WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Orange Brand Services Limited v. Wangyang Zhang, Shen Zhen Shi Kai Xin Cheng Zi Ke Ji You Xian Gong Si
Case No. D2018-0890
1. The Parties
The Complainant is Orange Brand Services Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Taylor Wessing LLC, United Kingdom.
The Respondent is Wangyang Zhang, Shen Zhen Shi Kai Xin Cheng Zi Ke Ji You Xian Gong Si of Shenzhen, Guangdong, China, internally represented.
2. The Domain Name and Registrar
The disputed domain name <hi-orange.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on April 20, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On April 25, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on April 26, 2018. The Respondent did not comment on the language of the proceeding.
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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on May 1, 2018. The Response was filed with the Center by way of two email communications on May 16, 2018 and a final version on May 18, 2018, before the due date of May 21, 2018.
The Center appointed Matthew Kennedy as the sole panelist in this matter on May 28, 2018. 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 the Orange Group of telecommunications companies. The Orange brand was created in 1994. As at March 2018, the Orange Group had a global customer base of 273 million customers, of which 68 per cent were served under the Orange brand. The Orange Group provides telecoms services to the consumer market in 28 countries in Europe, Africa, and the Middle East and operates worldwide as Orange Business Services. The Complainant has offices in Beijing and Shanghai. Its activities in China are focused on business-to-business telecommunication services and IT operations. It delivers services to more than 400 enterprise customers who connect into China, as well as 350 China-based companies connecting globally. The Complainant has roaming arrangements with Chinese telecoms companies so that Orange customers from other countries can roam in China and Chinese customers will be able to roam on Orange in the Complainant's footprint territories. The Complainant has registered numerous domain names that incorporate the word "orange". It operates its corporate website at "www.orange.com".
The Respondent is the registrant of the disputed domain name. "Wangyang Zhang", an individual, is listed as the registrant name for the disputed domain name. "Shen Zhen Shi Kai Xin Cheng Zi Ke Ji You Xian Gong Si", which may be translated as "Shenzhen Happy Orange Technology Co. Ltd", is listed as the registrant organization for the disputed domain name. It is a Chinese company with a sole proprietor and was registered under Chinese law on April 10, 2017. In this proceeding, Wangyang Zhang has signed all correspondence for Shenzhen Happy Orange Technology Co. Ltd. This decision refers to them interchangeably.
The Respondent designs and markets smart-device products. The Respondent filed Chinese trademark application number 24089647 for "HiOrange" on May 11, 2017, specifying goods in classes 9 and 18. After a preliminary examination, the Chinese trademark office issued a notice excluding electric wire and transformers in class 9 due to a prior application for the trademark HORANGE. The Respondent's Chinese trademark application is pending with respect to other goods. The Respondent also filed two United States trademark applications for "HiOrange" on May 12, 2017, one of which has been prosecuted to registration. The Respondent company is now the registered proprietor of United States trademark registration number 5405279 for "HiOrange", registered on February 20, 2018 with a claim of first use on April 10, 2017, specifying suitcases, travelling bags, and other goods in class 18. The Complainant filed an opposition to the Respondent's other United States trademark application, number 87447117, specifying goods in class 9; following the success of that opposition, this application was abandoned.
The disputed domain name was registered on April 11, 2017. It resolves to the Respondent's website, which is in English and titled "HiOrange". The website prominently displays an orange-colored logo comprising the word "Hi" and the segments of an orange. The website offers products including smart luggage, Bluetooth earbuds, cellphones, and cellphone accessories.
5. Parties' Contentions
The disputed domain name is confusingly similar to the Complainant's ORANGE trademark. It combines that trademark with the descriptive and non-distinctive prefix "hi" (which is commonly used as a greeting in the English language). It is also well-established that a generic Top-Level Domain ("gTLD") suffix, in this case ".com", may be ignored when assessing the similarity between a trademark and a domain name.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name was registered many years after the establishment of the Complainant's well-known ORANGE brand. The Complainant believes that the Respondent filed United States trademark application number "87/447177" for the mark "HiOrange" in class 91 . The Complainant has filed an opposition against the trademark application. The Respondent has failed to respond to any of the communications from the USPTO or the Complainant's United States lawyers. An interlocutory action is ongoing. (The Panel notes that this application has now been abandoned, as set out above.). The Respondent's use and registration of the disputed domain name, including in connection with the website to which it resolves, conflicts with the Complainant's rights in the ORANGE mark. There is no credible evidence that the Respondent has been or no credible legitimate basis on which the Respondent could be – commonly known by the disputed domain name or making any legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith. The disputed domain name was registered many years after the Complainant first started using the ORANGE mark. The reputation of the Complainant's ORANGE mark worldwide indicates that the Respondent knew or ought to have known about the Complainant's rights when registering the disputed domain name. The Orange Group currently has businesses operating under the Orange brand worldwide offering products and services covering the full spectrum of telecommunications, information technology and related goods and services. The Respondent offers goods/services under the disputed domain name which are similar to those offered by the Complainant. By using the disputed domain name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's famous ORANGE mark as to the source, affiliation and endorsement of its website or of a product or service on its website. The Respondent's registration, and any use, of the disputed domain name will disrupt the business of the Orange Group by misleading members of the public into believing that the disputed domain name, and any website to which it redirects, are connected with the Orange Group, and/or it will otherwise impede members of the public searching for genuine Orange websites.
The disputed domain name is not confusingly similar to the Complainant's ORANGE trademark. The Respondent's core business is smart luggage, which combines smart technology and luggage and is different from the Complainant's telecommunications services. The Respondent chose the name "HiOrange" as a translation of its corporate name because in customary Internet usage "high" often means "happy" and the greeting "hi" often has a happy connotation. The Respondent applied to register the trademark "HiOrange" in China and the United States. The addition of "Hi", "Hi-" or Happy" avoids confusing similarity with the Complainant's ORANGE trademark. When the Respondent exhibited at the Hong Kong Electronics Fair and the Guangzhou Export Commodities Fair in April and May 2018, no customers confused it with the Complainant.
The Respondent has rights and legitimate interests in respect of the disputed domain name. It has filed a Chinese trademark application for "HiOrange" in classes 9 and 18, which is pending, and has already obtained a United States trademark registration for "HiOrange" in class 18. The Respondent is a start-up company and some of its cellphone accessories and backpacks are sold on Amazon in different countries. The first three pages of Internet search results in Mandarin for "Orange" refer to the Complainant's operations in Hong Kong SAR, not the Respondent. The top Internet search results in Mandarin for "HiOrange" or "Hi-Orange" refer to the Respondent. Their fields of activity are not related. The Respondent is not attempting to use ORANGE for its own gain or for tarnishing the trademark of the Complainant. Use of the disputed domain name does not indicate or suggest any connection to the Complainant.
The disputed domain name was not registered and is not being used in bad faith. At the time of registration, the Respondent inserted a hyphen between "hi" and "orange" because the domains <hiorange.com> and <hiorange.com.cn> were already registered. The Respondent now uses the disputed domain name as its principal domain name. Registration of the disputed domain name was an entirely normal thing for a newly established company to do and was not done in bad faith. Since then, the Respondent has promoted and used the disputed domain name through many different channels, including packaging, exhibition promotion, social media, etc. The Respondent has never sought to transfer the disputed domain name to the Complainant for commercial gain nor attempted to exploit the disputed domain name improperly for its own gain.
6. Discussion and Findings
6.1 Language of the Proceeding
Paragraph 11(a) of the Rules provides that "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". The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the Respondent has used the disputed domain name to host a website in English, indicating that it is fluent or proficient in English and that the website is intended for an English-speaking audience; the disputed domain name is made up of two English words; and the Complainant and its authorised representative conduct their day-to-day activities in English; and that it would be disproportionate and unfair to put the Complainant to the time and cost of translating and submitting this Complaint in Chinese, whereas the Respondent will not suffer any real prejudice if the proceedings are in English.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.
The Panel observes that in this proceeding the Complaint was filed in English and the Response was filed in Chinese. The Respondent's website is in English from which it is reasonable to infer that the Respondent is able to communicate in that language. Having received a notice from the Center in Chinese and English regarding the language of the proceeding, the Respondent has not requested that the language of the proceeding be Chinese. The Response has addressed all three elements of the Policy. The Panel is familiar with both languages. In these circumstances, the Panel considers that requiring either party to translate its submission or the annexes would create an undue burden and delay whereas accepting both the Complaint and Response as filed does not create unfairness to either party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but that it will accept the Response as filed in Chinese.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant claims that it has obtained multiple trademark registrations in multiple jurisdictions for marks that consist of or incorporate the word ORANGE, the Orange device (color) and/or the Orange device, and that these trademark registrations specify, among other things, telecommunications and Wi-Fi goods and services. The Complaint provides a list of hyperlinks to prior panel decisions that have recognized the Complainant's trademark rights in certain jurisdictions but does not provide any trademark registration numbers, jurisdiction names, goods and services specifications, or evidence to indicate that the Complainant's rights arising from registration remain in force. However, the Complaint does provide evidence of the Complainant's extensive use of its ORANGE trademark in relation to telecommunications services in many jurisdictions in Europe, Africa, and the Middle East. Accordingly, the Panel finds that the Complainant has rights in the ORANGE trademark by acquired reputation.
The disputed domain name contains the Complainant's ORANGE trademark in its entirety. The initial element of the disputed domain name is "hi", which is separated from "orange" by a hyphen. These additional elements are far too minor to dispel confusing similarity with the Complainant's trademark for the purposes of the Policy, as the Complainant's trademark is clearly recognizable within the disputed domain name.
The disputed domain name also includes the gTLD suffix ".com" but a gTLD suffix does not dispel confusing similarity between a domain name and a trademark for the purposes of the Policy.
Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
"(i) before any notice to [the respondent] of the dispute, [the respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
"(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
"(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Panel recalls that the burden of proof of this element, like the other elements of the Policy, is borne by the Complainant. The Panel also notes that the second element does not call for a weighing and balancing of the parties' respective rights and interests but, rather, an assessment as to whether the Respondent has any relevant rights or legitimate interests
In this proceeding, it is common ground that the Respondent is using the disputed domain name in connection with an offering of goods. The website to which the disputed domain name resolves is titled "HiOrange". The website promotes the Respondent's "HiOrange" brand of smart luggage and also lists among its products Bluetooth earbuds, cellphones and cellphone accessories. The website does not display links to other websites. The Respondent also offers its "HiOrange" brand products on online sales platforms. The Response provides data on sales and traffic volumes for HiOrange on Amazon. The Respondent appears to actually offer goods on its site.
The Respondent holds a United States trademark registration for "HiOrange" specifying suitcases, travelling bags and other goods in class 18. The Panel notes that a respondent's trademark registration does not create an irrebuttable presumption of rights or legitimate interests for the purpose of the second element of the Policy. See Viacom International Inc. v. Future Media Architects, Inc., WIPO Case No. D2008-1833; British Sky Broadcasting Group Plc. and British Sky Broadcasting Limited v. Global Access, WIPO Case No. D2009-0817. Accordingly, the Panel will enquire whether the Respondent obtained its trademark registration to protect a bad faith domain name registration or otherwise trade off the fame and reputation of the Complainant's trademark. The Panel observes that the Respondent filed its trademark applications shortly after it registered the disputed domain name but well before the commencement of this domain name dispute. The Respondent's "HiOrange" mark is not identical to the Complainant's ORANGE mark while the element common to both marks ("orange") is a dictionary word. The Respondent's goods covered by the trademark registration are not identical to the Complainant's services but they are related insofar as its suitcases and travelling bags contain telecommunications apparatus. The Respondent's other goods in class 9 are not specified in the trademark registration and include earbuds, cellphones, and cellphone accessories that are related to the Complainant's services. Therefore, it is more likely than not that the Respondent was aware of the Complainant's ORANGE trademark at the time that the Respondent applied for its trademark, even though the Complainant does not provide telecommunications services to the consumer market in China, where the Respondent is located; the Respondent may not have been aware of the Complainant's services for the business market in China; and there is no evidence on the record that the Respondent was exposed to the Complainant's ORANGE mark via roaming, Internet or otherwise. The Respondent's subsequent use of its trademark on its website, including in its own logo, does not indicate an attempt to suggest an affiliation with the Complainant. After weighing the evidence presented, the Panel is unable to find that the Respondent obtained its "HiOrange" trademark registration to protect a bad faith domain name registration or otherwise trade off the fame and reputation of the Complainant's trademark.
The disputed domain name places a hyphen in the Respondent's "HiOrange" trademark between "hi" and "orange" but this is mere punctuation and does not alter pronunciation. The Respondent has provided a not implausible reason as to why it did not register its trademark as a domain name without the hyphen (i.e., that domain name was unavailable).
In light of the Respondent's registered trademark rights and other findings above, the Panel concludes that the Complainant has failed to demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
In view of the Panel's findings regarding the second element, it is unnecessary to consider the third element of the Policy. However, the Panel notes that the Complainant would have had difficulty showing, in particular, that the Respondent is using the disputed domain name in bad faith on the present record.
The Panel does not exclude the possibility that the Respondent may be trying to capitalize on the Complainant's fameor that the Respondent knew of the Complainant but believed it was acting in a legitimate manner given that it is operating in a somewhat different sphere. However, it is not possible to resolve such issues in a limited proceeding such as the present UDRP case.
7. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that, if the panel finds that the complaint "was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder", the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. Paragraph 1 of the Rules defines "Reverse Domain Name Hijacking" as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name".
The Complaint in this proceeding presented an incomplete version of the facts. In relation to the second element, the Complaint described in some detail the Complainant's then-ongoing opposition to the Respondent's United States trademark application for the mark "HiOrange" in class 9. However, it did not mention that the Respondent had prosecuted to registration another United States trademark application for "HiOrange" in class 18. The Complainant certified that the information contained in the Complaint was to the best of its knowledge complete and accurate. However, an online trademark search would have revealed that the Respondent held a relevant United States trademark registration.
The question arises as to whether the Complaint was deliberately incomplete. The Panel has found no evidence that the Complainant filed an opposition to either of the Respondent's class 18 trademark applications or that it had actual knowledge of the existence of the Respondent's trademark registration. Therefore, the Panel does not find that the Complaint was filed in bad faith.
For the foregoing reasons, the Complaint is denied.
Date: June 8, 2108
1 An online search of the United States Patent and Trademark Office trademark database conducted by the Panel indicated that the correct trademark application number was 87447117.