WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Orange Brand Services Limited v. Ankush Kostha
Case No. D2017-1859
1. The Parties
Complainant is Orange Brand Services Limited of London the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Archer & Angel, New Delhi, India.
Respondent is Ankush Kostha of Jabalpur, India, self-represented.
2. The Domain Names and Registrar
The disputed domain names <orangetelecommunication.com> and <orangetelecommunications.com> (“the Domain Names”) are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2017. On September 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 26, 2017, 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 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2017. The Center issued the Notification of Respondent default on October 23, 2017. Respondent then sent several emails. No formal Response was filed with the Center.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on November 2, 2017. 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 owned by Orange SA, a French company, and is part of the conglomerate of telecommunications corporations known as the Orange Group. Complainant owns trademark registrations worldwide for the ORANGE Mark including: United Kingdom Trademark Registrations Nos.: 1542751A (registered February 12, 1998); 1542751B (registered April 23, 1999); and 1542752 (registered October 7, 1994), as well as Indian Trademark Registration Nos.: 642868 (registered February 28, 2003); and 814583 (registered May 14, 2003).
Complainant provides a variety of services and associated goods under the ORANGE Mark including mobile and fixed line telecommunications services, and IT and IT enabled services. Since the inception of the Orange brand in 1994, the Orange Group has become the sixth largest telecommunications company in the world and a global leader in corporate telecommunications services with operations in over 160 countries (including India where Respondent is based). By December 2016, Complainant had a global consumer customer base of 263 million customers of which 68% were served under the ORANGE Mark. As of March, 2017, this included 203.5 million mobile telephone customers, 19 million broadband customers, and over 8.6 million IP TV and satellite TV customers.
Complainant has continuously used the ORANGE Mark since its launch in the United Kingdom on April 28, 1994. Since June 2006, the ORANGE Mark has been in continuous use in over 200 territories worldwide, including India. The Orange Brand was launched in India in February 2000 (initially in Mumbai, Navi Mumbai and Kalyan). This was acknowledged to be one of the highest profile brand launch ever seen in India. Since then, Complainant has maintained a presence in India, offering telecommunications, information technology and related goods and services. Complainant and its subsidiaries employ over 2300 people in India and run 12 Points of Purchase (PoPs) across India.
Marketing and advertising expenses related to the ORANGE Mark from the years 2007 - 2011 are over 700 million Euros per year. The Orange brand has for the past 10 years been rated as one of the 100 most valuable brands in the world by international brand research agencies.
Both of the Domain Names were registered on December 26, 2016. Prior to the filing of the Complaint, Respondent operated a website at <orangetelecommunication.com> promoting its business and offering its services relating to bulk SMS and other telecommunication services. At the time of the decision the Domain Name <orangetelecommunication.com> resolves to a parking page stating that “the website is coming soon”, while the Domain Name <orangetelecommunications.com> has not resolved to an active website.
5. Parties’ Contentions
References to Complainant should include Complainant and others who at the relevant time use and/or have used the ORANGE Mark under license or authority from Complainant or its predecessor-in-title to the ORANGE Mark, i.e., Orange Personal Communications Services Limited, from whom Complainant acquired the ORANGE Mark and all associated intellectual property rights on October 30, 2009.
The Domain Names are identical or confusingly similar to the ORANGE Mark. They incorporate Complainant’s ORANGE Mark in its entirety along with the descriptive words “telecommunication” or “telecommunications” as a suffix. Those words do not lend the Domain Names any distinctiveness or reduce their similarity with Complainant’s ORANGE Mark. They inform consumers of the nature of the goods and services being offered, which in fact are identical to the goods and services offered by Complainant worldwide.
In or around June 2017, Complainant discovered that Respondent had registered the Domain Names and that he was operating the corresponding website at “www.orangetelecommunication.com” for promoting its business and offering its services relating to bulk SMS and other telecommunication services, while claiming to have direct association with the Top Telecom Companies in India and abroad, under the trade name “Orange Telecommunications”. The website corresponding to <orangetelecommunications.com> was not operational and the domain name registration is being held passively by Respondent.
Complainant sent an email dated June 12, 2017 to Respondent, informing him, among other things, of Complainant’s rights in the ORANGE Mark and requesting that he immediately cease using the Domain Names. Respondent replied by email that same day acknowledging ownership and use of the Domain Names in respect of Mobile Messaging, Mobile Marketing, SMS and Email business. Respondent sought Complainant’s permission to continue using the Domain Names only for Mobile VAS services in India and in the alternative, demanded an amount of 3.6 Million Indian Rupees (USD 56,220 approximately) to cease using the Domain Names. Complainant responded by email dated June 21, 2017 refusing to compensate Respondent and giving Respondent a final opportunity to settle the dispute amicably by transferring the Domain Names to Complainant.
Complainant enjoys exclusive rights in the word “orange” through its services and products. When considered along with its dictionary meaning (color or fruit Orange) the word “orange” does not indicate in any manner services or goods relating to the telecommunications industry, thus the ORANGE Mark registered in Class 09, 38 and 42 is an inherently distinctive trademark. Complainant is therefore protected against all use of ORANGE (including Respondent’s use) that dilutes and tarnishes its rights. Respondent neither has rights or legitimate interests in the Domain Names nor has Complainant assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or make use of the ORANGE Mark. Respondent’s mere registration of the Domain Names does not establish rights or legitimate interests in a domain name. Including the words “orange” and “telecommunications” (a word describing the sector in which Complainant operates) in the Domain Names clearly reflects Respondent’s intention to deceive the public into believing that some association or commercial nexus exists between Complainant and Respondent. To Complainant’s knowledge, Respondent has never been commonly known by the Domain Names and has never acquired any rights in them. Respondent is not making a legitimate non-commercial or fair use of the Domain Names, without intent for commercial gain misleadingly to divert consumers or to tarnish Complainant’s ORANGE Mark.
Complainant’s rights in the ORANGE Mark predate Respondent’s registration of the Domain Names by about 22 years. Respondent has not used <orangetelecommunications.com>, while the website associated with <orangetelecommunication.com> was de-activated and made available for purchase to the public after receiving Complainant’s notice. Currently, Respondent is passively holding the Domain Names with the only intent to sell them to Complainant or to the public for an unwarranted price. The correspondence between the parties including Respondent’s demand for compensation (far in excess of the amount invested in the Domain Names) make it prima facie evident that registration of the Domain Names was intended to derive and extract monetary benefits from Complainant and more recently the public. Complainant has acquired significant reputation and substantial goodwill in the telecommunications industry and Respondent, being in an identical industry and dealing with same or similar services, is bound to have knowledge of the world-renowned repute of Complainant. Thus, Respondent has no reason to adopt the ORANGE Marks and register the Domain Names except in bad faith.
Respondent did not file a formal Response, but indicated that it filed a legal complaint with the Indian courts. Respondent did not provide further details regarding the alleged legal action.
6. Discussion and Findings
A. Effect of Court Proceedings
Paragraph 18(a) of the Rules provides the panel the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision, in the event of the initiation of legal proceedings. As detailed at section 4.14.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), panels generally issue a UDRP decision on the merits even in an overlapping court case. In the current circumstances, especially as Respondent has not provided any information about its alleged court action, and Complainant has confirmed that it has not received documents pertaining to any court proceedings between the parties to this proceeding, the Panel finds no reason not to issue a decision in accordance with the Policy.
B. Identical or Confusingly Similar
The Panel finds that Complainant has trademark rights in the mark ORANGE by virtue of the many trademark registrations around the world including United Kingdom Registration No. 1542752 and Indian Trademark Registration No. 642868.
Furthermore, the Panel concludes that the Domain Names, <orangetelecommunication.com and orangetelecommunications.com>, are confusingly similar to Complainant's ORANGE Mark. The Domain Names incorporate the well-known ORANGE Mark in its entirety and merely add the descriptive terms “telecommunication” or “telecommunications”. This evidence is itself sufficient to satisfy Complainant's burden under the first factor, EAuto, Inc. v. E Auto Parts, Inc., WIPO Case No. D2000-0121; see also, Playboy Enterprises International Inc. v. Global Media Domain Trust, WIPO Case No. D2006-1543. In this case, however, adding the terms “telecommunication” and “telecommunications” to the registered ORANGE Mark, particularly in view of Complainant's long-standing business operations in the telecommunications sector, only enhances the confusing similarity. See Dolce International Holdings, Inc. v. Dolce Hotels, WIPO Case No. D2005-0269.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
C. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Domain Names because: (1) Complainant has not assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or make use of its ORANGE Mark; (2) combining the ORANGE Mark with the words “telecommunication” or “telecommunications” (words describing the sector in which Complainant operates) in the Domain Names clearly reflects Respondent’s intention to deceive the public into believing that some association or commercial nexus exists between Complainant and Respondent; (3) Respondent has never been commonly known by the Domain Names and has never acquired any trademark or service mark rights in the Domain Names; (4) given the renown of Complainant’s ORANGE Mark, Respondent could not have been using the Domain Names in a legitimate way – any use would likely result in misleading diversion and taking unfair advantage of Complainant’s trademark rights; (5) Respondent’s mere registration of the Domain Names does not establish rights or legitimate interests in them so as to avoid the application of paragraph 4(a)(ii) of the Policy; and (6) Complainant enjoys exclusive rights in the ORANGE Mark for its services and products – it is an inherently distinctive trademark.
Complainant has raised a prima facie presumption of Respondent’s lack of rights or legitimate interests, and Respondent has failed to rebut that presumption. The Panel is therefore satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Names.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Panel concludes, on the evidence submitted by Complainant, that Respondent has registered and used the Domain Names in bad faith. Complainant's rights in the ORANGE Mark are uncontroverted, as is the fact that Respondent registered the Domain Names long after Complainant established its rights in the Mark and was using it worldwide, including in India. Furthermore, Respondent registered confusingly similar Domain Names to use at least one of them on a website that sold products in the same sector as Complainant conducts business with its ORANGE Mark. Thus, it is more likely than not that Respondent knew of Complainant and its rights in the ORANGE Mark when it registered the Domain Names, and did so in bad faith.
Using at least one of the Domain Names <orangetelecommunication.com> In connection with a website that was selling telecommunications products and services leaves the Panel to conclude that Respondent was using the Domain Name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the ORANGE Mark as to the source, sponsorship, affiliation, or endorsement of its web site and the products and service on the site. It bears noting that verbiage on the website claimed that: “We are directly associated with the leading telecom companies in India and abroad.” The public may have interpreted that as a relationship with Complainant, clearly a leading telecommunications company in India and abroad.
Bad faith use of the Domain Names is further evidenced by Respondent’s attempt to obtain money for them from Complainant, which exceeded the out of pocket costs of registering them, to cease using them. Currently, Respondent has taken down its prior website associated with <orangetelecommunication.com> but it is still trying to profit from registering that domain name by offering it for sale to the public.
The other Domain Name (<orangetelecommunications.com>) has not been associated with any website. There is a page stating in pertinent part: “This site can’t be reached.” Respondent has not submitted evidence of any good faith use of or intention to use the <orangetelecommunications.com> Domain Name that is confusingly similar to Complainant’s ORANGE Mark. The only evidence of record is Respondent’s request for compensation for both Domain Names that exceeded its out of pocket expenses and Respondent’s continual attempt to profit from the use of the <orangetelecommunication.com> Domain Name, a use the Panel determines is in bad faith
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <orangetelecommunication.com> and <orangetelecommunications.com> be transferred to Complainant.
Harrie R. Samaras
Date: November 16, 2017