The Complainant is Orange Brand Services Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Archer & Angel, India.
The Respondent is Orange Softworld Pvt Ltd of Ahmedabad, Gujarat, India. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2013. On July 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 24, 2013, 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.
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 August 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2013.
The Center appointed William R. Towns as the sole panelist in this matter on September 9, 2013. 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 wholly owned by Orange SA (France Telecom), one of the largest telecommunications companies in the world, and is part of a group of companies commonly known as the Orange Group. The Complainant is the owner of the mark ORANGE, which is used worldwide by the companies comprising the Orange Group with a variety of goods and services, including mobile telephony, Internet and television broadcasting, software and applications development for telecommunications and IT products, advertising, healthcare and finance.
The Complainant holds registrations for the ORANGE mark in numerous countries around the world, including registrations in the United States of America, the United Kingdom, Australia, India, and the European Community. In use since as early as 1994, the Complainant’s ORANGE mark during the past five (5) years consistently has been ranked among the top 50 most valuable brands in the world by independent branding consultants, and recently was valued in excess of USD 15 million, according to the 2012 BRANDZ study.
The Respondent, located in Gujarat, India, registered the disputed domain name on March 28, 2012. The disputed domain name currently resolves to a website on which the Respondent is offering products and services that include software and applications development for iPhones, iPads and mobile phones. Prior to commencing this administrative proceeding, the Complainant acting though its legal counsel twice provided cease and desist demands to the Respondent, to which the Complainant received no reply. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is confusingly similar to its ORANGE mark and appropriates the Complainant’s mark in its entirety. The Complainant submits that the additional term “softworld” does not distinguish the disputed domain name from the Complainant’s mark, and calls to mind software related goods and services being offered by the Respondent, which are identical to those being offered by the Complainant under the ORANGE mark. According to the Complainant, it has an established business presence in India; telecommunication goods and services launched under the ORANGE brand as early as February 2000, and ORANGE branded retail outlets sell mobile phone goods and services throughout India.
The Complainant submits that the Respondent has no rights or interests in the disputed domain name since the Complainant has exclusive rights in the ORANGE mark, and the Respondent has not been authorized to use the ORANGE mark. The Complainant further asserts that the Respondent has neither used nor made demonstrable preparations to use the disputed domain name with a bona fide offering of goods or services, and that the Respondent instead is making an unauthorized use of the disputed domain name in connection with products and services similar and identical to those of the Complainant.
Given the Complainant’s extensive use of the ORANGE mark for more than seventeen (17) years, the Complainant argues that the Respondent intentionally registered and is using the disputed domain name to deceive the public into believing that some association exists between the Complainant and the Respondent. Citing Six Continents Hotels, Inc. v. GBT - Domains For Sale and Lease,WIPO Case No. D2008-1309, the Complainant argues that the Respondent is making an illegitimate, commercial, unfair use of the disputed domain name to deliberately divert consumers to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. In light of the foregoing, the Complainant submits that it is exceedingly unlikely that the Respondent has been commonly known by the disputed domain name, citing Six Continents Hotels, Inc. v. Trasporto di Network and Pro Intel,WIPO Case No. D2004-0246, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, citing Countrywide Financial Corporation v. Texas International Property Associates, NAF Claim No. 1075750.
The Complainant concludes that the Respondent registered and is using the disputed domain name in bad faith. Given the Complainant’s strong presence both internationally and in India, and the significant reputation and goodwill developed in its ORANGE mark, the Complainant asserts that the Respondent clearly was aware of the Complainant and had the Complainant’s mark in mind when registering the disputed domain name. The Complainant submits that the Respondent has intentionally attempted to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website or the products and services thereon. According to the Complainant, this is strongly evocative of the Respondent’s bad faith intent to exploit and profit from the Complainant’s rights. The Complainant submits that the Respondent’s failure to reply to the Complainant’s cease and desist letters is further evidence of such bad faith, citing Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 -177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(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 with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s ORANGE mark, in which the Complainant beyond question has established rights through registration and use. In considering this issue, the first element of the Policy stands essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, the disputed domain name incorporates the Complainant’s mark in its entirety, and the Panel finds that the additional term “softworld” is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant’s mark.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain name is confusingly similar to the Complainant’s mark. It is undisputed that the Respondent has not been authorized to use the Complainant’s mark. The Respondent notwithstanding has registered and is using the disputed domain name with a website offering products and services that are related to and in some instances compete with those of the Complainant.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed 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 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 has been commonly known by the disputed domain name, even if he 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 Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the record in this proceeding, the Panel considers it highly likely that the Respondent was aware of the Complainant and the Complainant’s ORANGE mark when registering the disputed domain name. In the absence of any reply by the Respondent, the Panel infers that the Respondent most likely registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant’s mark through the creation of Internet user confusion. Internet users could easily expect the disputed domain name to be linked to the Complainant’s website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774. Accordingly, the record before the Panel does not reflect the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Nor, in the circumstances of this case, can it be said that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. As noted above, the Respondent has not been authorized to use the Complainant’s mark, and in view of all of the foregoing the Panel does not consider that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In sum, and absent any reply by the Respondent, there is nothing in the record before the Panel to support a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark 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 related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel finds that the Respondent most likely was aware of the Complainant and the Complainant’s ORANGE mark when registering the disputed domain name. In the absence of any reply by the Respondent, the record evinces that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights through the creation of Internet user confusion. The record reflects that the Respondent more likely than not registered and is using the disputed domain name in bad faith to intentionally attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 name be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: September 23, 2013
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
Full & Egal Universal Law Academy