WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Orange Brand Services Limited v. Cinematurka Film Yaplm ve Organizasyon, Ismail Atil Turk
Case No. D2011-0002
1. The Parties
The Complainant is Orange Brand Services Limited of Bristol, United Kingdom of Great Britain and Northern Ireland, of United Kingdom, represented by Bilalian Avocats, France.
The Respondent is Cinematurka Film Yaplm ve Organizasyon, Ismail Atil Turk of Istanbul, Cekmekoy, Turkey.
2. The Domain Name and Registrar
The disputed domain name <orangetelekom.com> is registered with UK2 Group Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2011. On January 4, 2011, the Center transmitted by email to UK2 Group Ltd. a request for registrar verification in connection with the disputed domain name. On January 4, 2011, UK2 Group Ltd. 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”).
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 January 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2011.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on February 2, 2011. 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 is part of Group France Télécom, a worldwide telecommunication, Internet, television and mobile services provider with over 130 million customers in 220 countries.
The Complainant is the owner of numerous trademark registrations for ORANGE in various countries dating back to 1994, including registrations in Turkey where the Respondent is domiciled.
Furthermore, the Complainant owns various domain names incorporating the denomination “orange” as standalone or associated with other terms, including domain names with the suffix “telecom”.
The Respondent registered the disputed domain name on September 7, 2010. The webpage currently connected to the disputed domain name contains the remark “THIS DOMAIN IS SALE!” [sic] and a reference to an email address.
By registered letter of September 15, 2010, the Complainant sent a cease-and-desist letter to the Respondent. The Respondent answered by email of October 13, 2010, acknowledging that it was aware of the Complainant and informing that it was a member of TTNET, the biggest Internet service provider in Turkey. Since the official colour of TTNET was orange, the Respondent stated that it chose to include the term “orange” in its company name “Orange Telekom Internet ve Bilişim Hizmetleri”. Finally, the Respondent mentioned that it had stopped using the “orange” name for all its correspondence and offered to “come to some sort of agreement” if the Complainant wanted (i) the Respondent to “shut down” or (ii) to use the Respondent's website. The Complainant sent a final notice letter on October 18, 2010.
5. Parties’ Contentions
The Complainant submits the following:
According to a study published in April 2010, ORANGE is a famous trademark around the world, as the 5th most renowned trademark worldwide in the “mobile operators” category and the 50th most renowned trademark worldwide in all sectors taken together.
The fact that the term “telekom” is attached to the ORANGE trademark is not sufficient to avoid confusion between the disputed domain name and the trademark. It is well established that the addition of generic or descriptive terms to a trademark in a domain name does nothing to distinguish it from the trademark. Moreover, the fact that the term “telekom” is attached to the ORANGE trademark only reinforces such risk of confusion, as it consists in the common designation for telecommunication services, which are precisely the services for which the ORANGE trademark is the most renowned.
The Respondent has never been authorized by the Complainant to make use of its ORANGE trademarks in any way and in particular to reserve or use a domain name reproducing same trademarks. And the fact that the website to which the disputed domain name used to lead has been suppressed and replaced by a webpage specifying “THIS DOMAIN IS SALE!” [sic] immediately after the Respondent received a notice letter from the Complainant's Counsel, further testifies that the Respondent does not have and has never had any legitimate interest in the disputed domain name.
The Respondent's representative expressly admitted that he was perfectly aware of the ORANGE trademark and its worldwide notoriety, more particularly for telecommunication and Internet products and services. As such, the Respondent's reservation of the disputed domain name was clearly and purposefully made in order to unduly benefit from the confusion with the Complainant's trademarks and activities to its benefit. Furthermore, the Respondent registered the disputed domain name in order to, ultimately, illicitly squeeze some money out of this illegitimate registration, and more specifically out of the Complainant. The reservation of the disputed domain name by the Respondent can therefore not have been made in good faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant’s trademark ORANGE with the addition of the word “telekom”.
As evidenced by studies submitted by the Complainant, the mark ORANGE must be considered as a famous trademark.
The Panel made a search of previous cases presented with WIPO with the term “orange”. As a result, it was shown that 9 UDRP proceedings have been initiated by the Complainant and its group companies in connection with the trademark ORANGE and disputed domain names containing generic additions to this mark. All of the respective domain names were transferred or the proceedings cancelled, respectively.
The Panel finds that this case is no different than the others in that the addition of a generic word (“telekom”) to the famous trademark ORANGE does not alter the fact that the disputed domain name is confusingly similar to the trademark. This is all the more evident since the addition “telekom” relates to the Complainant's core field of business.
The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the circumstances of this case, there are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name.
The Complainant, having made a prima facie case which remains unrebutted, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name used to be connected to a website offering Internet services and equipment. After the Respondent expressed its willingness to negotiate an agreement for the transfer of the disputed domain name to the Complainant and the latter declined any payment, the website was replaced by a webpage containing the statement “THIS DOMAIN IS SALE!” [sic].
In this Panel’s view, it is evident that the Respondent’s purpose in registering the disputed domain name was first to divert traffic away from the Complainant’s websites to its own website for commercial gain, and thereafter to sell the domain name to the Complainant or to a competitor of the Complainant. Such activity falls within the terms of paragraphs 4(b)(i) and (iv) of the Policy.
It may also be concluded that the Respondent knew of the existence of the Complainant’s trademark and its significance in Turkey when the disputed domain name was registered.
Under the circumstances, the Panel finds that the Respondent’s conduct constitutes bad faith registration and use, thus fulfilling 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 <orangetelekom.com> be transferred to the Complainant.
Dated: February 10, 2010