The Complainant is Orange Brand Services Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Bilalian Avocats, France.
The Respondent is Ancient Holdings, LLC, Wendy Webbe of Charlestown, Saint Kitts and Nevis. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Gal Communications (CommuniGal) Ltd. d/b/a Galcomm (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 13, 2014. On March 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 26, 2014, 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 March 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 23, 2014.
The Center appointed Linda Chang as the sole panelist in this matter on May 5, 2014. 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 member of the Orange Group, a world renowned telecommunication, Internet, television and mobile services provider. Its services are generally promoted and marketed under the trade name "Orange", which is also registered and protected a trademark throughout the world, including French Trademark Registration No. 94511028 ORANGE, Community Trademark Registration No. 1950740 ORANGE, and Community Trademark Registration No. 8460677 ORANGE STORE.
The Domain Name was registered by the Respondent on August 11, 2013 and is used to resolve to a pay-per-click portal, which contains links reproducing the name "Orange" such as "Orange Mobiles" and "Orange Internet". 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to trademarks in which the Complainant has rights. The Domain Name reproduces identically and entirely the Complainant's ORANGE trademark, and is highly similar to its ORANGE STORE trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name in that the Respondent has never been authorized to make use of the Complainant's trademarks ORANGE or ORANGE STORE in any way, in particular to reserve or use a domain name reproducing same trademarks. The Respondent has neither registered "Orange", "Orange Store" or "Store Orange" as a trademark in any jurisdiction, nor is the Respondent commonly known under this name in any part of the world.
The Complainant finally contends that the Domain Name was registered and is being used in bad faith. The Orange Group and ORANGE trademark are widely known that the Respondent could not possibly be unaware of their existence. The website associated with the Domain Name points to lists of websites offering products and services entering into competition with the Orange Group's own products and services, and such use could not have been made in good faith. That the Respondent did not answer any of the notices sent by the Complainant and its counsel demonstrates bad faith registration and use of the Domain Name. Finally, the Respondent is regularly involved in such fraudulent activities and examples include Centro Europeu Profissoes E Idiomas Ltda. v. Wendy Webbe - Ancient Holdings, LLC.,WIPO Case No. D2013-1243, AG v. Ancient Holdings, LLC.,WIPO Case No. DCH2011-0019 and C AG v. Ancient Holdings, LLC.,WIPO Case No. DCH2008-0013. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has trademark registrations comprising ORANGE and ORANGE STORE in multiple jurisdictions, including:
- ORANGE, French Trademark Registration No. 94511028, registered on March 15, 1994;
- ORANGE, Community Trademark Registration No. 1950740, registered on January 8, 2002;
- ORANGE STORE, Community Trademark Registration No. 8460677, registered on January 31, 2010.
The Panel is thus satisfied that the Complainant has registered trademark rights in the ORANGE and ORANGE STORE marks.
The Domain Name consists of "orange", which is identical to the Complainant's ORANGE trademark, together with a generic word "store", a hyphen "-" and the generic Top-Level-Domain ("gTLD") suffix ".com". The Panel finds it an accepted principle that the addition of suffixes such as ".com" being the gTLD, as well as "-" (hyphen) being a punctuation mark, is not a distinguishing factor.
The Panel views that the addition of the generic word "store" could not avoid a finding of confusing similarity, given the notoriety of the ORANGE trademark in the field of telecommunication and the existence of the Complainant's Orange Store. The Domain Name is descriptive for the Complainant's online store and the "Orange" names being displaced on the website associated with the Domain Name reinforce the likelihood of confusion between the Domain Name and the Complainant's ORANGE trademark.
The Panel accordingly holds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy and the Domain Name is confusingly similar to the Complainant's ORANGE and ORANGE STORE trademarks. B. Rights or Legitimate Interests
The Panel holds that mere registration does not establish rights or legitimate interests in a domain name so as to avoid the application of paragraph 4(a)(ii) of the Policy, and that once prima facie case has been made, a respondent has to present evidence to demonstrate its rights or legitimate interests in a domain name. See Potomac Mills Limited Partnership v. Gambit Capital Management,WIPO Case No. D2000-0062.
Based on the evidence presented on record, there is no indication that the Respondent is making legitimate noncommercial or fair use of the Domain Name, or that the Respondent demonstrated, before notice to it of the dispute, use of or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. In fact, the Domain Name is being used in connection with a pay-per-click portal offering products or services in competition with the Complainant. Such use has not been considered by previous UDRP panels as a legitimate noncommercial or fair use without intent for commercial gain, or a bona fide offering of goods or services.
In the circumstances where the Complainant possesses trademark rights to the ORANGE and ORANGE STORE marks while the Respondent seems to have no trademark rights in "Orange", "Orange Store" or "Store Orange" and the Complainant claims it has never authorized the Respondent to make use of its trademarks ORANGE or ORANGE STORE in any way, the Panel is satisfied that the Respondent does not have rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy.
It is well-established by UDRP precedents that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent. See International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683. The Respondent however had chosen not to respond to this Complaint and adduce evidence of its rights or legitimate interests to the Domain Name.
The Panel therefore holds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy and the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
The Panel notes that the Complainant and the ORANGE trademark enjoy a high reputation worldwide, and agrees that it is highly unlikely that the Respondent would not have had actual notice of the Complainant's trademark at the time of registering the Domain Name, especially given that the Domain Name was registered a few months later after the Complainant advertised the launch of its Orange Store across the medias. The Panel concludes that the Respondent was well aware of the ORANGE mark at the time of registration and such awareness suggests opportunistic bad faith registration. See Deutsche Bank AG v. Diego-Arturo Bruckner,WIPO Case No. D2000-0277.
By the time of being notified of this dispute, the Respondent had registered the Domain Name for around seven months, but yet had not put the Domain Name into actual use. The website is used as a pay-per-click portal containing links offering products and services entering into competition with the Complainant's own products and services. There is a banner on the website of the Domain Name introducing that the Domain Name is available for sale.
Parking websites typically offer domain name holders to earn click through fees for redirecting Internet users to third-party websites and thus, the Respondent is most likely able to generate revenues by capitalizing on the goodwill of the Complainant and the ORANGE trademarks. The Panel finds the Respondent's use of the Domain Name and its offering for sale of the Domain Name amounts to bad faith use. The Respondent, by using the Domain Name, is trying to profit from the diversion of Internet users by confusion between the Domain Name and the Complainant. The Respondent's purpose of registering the Domain Name is to trade on the fame of the Complainant's famous ORANGE trademarks, in order to attract, for commercial gain, Internet users to the corresponding websites under the Domain Name, by creating a likelihood of confusion with the Complainant and the ORANGE trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of a product or service on the Respondent's website.
Moreover, the Respondent has chosen not to vindicate his conduct and provide an explanation of its choice of the Domain Name after the Complainant sent to it several cease & desist letters and this Complaint. The Respondent's silence is further indicative of bad faith.
Finally, the Respondent appears to have engaged in a pattern of conduct in registering domain names comprising trademarks of others. The Panel concludes that this also leads to a finding of bad faith on the part of the Respondent.
In light of the above facts and reasons, the Panel therefore determines that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy and the Domain Name was registered and is being used in bad faith pursuant to 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 Domain Name be transferred to the Complainant.
Linda Chang
Sole Panelist
Date: May 26, 2014
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