WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Orange Brand Services Limited v. Agosta Liko, PesaPal

Case No. D2016-1891

1. The Parties

Complainant is Orange Brand Services Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Taylor Wessing LLP, United Kingdom.

Respondent is Agosta Liko, PesaPal of Raleigh, North Carolina, United States of America (“United States”), self-represented.

2. The Domain Names and Registrar

The disputed domain names <orangeairtime.com> and <orangepayments.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2016. On September 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 19, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 and 4, the Center formally notified Respondent of Complaint, and the proceedings commenced on October 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2016. Respondent did not file a formal Response.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on November 14, 2016. 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

Complainant is a company organized under the laws of the United Kingdom and is part of the so-called “Orange Group”, one of the largest operators of mobile and Internet services in Europe and in Africa.

Complainant has provided evidence that it is the owner of numerous registered trademarks relating to the term “orange” throughout the world, inter alia, in the United States where Respondent apparently is domiciled:

- Word mark ORANGE, United States Patent and Trademark Office (USPTO), Registration No. 2344619; Registration Date: April 25, 2000; Status: Active;

- Word mark ORANGE, United States Patent and Trademark Office (USPTO), Registration No. 3204789, Registration Date: February 6, 2007; Status: Active.

Complainant also owns a number of domain names which consist either of the term “orange” on its own, or of the term “orange” plus another word, e.g. <orange.com>; <orangebank.com>; <orange-mobile.com> or <orange-money.com>. The domain name <orange.com> serves to operate Complainant’s global ORANGE website, promoting information on Complainant’s products and business.

Respondent is an individual residing in the United States who did not file any formal response, but contacted Complainant by email of October 3, 2016 offering to transfer the disputed domain names for an amount of USD 7,300 - in case of a withdrawal of the Complaint.

Complainant has provided evidence that the disputed domain names at some point before the filing of this Complaint resolved to websites at “www.orangeairtime.com” and “www.orangepayment.com” which offered airtime top-up services as well as payment services while replicating the ORANGE trademark and logo in its identical form.

Complainant requests that the disputed domain names be transferred to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant asserts that the ORANGE brand has consistently been valued since 2008 as one of the world’s top sixty brands and is meanwhile famous throughout the world.

Complainant suggests that the disputed domain names are identical or confusingly similar to Complainant’s ORANGE trademark, as they both combine the ORANGE trademark - being the dominant and principal component of the disputed domain names - with the non-distinctive and descriptive terms “airtime” and “payments”, respectively.

Complainant also claims that Respondent has no rights or legitimate interests with respect to the disputed domain names since (1) Respondent has not been authorized by Complainant to make any use of the ORANGE trademark, (2) using the disputed domain names to run websites offering airtime top-up services and payment services by replicating the ORANGE trademark clearly infringes upon Complainant’s trademark rights, (3) Respondent has not been commonly known by the disputed domain names and (4) Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, but instead uses the disputed domain names in a way that tarnishes Complainant’s ORANGE trademark.

Finally, Complainant argues that the disputed domain names were registered and are being used in bad faith by Respondent since due to the manner in which Respondent is using them together with Complainant’s ORANGE trademark and logo will consumers make believe that the disputed domain names are authorized by Complainant when they are not, thus Respondent intentionally attempts to mislead Complainant’s clients as to the affiliation of the service, by creating a likelihood of confusion with Complainant’s well-known and highly reputable ORANGE trademark for illegal commercial gain.

B. Respondent

Respondent did not formally reply to Complainant’s contentions, but contacted Complainant by email of October 3, 2016 offering to transfer the disputed domain names for an amount of USD 7,300 - in case of a withdrawal of the Complaint.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

(i) That the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) That the disputed domain names have been registered and are being used in bad faith.

Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel is to decide the dispute solely based upon the Complaint.

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain names <orangeairtime.com> as well as <orangepayments.com> are confusingly similar to the ORANGE trademark in which Complainant has shown to have rights.

Both disputed domain names incorporate the ORANGE trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9, that the addition of a generic or descriptive term or geographic wording to a trademark in a domain name is normally insufficient in itself to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the terms “airtime” as well as “payments” (which are even somehow related to Complainant’s core business) is not at all capable to dispel the confusing similarity arising from the incorporation of Complainant’s ORANGE trademark in the disputed domain names.

Therefore, the first element under the Policy set forth by paragraph 4(a)(i) in the case at hand is fulfilled.

B. Rights or Legitimate Interests

The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain names in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain names, nor can it be found that Respondent makes a legitimate noncommercial or fair use thereof without intent for commercial gain.

Respondent has not been authorized to use Complainant’s ORANGE trademark, neither as a domain name nor in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain names. Moreover, Respondent so far has neither made use of the disputed domain names for a bona fide offering of products or services nor for a legitimate noncommercial or fair use. On the contrary, Respondent apparently redirected the disputed domain names to websites at “www.orangeairtime.com” as well as “www.orangepayment.com” replicating Complainant’s ORANGE trademark and logo in its identical form and thereby offering airtime top-up services and payment services directly competing with those of Complainant.

Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, however, Respondent did not come forward with any reasonable explanations or contentions in reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on October 3, 2016. In fact, by means of an email of said day, Respondent offered to transfer the disputed domain names against payment of USD 7,300 - which obviously does not qualify to rebut Complainant’s contentions which substantiate a lack of Respondent’s rights or legitimate interests in the disputed domain names.

Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel finally holds that the disputed domain names were registered and are being used by Respondent in bad faith.

Complainant contends, and Respondent has not challenged these contentions, that the disputed domain names resolved at some point before filing this Complaint to websites at “www.orangeairtime.com” as well as “www.orangepayment.com” that offered airtime top-up services and payment services directly competing with those of Complainant, thereby even using a replication of Complainant’s ORANGE logo which is indicative of Respondent’s knowledge of Complainant’s ORANGE trademark by the time of the registration and making use of the disputed domain names. The Panel, therefore, has no difficulty in finding that the disputed domain names were registered and are being used by Respondent intentionally attempting to attract, for commercial gain, Internet users to said websites, by creating a likelihood of confusion with Complainant’s ORANGE trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s websites. Such circumstances shall be evidence of registration and use of the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that also the third element under the Policy as set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <orangeairtime.com> as well as <orangepayments.com> be transferred to Complainant.

Stephanie G. Hartung
Sole Panelist
Date: November 16, 2016