WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Orange Brand Services Limited v. WhoisGuard Protected, WhoisGuard, Inc / ImadZerhouni, Orange IPTV
Case No. D2019-2202
1. The Parties
The Complainant is Orange Brand Services Limited, United Kingdom, represented by Bilalian Avocats, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc, Panama / Imad Zerhouni, Orange IPTV, Morocco.
2. The Domain Names and Registrar
The disputed domain names <oronge-iptv.com> and <oronge-store.com> (the “Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2019. On September 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 10, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 16, 2019 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 17, 2019.
The Center verified that the Complaint together with the amended 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 of the Complaint, and the proceedings commenced on September 18, 2019.
In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2019. The Respondent sent several emails to the Center but did not submit any complete or certified response. The Center notified the Commencement of Panel Appointment Process on October 9, 2019.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 15, 2019. 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 a company organized under the laws of the United Kingdom and headquartered in London, England, United Kingdom. The Complainant owns more than 1,000 registered trademarks and licenses them for the use of the Orange Group of companies, a leading global provider of telecommunication, Internet, television, and mobile services with more than 264 million customers in 220 countries and territories. These include Morocco, where the Respondent is located. The Orange Group (formerly France Télécom S.A., rebranded “Orange” in 2013) offers television set-top boxes and television channels, as well as producing television programs.
The Complainant’s trademark registrations for ORANGE as a standard character mark include French Trademark No. 94511028 (registered March 15, 1994), International Trademark No. 711253 (registered October 27, 1998), and European Union Trademark No. 000127837 (registered March 29, 2001). The Complaint attaches a 2018 report indicating that the ORANGE mark is one of the 100 most renowned trademarks globally (among the top ten in the telecom sector). The Complainant also holds European Union Trademark No. 11522745 for the standard character mark ORANGE TV (registered June 24, 2013) and European Union Trademark No. 8460677 for ORANGE STORE as a standard character mark (registered January 31, 2010).
According to the Registrar, the Domain Name <oronge-iptv.com> was created on February 4, 2019 and the Domain Name <oronge-store.com> was created on March 6, 2019. Both were registered in the name of a domain privacy service. After this dispute arose, the Registrar identified the registrant of both Domain Names as the Respondent Imad Zerhouni, listing Orange IPTV as the registrant organization, with a postal address in Agadir, Morocco. Zerhouni and Orange IPTV are collectively referred to hereafter as the “Respondent”. Communications from Mr. Zerhouni to the Center were made from a “gmail” email account and do not further identify the Respondent. The Moroccan government’s online database of registered companies and trademarks does not list an entity named “Orange IPTV” or “Oronge IPTV” or any trademarks with the word “oronge”.
The Domain Name <oronge-iptv.com> resolves to a predominantly French-language website headed with the Domain Name and featuring on some pages a circular orange logo. The website advertises a subscription IPTV service. (“IPTV” is an acronym for “Internet Protocol television”, the delivery of television content through Internet protocol networks, as described in the Wikipedia article on “Internet Protocol television”.) The website offers subscriptions for “9000 channels” of television content plus video on demand and music on demand for rates such as EUR 49 for twelve months (EUR 59 adds adult content), delivered to smartphones, tablets, and televisions with compatible set-top devices and an Internet connection. The website offers service in France, Belgium, Canada, Switzerland, Africa, “Arabe”, Albania, Germany, Spain, Portugal, Romania, Italy, Netherlands, United Kingdom, “Latino” (presumably referring to Latin America), Turkey, United States of America, Russian Federation, India, Pakistan and “…”. A disclaimer appears at the bottom of each page, in English: “‘Oronge IPTV’ HAS NO PARTNERSHIP OR AGENCY WITH ORANGE S.A.” The website includes a shopping cart and a website contact form, as well as a contact telephone number. The latter is a Moroccan number, which is said to be available as a free call through WhatsApp. However, the website operator is not identified as an entity or listed with a physical address, and there is no “About us” or equivalent page on the website.
The website associated with the Domain Name <oronge-store.com> is similar but has fewer pages. It advertises the same subscription products and features the same logo and disclaimer.
5. Parties’ Contentions
The Complainant asserts that the Domain Names are confusingly similar to its ORANGE marks and that the Respondent is not authorized to use the Complainant’s mark and does not have a corresponding name or mark.
The Complainant argues that its marks are so well known that the Respondent, advertising a competing service using an orange logo and Domain Names with a slight misspelling of the Complainant’s name and mark, must have intended to mislead consumers for commercial gain. The Complainant also contends that the Respondent must be advertising “illicit IPTV subscriptions to allow access, for a ridiculous price, to several thousands of TV Channels”, and that this illicit activity could damage the Complainant’s reputation.
On September 19, 2019, the Respondent sent several emails in English and in French to the Center, stating in essence that the word “oronge” is a kind of mushroom of orange color, which is why the Respondent thought to use it as a logo, rather than because of its similarity to the word “orange”. The Respondent did not submit a formal Response.
The Complainant bears the burden of proof in a UDPR proceeding and must submit its Complaint with a certification of accuracy and completeness, as the Complainant has done in this proceeding. In fairness, the Rules require the Respondent to address the Complainant’s contentions in a Response that concludes with the following statement of the Respondent or its authorized representative:
“Respondent certifies that the information contained in this Response is to the best of Respondent’s knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.” (Rule 5(c) (viii)).
Lacking this certification, the Respondent’s incomplete and unsupported statements in emails to the Center are not entitled to weight, but the Panel considers that the Respondent’s arguments are pretextual and do not change the outcome of this proceeding.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A. Identical or Confusingly Similar
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
The Domain Names both slightly misspell the well-known, registered ORANGE trademark. One, <oronge-store>, is nearly identical to the Complainant’s registered ORANGE STORE trademark (substituting an “o” for an “a” and adding a hyphen), while the other, <oronge-iptv>, is quite similar to the Complainant’s registered ORANGE TV trademark. The distinctive portion of both Domain Names differs by a single letter from the ORANGE mark and is visually and phonetically similar to the mark to both French and English speakers. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is disregarded. WIPO Overview 3.0, section 1.7.
The Panel finds that both Domain Names meet the test of confusing similarity for Policy purposes and concludes that the Complainant has established the first element of the Complaint.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondents may establish rights or legitimate interests in the 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) that 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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Respondent has not done so here, following the Complainant’s demonstration of trademark rights, confusing similarity, and lack of permission to use the marks to advertise competing services.
“Oronge” appears to be the misspelled English and French word “orange”, which is also the Complainant’s mark. It is also is a dictionary word in French, spelled in this fashion with a second “o” rather than an “a”: according to the online French-English Cambridge Dictionary, “oronge” denotes the prized “Caesar’s mushroom”, an edible, orange-colored mushroom. The websites associated with the Domain Names have nothing to do with mushrooms or cooking, and the Respondent’s circular orange logo is not especially mushroom-like in appearance. The Respondent has not demonstrated that it is known by a corresponding name or has rights or legitimate interests in a corresponding trade name or trademark. Rather, the Respondent appears to be obscuring its identity and targeting the Complainant’s well-known trademarks to offer competing and possibly illicit services, as discussed further in the next section. This hardly suggests a legitimate interest in the Domain Names in connection with a bona fide commercial offering.
Noting the nature of the Domain Name and its use, the presence of a disclaimer on the Respondent’s website does not avoid a risk of confusion by association or affiliation with the Complainant’s trademark as discussed further in the next section.
The Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case and that the Complainant has established the second element of the Complainant.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The Complainant’s marks are well known in much of the world, including the Respondent’s country of residence and the countries in which the Respondent is offering its services. The Domain Names are confusingly similar and are used to advertise and offer the Respondent’s IPTV services that compete with television offerings of the Complainant’s in many of the same countries (and at prices that suggest possible piracy, as the Complainant infers). These facts comport with the illustration of misdirection for commercial gain in paragraph 4(b)(iv). The Respondent has not come forward with evidence of a legitimate purpose.
Moreover, the inference of bad faith is further supported by the fact that, while the Respondent’s website currently disclaims affiliation with the Complainant, this does not avoid initial confusion, and the website still does not disclose the identity and location of the website operator.
The Panel concludes on this record that the Respondent registered and used the Domain Names in bad faith and that the Complainant has established the third element of the Complaint.
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, <oronge-iptv.com> and <oronge-store.com>, be transferred to the Complainant.
W. Scott Blackmer
Date: October 18, 2019