The Complainant is Orange Brand Services Limited (“OBS”) of London, the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) represented by Taylor Wessing, United Kingdom.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America / Timur Yunusov, Moscow, the Russian Federation.
The disputed domain name <orange-tele.com> is registered with Network Solutions, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2017. On November 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 29, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed 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 1, 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 5, 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 amended Complaint, and the proceedings commenced on December 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2017.
The Center appointed Piotr Nowaczyk 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.
The Complainant is a wholly-owned subsidiary of Orange SA, and is part of the conglomerate of telecommunications corporates known as the Orange Group. Since the inception of the Orange brand in 1994, Orange has become one of the largest operators of mobile and Internet services in Europe and Africa and a global leader in corporate telecommunication services. Those services are provided by different companies within the Orange Group under the ORANGE mark. Moreover, the Complainant has a significant presence and reputation in the Russian Federation focused on providing IT and communications services, business-to-customer and business-to-business.
The Complainant owns numerous trademark registrations for ORANGE, including:
- International trademark registration for ORANGE (word), No 790992, registered on May 9, 2001 in classes 9, 16, 18, 25, 28, 35, 36, 37, 38, 39, 41, 42.
- International trademark registration for ORANGE (word), No 715855, registered on February 12, 1999 in classes 9, 16, 18, 25, 28, 35, 36, 37, 38, 39, 41, 42.
The Complainant also owns many domain names which incorporate the ORANGE mark, including <orange.com>.
The disputed domain name was registered on November 17, 2016.
The website linked to the disputed domain name presents the entity “Orange Telecom” which claims to be an Internet and service provider for high-speed Internet services to residents in Moscow and surrounding regions.
In August 2017, the Complainant made several attempts to contact the Respondent, the entity operating the website that the disputed domain name is linked to and the Registrar.
Firstly, the Complainant contends that the disputed domain name is confusingly similar to the ORANGE mark as it consists of the ORANGE mark combined with the descriptive and non-distinctive suffix “tele”. According to the Complainant, the use of the suffix “tele” combined with the generic Top-Level Domain (“gTLD”) “.com” (separated only by “.”) creates the word “tele.com” and therefore informs consumers of the nature of the services being offered i., which are identical to the services offered by the Orange Group worldwide.
Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name as there is no credible evidence that the Respondent has been – or could be - commonly known by the disputed domain name. The Complainant contends that there is also no evidence that the Respondent is or could be making any legitimate noncommercial or fair use of the disputed domain name. In this context, the Complainant emphasizes that the disputed domain name was registered many years after the establishment of the Complainant’s well-known brand. Moreover, the Complainant points out that the disputed domain name resolves to a website branded “Orange Telecom”. According to the Complainant, the website appears to be operated by an entity trading as Oranzh Telecom LLC which previously had a few telecom licenses (all were annulled in 2016).
Thirdly, the Complainant claims that the disputed domain name was registered and is being used in bad faith. In particular, the Complainant believes that by using the disputed domain name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s famous mark as to the source, affiliation and endorsement of its website or of a product or service on its website. Moreover, the Complainant asserts that the Respondent’s registration, and any use, of the disputed domain name will disrupt the business of the Orange Group (particularly in the Russian Federation) by misleading members of the public into believing that the disputed domain name, and any website to which it redirects, are connected with the Orange Group, and/or it will otherwise impede members of the public searching for genuine Orange websites.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(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 in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
The disputed domain name <orange-tele.com> contains the ORANGE mark in its entirety combined with a hyphen and a term “tele”. For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, theTLD suffix “.com” may generally be disregarded (LEGO Juris A/S v. Whois Data Protection Sp. z o.o. / Mirek Nowakowski ROSTALCO Sp. z o.o., WIPO Case No.
D2012-0607). In the present case, the use of the term “tele” increases the confusing similarity between the Complainant’s mark which is used in the telecommunication industry and the disputed domain name.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the ORANGE mark and as a consequence, the Complainant has met the requirement of paragraph 4(a)(i) of the Policy.
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions 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 to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; see also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) the Respondent is neither licensed nor authorized by the Complainant to use the ORANGE mark; (c) there is no evidence that the Respondent has been commonly known by the disputed domain name; (d) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. In particular, the use of the disputed domain name to create a website mirroring the Complainant’s mark and offering the same kind of services as the Complainant cannot be qualified as a bona fide offering of goods or services.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and concludes that the second element of paragraph 4(a) of the Policy is satisfied.
Firstly, the disputed domain name was registered many years after the registration of the Complainant’s mark. In the Panel’s opinion, the notoriety of the ORANGE mark worldwide indicates that the Respondent knew or should have known about the Complainant’s rights when registering the disputed domain name (Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
Secondly, by using the Complainant’s mark at the website under the disputed domain name creates the impression that it belongs to the Complainant or its affiliate. Creating such a website by the Respondent involves registration and use in bad faith (see The Swatch Group AG and Swatch AG v. Christopher Biedermann / Marcin Rulnicki, WIPO Case No. D2017-0388). Moreover, the Respondent offers under the disputed domain name the same kind of services that are offered by the Complainant which is another indicator of bad faith use of the disputed domain name.
In addition, the Respondent used a privacy shield for the registration of the disputed domain name. While the use of a privacy shield cannot be considered in itself as use of bad faith, once connected with additional elements, it may lead towards a registration and use in bad faith (Jay Leno v. St. Kitts Registry, Domain Names Administration, WIPO Case No. D2009-0571).
In the light of above, the Panel decides that paragraph 4(a)(iii) of the Policy is satisfied.
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, <orange-tele.com> be transferred to the Complainant.
Piotr Nowaczyk
Sole Panelist
Date: February 4, 2018