own business, before alleging that he had received an offer of acquisition of the Disputed Domain Name from “Orangecounty.com” (thus letting the Complainant think that he was willing to sell the Disputed Domain Name) and, finally, before stating in the Response that the reference to such offer from the owner of the domain name was in reality meant to express the view that France Telecom should also react against other domain names incorporating the Trademarks.
This inconsistent attitude confirms that the Respondent has not used, or has not made any demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Panel also notes that the assertions of the Complainant have remained unanswered according to which the Respondent has never been authorized by the Complainant to make use of the Trademarks in any way, and in particular to reserve or use a domain name incorporating the Trademarks. In addition, to the Complainant's best knowledge, the Respondent has neither registered the terms “Orange Togo” as a trademark in any jurisdiction, nor is Respondent commonly known under this name in Togo.
Accordingly, the Panel finds that the Respondent has no right or legitimate interest in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
In this case, the Complainant alleges that the Respondent registered and uses the Disputed Domain Name in bad faith because the Trademarks are highly distinctive and that the Complainant, its Group and the Trademarks are so widely known and have such a huge reputation, that the Respondent could not possibly be unaware of their existence.
The Panel notes in this respect that the Respondent has not alleged that he was not aware of the Complainant's Trademarks so that the Panel can assume that the Respondent indeed knew of the existence of the Complainant's Trademarks at the time of registration of the Disputed Domain Name.
The Respondent however disputes the fact that he knew about the information which was widely reported in the African media in November and December 2008 (as evidenced by the Complainant) that the Complainant's group (i.e. France Telecom) was entering the telecommunication sector in Togo (i.e. a contract was signed between the Togolese government and France Telecom granting France Telecom an exclusivity for the negotiation of a new global operator telecommunication license in Togo under the ORANGE brand).
The Panel notes in this respect that some of the press releases (filed by the Complainant in these proceedings) expressly refer to “Orange Togo” for the purpose of identifying the new business activity to be launched by the Complainant's group in Togo which corresponds exactly to the Disputed Domain Name. The Panel also notes that the registration of the Disputed Domain Name was made by the Respondent on December 17, 2008, i.e. very shortly after such media release. In this respect, the Respondent has not brought any credible explanation (or any evidence) explaining the choice of the terms composing the Disputed Domain Name and explaining the alleged coincidence of timing between the public announcement of the planned launch of activities of the Complainant's group in Togo and the registration of the Disputed Domain Name. The Respondent has further not brought any credible explanation regarding the choice of the words and of the structure of the Disputed Domain Name (i.e. <orangetogo>) which is identical to other domain names registered and used by the Complainant's group in other countries, such as in Mali where the Respondent is based (i.e. <orangemali.com>), whereby the Panel notes that if the intent was to use the Disputed Domain Name for a business of trade in oranges it could have been more appropriate to refer to the plural form (i.e. “oranges”) rather than the singular form which rather refers to the orange color (or to the Trademarks).
Under these circumstances, the Panel is convinced that the Respondent had the Trademarks and the Complainant in mind at the time of registration of the Disputed Domain Name.
As already noted above with respect to the second condition, the Panel is struck by the Respondent's contradictory attitude as a result of the fact that the Respondent first claimed that he wanted to use the Disputed Domain Name for his effective business purposes and subsequently indicated that he would had been “approached” by “Orangecounty.com”, thus suggesting that he would be willing to negotiate a sale of the Disputed Domain Name. On this basis, in the absence of any credible information or evidence provided by the Respondent legitimizing his contemplated use of the Disputed Domain Name, the Panel cannot conclude otherwise than by stating that the registration and use of the Disputed Domain Name was made in bad faith. See Aventis Pharmaceuticals Products Inc. v. PBS Publishing LLC, WIPO Case No. D2003-0122 (holding as a relevant factor for assessing the bad faith the lack of credible evidence to support Respondent's claim that the relevant domain name was registered in good faith as reflecting the alleged bona fide name of a new product).
It indeed appears that the Respondent registered the Disputed Domain Name knowing that it would exactly correspond to the typical domain name that the Complainant (or the Complainant's group) would register for its future activities in Togo. The argument raised by the Respondent that the Complainant and the Complainant's group are to be blamed because they failed to register the Disputed Domain Name first certainly does not constitute a valid explanation which could legitimize the registration of the Disputed Domain Name by the Respondent. Otherwise, any registration made by a non-legitimized third party to the detriment of the victim could not be challenged under the Policy. Similarly, the argument raised by the Respondent claiming that he is not a cybersquatter and that he has not been involved in other disputes in the past is of no help to him to the extent that first time registrants of domain names can also be challenged under the Policy.
In this respect, even if the Respondent did not offer for sale the Disputed Domain Name, it is clear for the Panel based on the exchanges between the Complainant and the Respondent that the Respondent's registration of the Disputed Domain Name had the aim to prevent the Complainant (or its affiliate companies) from registering the Disputed Domain Name and to force the Complainant to acquire it. Such behavior cannot be qualified, as anything other than bad faith under paragraph 4(a)(iii) of the Policy.
Finally, the passive holding of the Disputed Domain Name - which has never been actively used by the Respondent also constitutes evidence of bad faith. See eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 relating to the domain name <ebaykorea.com>.
For all these reasons, the Panel considers that the Complainant has established that the Disputed Domain Name was registered and is being used in bad faith by the Respondent pursuant to paragraph 4(a)(iii) of the Policy.
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 <orangetogo.com> be transferred to the Complainant.
Jacques de Werra
Dated: June 30, 2009