The Complainant is Orange Brand Services Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) represented by Bilalian Avocats, France.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / I S, ICS INC of Grand Cayman, Cayman Islands, Overseas Territory of United Kingdom. 2. The Domain Name and Registrar
The disputed domain name (the “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 December 4, 2017. On December 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 5, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 7, 2017 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 December 7, 2017.
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 December 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2018.
The Center appointed Dawn Osborne as the sole panelist in this matter on January 16, 2018. 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 Orange Group, a telecommunication, Internet, television and mobile services provider which has provided services under the ORANGE mark (registered, inter alia, in France for its services) from 1994 (French trade mark registration no. 94511028, registered on March 15, 1994). It owns many domain names containing ORANGE including first used in 1993. It also owns the trade mark ORANGE BUSINESS, registered, inter alia, in France since 2001 (French trade mark registration no. 3109295, registered on July 3, 2001) and the European Union (“EU”) since at least 2009 (EU Trade Mark registration no. 006905137, registered on March 12, 2009).
The Domain Name, registered on May 8, 2017, has been used to point to third party commercial sites not connected to the Complainant and to sites using the ORANGE word mark and logo to purport to offer free gifts. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
The Complainant is part of the Orange Group, a world renowned telecommunication, Internet, television and mobile services provider which has provided services under the ORANGE mark (registered, inter alia, in France for its services) from 1994. It owns many domain names containing ORANGE including first used in 1993.
Orange Group services for individuals are commercialised under the trade mark ORANGE BUSINESS which is registered, inter alia, in France and the EU. The Complainant uses its subdomain to give access to users of ORANGE BUSINESS to webmail.
The Domain Name, registered in 2017, is confusingly similar to the Complainant’s ORANGE and ORANGE BUSINESS trade marks adding only descriptive terms “webmail” and/or “business”. Further the Domain Name is an imitation of the URL used by Orange Group to provide email services to its professional consumers.
The Complainant has never authorised the Respondent to use its services. The Respondent is not commonly known by the Domain Name, has no trade marks related to the Domain Name and has not used the Domain Name for an offer of products or services in good faith. The Respondent has no rights or legitimate interests in the Domain Name.
The Domain Name was registered and used in bad faith. The combination of “Orange”, “Orange Business” and “webmail” mimicking the URL used by the Orange Group for consumer webmail services reveals a deliberate attempt to cause confusion between the Domain Name and the ORANGE trade marks.
The Domain Name is redirecting to several different commercial websites not associated with the Complainant and a website where the ORANGE word mark and/or logo mark is used fraudulently to let consumers believe they may have won some gifts. These fraudulent directions are still implemented on December 7, 2017 despite the fact that the name of the owner of the Domain Name has been modified. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Domain Name in this Complaint combines the Complainant’s ORANGE mark (registered in, inter alia, France from 1993 for telecommunications services) and the Complainant’s ORANGE BUSINESS mark (registered, inter alia, in France for telecommunications services since 2001) with the terms “webmail” and/or “business” and the generic Top-Level Domain (“gTLD”) “.com”.
The addition of the words “webmail” and/or “business” do not serve to distinguish the Domain Name from the Complainant’s ORANGE or ORANGE BUSINESS marks, which are clearly recognizable in the Domain Name, which also mimics a URL used by the Complainant to provide email to consumers.
The gTLD “.com” does not serve to distinguish the Domain Name from the ORANGE or ORANGE BUSINESS marks, ORANGE being the distinctive component of the Domain Name.
Accordingly, the Panel finds that the Domain Name is confusingly similar to marks in which the Complainant has rights for the purpose of the Policy. B. Rights or Legitimate Interests
It is clear from the evidence that the Respondent has attached the Domain Name to commercial sites not connected with the Complainant and sites using the ORANGE name and logo to purport to offer free gifts.
It is clear from the mimicking of the URL used by the Complainant to provide email services to consumers by the form of the Domain Name that includes the Complainant’s ORANGE and ORANGE BUSINESS trade marks and also from the use of the official ORANGE logo mark on at least one site linked to the Domain Name that the Respondent was aware of the significance of the name and the rights of the Complainant at the time of registration.
The usage is not fair as the Respondent is using the ORANGE name and logo to pass itself off as the Complainant. The use is confusing and cannot amount to the bona fide offering of goods and services.
The Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use the Complainant’s ORANGE and ORANGE BUSINESS marks. It does not appear to be commonly known by these marks, have any rights in them or be authorised to use them. The use made of the Domain Name is commercial so cannot be noncommercial fair use.
As such the Panel finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy. C. Registration and Use in Bad Faith
It seems clear that the use of the Domain Name in relation to commercial sites using the ORANGE name and logo would cause users to associate such sites with the Complainant and its business. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the websites and services attached to the Domain Name in contravention of Policy, paragraph 4(b)(iv).
As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb 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 Domain Name be transferred to the Complainant.
Dawn Osborne
Sole Panelist
Date: January 18, 2018
Full & Egal Universal Law Academy