The Complainant is Orange Brand Services Limited of London, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Taylor Wessing, UK.
The Respondent is Whois Privacy Corp. of Nassau, Bahamas and Henri Vilmi of Reykjavik, Iceland represented by Lewis & Lin, LLC, United States of America ("United States"). 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with Internet Domain Service BS Corp (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 14, 2016. On July 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 15, 2016, 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 sent an email communication to the Complainant on July 18, 2016 requesting the clarification of the Mutual Jurisdiction section of the Complaint. The Complainant filed an amendment to the Complaint on July 20, 2016.
The Center verified that the Complaint together with the amendment to 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 of the Complaint, and the proceedings commenced on July 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2016. The Response was filed with the Center August 15, 2016.
The Center appointed John Swinson, Matthew S. Harris and Diane Cabell as panelists in this matter on September 14, 2016. The Panel finds that it was properly constituted. Each member of 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 Orange Brand Services Limited, a wholly owned subsidiary of Orange SA and part of the telecommunications conglomerate known as Orange Group. According to the Complaint, the Orange Group operates in over 160 countries, and has approximately 155,000 employees and 163 million customers worldwide.
The Complainant states that it owns over 3,000 trade mark registrations throughout the world which incorporate the word "orange". The Complainant licenses use of these trade marks to other Orange Group entities. The Complainant has provided evidence of the following registrations:
- European Union trade mark registration number 001561877 for ORANGE.COM, filed on March 16, 2000 and registered on March 13, 2002;
- International trade mark registration number 1154711 for ORANGE, registered on December 26, 2012; and
- European Union trade mark registration number 012542197 for ORANGE, filed on January 28, 2014, and registered on October 28, 2014.
(together, the "Trade Mark").
The Respondent is Henri Vilmi, an individual who resides in Iceland. According to the Response, the Respondent owns and operates a business which has been known as OrangeWebsite since 2005. This business previously offered web design services, but since 2009 has offered web hosting services.
The Disputed Domain Name was registered on June 12, 2009. The website at the Disputed Domain Name is the primary website for the Respondent's web hosting business. 5. Parties' Contentions A. Complainant
The Complainant makes the following submissions. Identical or Confusingly Similar
The Disputed Domain Name consists of the Trade Mark combined with the term "website", which is a descriptive term. The Trade Mark is the dominant and principal aspect of the Disputed Domain Name. The Disputed Domain Name conveys the meaning that it is a website belonging to, or connected with, the Orange Group, or promoting services provided by a business named "Orange". The Complainant's Trade Mark covers these services.
As such, the Disputed Domain Name is confusingly similar to the Trade Mark. Rights or Legitimate Interests
The Disputed Domain Name resolves to a website offering web hosting services. The provision of those services infringes the Complainant's rights.
Comments on the Respondent's Facebook page show that the Respondent refuses to respond to copyright complaints, allows users to post illegal material, and is being sued for violations of federal law.
The Respondent has not been commonly known by the Disputed Domain Name, and is not making any legitimate noncommercial or fair use of the Disputed Domain Name. Use of the Disputed Domain Name will tarnish the reputation of the Complainant. Registered and Used in Bad Faith
The Respondent has been using the Disputed Domain Name to host a number of illegal "extortion" websites. By using the Disputed Domain Name, the Respondent is intentionally attempting to mislead Orange Group's clients as to the affiliation or source of his hosting service, by creating a likelihood of confusion with the Trade Mark, for illegal commercial gain.
The Respondent's branding is similar to Orange Group's branding, which adds to the confusion. B. Respondent
The Respondent makes the following submissions. Identical or Confusingly Similar
The Respondent concedes that the Disputed Domain Name is confusingly similar to the Trade Mark. Rights or Legitimate Interests
The Respondent has rights and legitimate interests in the Disputed Domain Name. The Respondent has used the Disputed Domain Name in connection with a bona fide offering of goods or services since 2009 (see paragraph 4(c)(i) of the Policy), and has been commonly known by the name OrangeWebsite since 2005 (see paragraph 4(c)(ii) of the Policy).
The Respondent has provided services to at least 7,000 customers using the OrangeWebsite name since 2005. The Respondent's business has generated revenue of over EUR 850,000. He has spent approximately EUR 45,000 on advertising and marketing.
The Respondent had not heard of the Complainant at the time he registered the Disputed Domain Name. The Complainant does not offer any services in Iceland, and it does not offer competing web hosting or domain name registration services in the United States. The Complainant and the Respondent are not in competition.
The fact that the Respondent has received customer complaints does not make his business illegitimate, or vitiate his intellectual property rights. The Respondent's business is known for providing a platform for those concerned with privacy and freedom of speech, but the Respondent has never refused to remove a website following receipt of a valid court order. Registered and Used in Bad Faith
The Complainant has failed to provide any evidence which would establish both registration and use of the Disputed Domain Name in bad faith.
The Respondent's business is not in competition with that of the Complainant as the Complainant has failed to provide evidence that it operates in Iceland and Finland, or that it offers web hosting or domain name registration services. The Respondent's use of the Disputed Domain Name is not intended to attract Internet users by creating a likelihood of confusion. The Respondent could not have registered the Disputed Domain Name with an intention to profit from the Trade Mark, as the Respondent had not heard of the Trade Mark at the time of registration.
The Respondent has never offered to sell the Disputed Domain Name to the Complainant for a profit. There is no allegation or evidence that the Respondent has registered the Disputed Domain Name (or any other domain name) to prevent the Complainant from reflecting the Trade Mark in a corresponding domain name, or has engaged in such a pattern of conduct.
Finally, the Respondent's branding is different to that of the Complainant, and shows no evidence of bad faith. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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.
The onus of proving these elements is on the Complainant. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark. The Trade Mark has been wholly incorporated into the Disputed Domain Name and combined with a descriptive term (i.e. "website"). It is likely that an Internet user would interpret this additional term as subordinate to the Trade Mark, which is the dominant and distinctive part of the Disputed Domain Name (see, e.g., DPD Dynamic Parcel Distribution GmbH & Co.KG. v. Barath Singh,WIPO Case No. D2014-1823 and the case cited therein).
The Respondent does not dispute the Complainant's contentions regarding the first element of the Policy.
The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights to or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Complainant's primary arguments in relation to this element are that the Respondent is offering his web hosting services in infringement of the Complainant's rights in the Trade Mark, and that the Respondent allows his customers to use his services for the purpose of posting illegal material. The Complainant does not make clear the relevance of these submissions to the Respondent's rights or legitimate interests in the Disputed Domain Name. Presumably, the Complainant is using these submission to make the point that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services (see paragraph 4(c)(iii) of the Policy).
The Complainant also submits that the Respondent has not been commonly known by the Disputed Domain Name (see paragraph 4(c)(ii) of the Policy).
The Complainant has not provided any compelling evidence to support its contentions in relation to this element, and its submissions are sparce. Clearly, the Respondent has been operating a business from the website at the Disputed Domain Name since 2009, and based on the materials before the Panel, the Panel has no reason to find that the Respondent's business is not legitimate. The fact (if the Complainant provided sufficient evidence to prove this) that some third parties may use the Respondent's services to host illegal content is mostly irrelevant to the issue of the Respondent's rights or legitimate interests in the Disputed Domain Name. Whether or not the Respondent's provision of services via the website at the Disputed Domain Name for some of the Respondent's customers infringes intellectual property rights of third parties is not an appropriate question to be decided under the Policy.
It is also clear that the Respondent has been commonly known by the Disputed Domain Name since its registration in 2009. Again, the Complainant has provided no evidence as to why this should not be considered the case.
The Panel finds that the Complainant has not made out a prima facie case showing that the Respondent lacks rights to or legitimate interests in the Disputed Domain Name. The Complainant does not succeed in establishing the second element of the Policy. C. Registered and Used in Bad Faith
In light of the above finding, the Panel is not required to consider the third element of the Policy. However, the Panel will briefly address this element for completeness.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant's own evidence shows that it does not offer its telecommunications services in Iceland and Finland, which is where the Respondent's business is focused. The Respondent has provided a sworn declaration which states that he had not heard of the Complainant at the time he registered the Disputed Domain Name, and in the absence of any evidence to the contrary, the Panel is prepared to accept the Respondent's submission.
The Complainant bears the burden of providing sufficient evidence to show that, when the Respondent registered the Disputed Domain Name, he did so with the intention of taking unfair advantage of the Complainant's trade mark rights. The Complainant has not provided any such evidence. Instead, the Complainant's submissions on this element relate to the content hosted by the Respondent's customers via the Respondent's web hosting business.
The Panel finds that the Complainant has not met its burden of showing that the Respondent registered the Disputed Domain Name in bad faith. The Complainant does not succeed in establishing the third element of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
John Swinson
Presiding Panelist
Matthew S. Harris
Panelist
Diane Cabell
Panelist
Date: September 27, 2016
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