WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Orange Personal Communications Services Limited v. Petr Fomenkov Case No. D2008-1769 1. The Partie
The Complainant is Orange Personal Communications Services Limited, of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Simmons & Simmons, United Kingdom.
The Respondent is Petr Fomenkov of Moscow, Russian Federation.
2. The Domain Name and Registrar
The domain name (the “Disputed Domain Name”) was registered with EstDomains, Inc. at the time of filing of the Complaint. The disputed domain name is presently registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR due to the de-accreditation of EstDomains, Inc. by ICANN on November 24, 2008.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2008. On November 18, 2008, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the Disputed Domain Name. On November 18, 2008, EstDomains, Inc. 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 November 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on December 19, 2008.
The Center appointed Alistair Payne as the sole panelist in this matter on January 15, 2009. 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 FRANCE TELECOM group. The FRANCE TELECOM group is a provider of telecommunications, Internet, television and mobile services and has over 130 million customers in 220 countries/territories. The FRANCE TELECOM group's services are generally marketed under the ORANGE mark.
ORANGE is considered to be one of the world's most valuable trade marks.
The Complainant has expended considerable resources in promoting telecommunications goods and services under the ORANGE mark. The ORANGE mark is used in the sponsorship of several sporting and cultural events.
The Complainant is the owner of a considerable number of trade mark registrations and applications worldwide that incorporate the word ORANGE. The Complainant also operates numerous domain names which incorporate the ORANGE mark.
The Disputed Domain Name was registered by the Respondent on the September 9, 2008. Still-frames obtained from the website to which the Disputed Domain Name resolves on November 7, 2008 evince explicit pornographic material. This material has no correlation in any manner to the business operations of the Complainant.
A cease and desist letter was sent by the Complainant to the Respondent on October 8, 2008. No reply was received by the Respondent. A further cease and desist letter was sent on by counsel on behalf of the Complainant to the Respondent on October 15, 2008. No reply was received from the Respondent.
The Respondent has not transferred the Disputed Domain Name to the Complainant as requested in the cease and desist letter of October 8, 2008.
5. Parties' Contentions A. Complainant
The Complainant contends that the Disputed Domain Name is confusingly similar to its ORANGE mark.
The Complainant contends that the word “porn” is merely descriptive and is insufficient to distinguish the Disputed Domain Name from the ORANGE mark.
The Complainant contends that the Disputed Domain Name suggests that the goods and services on the Respondent's website are the services of the Complainant thus consumers would perceive a nexus between the business of the Complainant, the Disputed Domain Name and the content of the Respondent's website to which the Disputed Domain Name resolves.
The Complainant contends that there is no evidence to show:
(i) that the Respondent has used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services;
(ii) that the Respondent has been commonly known by the Disputed Domain Name; or
(iii) that the Respondent made a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the ORANGE mark.
The Complainant contends that the graphic and explicit pornographic content on the Respondent's website cannot be regarded as a bona fide offering of goods and services.
The Complainant contends that the Disputed Domain Name was merely registered form the purpose of trading off the reputation and goodwill of Complainant's well known ORANGE mark.
The Complainant contends that the Disputed Domain Name was registered and is used in bad faith.
The Complainant seeks a transfer of the Disputed Domain Name in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent has not filed a formal Response to the Complaint. Pursuant to paragraph 14(a) of the Rules, the Panel will proceed to a decision on the Complaint in the absence of a Response from the Respondent. The Panel may draw negative inferences from the Respondent's default where necessary.
6. Discussion and Findings A. UDRP Elements
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) the Disputed Domain Name is identical or confusingly similar to a trade 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.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy. B Identical or Confusingly Similar
The Complainant has provided sufficient evidence of its ownership of both registered rights and unregistered usage rights in the mark ORANGE. The Panel is satisfied that the Disputed Domain Name is confusingly similar to the ORANGE mark. Previous Panels have decided that the addition of a generic term such as the word “porno” to a trade mark is likely to result in confusion. See Microsoft Corporation v. S.L. Mediaweb,WIPO Case No. D2003-0538, (decided that is confusingly similar to the mark MICROSOFT); Academy of Motion Picture Arts and Sciences v. Chego Nado,WIPO Case No. D2003-0541, (decided that is confusingly similar to the mark OSCAR); Caesars World v. Alaiksei Yahorau, WIPO Case No. D2004-0513, (decided that is confusingly similar to the mark CAESARS); Nokia Corporation v. N a.k.a IBCC,WIPO Case No. D2000–0102, (decided that is confusingly similar to the mark NOKIA).
The Panel considers that the Disputed Domain Name is confusingly similar to the Complainant's mark for the purposes of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Complainant must make out at least a prima facie case that the Respondent lack rights or a legitimate interest in the Disputed Domain Name. Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. Once a prima facie case is shown the burden of proof then shifts to the Respondent who must demonstrate its rights or legitimate interests to the Panel.
Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that can be brought forward by the Respondent, which if found by the Panel to be proved based on its evaluation of all evidence presented, shall be demonstrative of the Respondent's rights or legitimate interests to the Disputed Domain Name for the purposes of Paragraph 4(a)(ii):
(i) demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(ii) an indication that the registrant has been commonly known by the domain name even if has acquired no trademark rights; or
(iii) legitimate non-commercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
It is generally regarded as prima facie evidence proof, for a complainant to show that the disputed domain name is identical or confusingly similar to its mark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its mark, whether in the disputed domain name or otherwise. Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857. There is no supporting evidence to suggest that the Respondent is commonly known by the Disputed Domain Name or is operating a bona fide business (other than displaying graphic pornographic content) through its website, or that it is affiliated with, or authorised by, the Complainant. The Panel considers that the Complainant has therefore made out a prima facie case.
The Respondent has failed to file a Response to the Complaint. It remains for the Panel to determine whether or not in this case the Respondent has no rights or legitimate interests in the Disputed Domain Name as a consequence of its actions.
Although the Panel accepts that the word “orange” should be freely available for general use to denote the fruit or colour of the same name, the Panel considers that the Complainant has established trade mark rights and has very substantial reputation in its ORANGE marks in the greater European region, including in the Russian Federation, particularly in relation to telecommunications and related services. The Respondent has provided no explanation and considering that it has only recently registered the Disputed Domain Name; the Panel infers that that the Respondent was aware of the Complainant's rights and expressly chose the Disputed Domain Name for the purposes of attracting website traffic to its pornographic site.
Although, as other panels have held, adult sex sites which are not illegal may constitute a bona fide offering of goods and services (V&S Vin&Sprit AhB v. Giovanni Pastore, WIPO Case No. D2002-0926) there is no indication in this case that there is any bona fide offering from the site and the Respondent has provided no such supporting evidence. In these circumstances, considering the reputation of the Complainant's mark and the Panel's inference that the Respondent chose this domain name purposefully it is clear to the Panel that the Respondent has not rebutted the prima facie case and accordingly finds that the Respondent has failed to demonstrate any rights or legitimate interests in the Disputed Domain Name.
The Panel considers that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. D Registered and Used in Bad Faith
The Policy requires a complainant to prove both registration and use in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) Circumstances indicating that [the respondent has] registered or acquired the domain name primarily for purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trade mark or service from reflecting the mark in a corresponding domain name, provided that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website 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 the [respondent's] website or location or of a product or service on [respondent's] website or location.
The Complainant contends that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating confusion as to whether the Complainant was the source, sponsor, affiliate or endorser of the Respondent's website. As noted above and in view of the Complainant's very substantial reputation in its ORANGE trade marks, the Panel cannot reason why the Respondent would use the word “orange” in the Disputed Domain Name for any other reason save as to create a likelihood of confusion amongst Internet users with the ORANGE mark.
The Panel is willing to infer that Internet users would at least initially consider the Disputed Domain Name to be either affiliated with or endorsed by the Complainant. It seems to the Panel that this is a classic cybersquatting case and the Panel notes that numerous previous panels have held that pornographic content on a website under domain name that corresponds to a third party's trade mark (with or without a generic descriptor) may indeed constitute bad faith. See, Caesars World, Inc v. Alaiksei Yahorau,WIPO Case No. D2004-0513; America Online v. Viper,WIPO Case No. D2000-1198; MatchNet PLC v. MAC Trading,WIPO Case No. D2000-0205; America Online, Inc. v. East Coast Exotics,WIPO Case No. D2001-0661.
Additional evidence of registration and use in bad faith on the part of the Respondent is evinced from the fact that, upon becoming aware of the existence of the Disputed Domain Name, the Complainant sent a cease and desist letter to the Respondent on October 8, 2008. This letter requested that the Respondent cease using the Disputed Domain Name and transfer same to the Complainant. No reply to this letter was received by the Complainant. A further letter was sent in a similar vain by counsel for the Complainant to the Respondent on November 3, 2008. No reply to this letter was received by the Complainant. To date the Respondent has not transferred the Disputed Domain Name to the Complainant.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(b)(iv) of the Policy and that accordingly the Disputed Domain Name was registered and used in bad faith under paragraph 4(a)(iii) of the Policy.
7. Decision
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 be transferred to the Complainant
Alistair Payne
Sole Panelist
Dated: January 29, 2009
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