WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Orange Brand Services Limited (“OBSL”) v. Oleg Kiselev, Private Person

Case No. D2019-0232

1. The Parties

The Complainant is Orange Brand Services Limited (“OBSL”) of London, United Kingdom, represented by Taylor Wessing LLC, United Kingdom.

The Respondent is Oleg Kiselev, Private Person of Seversk, Tomskaya, the Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <orange-service.pro> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2019. On January 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 30, 2019, 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 February 1, 2019 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 February 1, 2019.

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 February 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2019.

The Center appointed Mariya Koval as the sole panelist in this matter on March 7, 2019. 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 wholly-owned subsidiary of Orange SA, and is a part of the conglomerate of telecommunications corporates known as the Orange Group. Orange Group is one of the largest operators of mobile and Internet services in Europe and Africa and a global leader in corporate telecommunication services. The Orange brand has been valued as one of the 100 most valuable brands in the world for the past 10 years. In 2018, the Orange brand was valued at USD 22,206 million and ranked as the 51st most valuable brand in the world by Brand Finance in its internationally recognized Global 500 survey.

The Complainant has a presence in the Russian Federation already more than twelve years, where the Respondent is registered and carries on its activity under the Disputed Domain Name.

The Complainant owns almost two thousand ORANGE Trademark (the “ORANGE Trademark”) registrations all over the world, including more than thirty registrations in the Russian Federation, in particular, but not limited to:

- Russian Federation Trademark No. 498552, registered on October 25, 2013, in respect of services in classes 37, 38, 41;

- Russian Federation Trademark No. 622670, registered on July 6, 2017, in respect of goods in class 9 and services in class 42;

- Russian Federation Trademark No. 342711, registered on January 30, 2008, in respect of goods in class 9 and services in class 42;

- Russian Federation Trademark No. 439513, registered on June 20, 2011, in respect of services in classes 37 and 42; and

- Russian Federation Trademark No. 480080, registered on February 5, 2013, in respect of goods in class 9 and services in classes 35, 36, 38, 41, 42.

The Complainant also owns two registrations for ORANGE BUSINESS SERVICES Trademark in Russian Federation:

- Russian Federation Trademark No. 549326, registered on July 30, 2015, in respect of goods in class 9 and services in classes 37 and 42; and

- Russian Federation Trademark No. 549872, registered on August 5, 2015, in respect of goods in class 9 and services in classes 37 and 42.

The Complainant operates numerous domain names, incorporating the ORANGE Trademark, for promotion of its services, such as <orange.com> (registered on December 9, 1993),

<orange-business.com.ru> (registered on October 24, 2011), <orange-business.ru> (registered on January 30, 2006), <orange.com.ru> (registered on November 23, 2011), <orangebusiness.com.ru> (registered on May 6, 2012).

The Disputed Domain Name <orange-service.pro> was registered on October 16, 2016. At the date of this decision, the website under the Disputed Domain Name is active and directs to a website where the services for repair and setting of different electronic equipment and devices, including phones, tablets, computers, services for data recovery and services for design, installation and maintenance of integrated security systems are proposed.

5. Parties’ Contentions

A. Complainant

The Complainant contends that since the launch of the Orange telecoms business in the United Kingdom in 1994, the Complainant and its licensees have made and continue to make considerable investment in the development and protection of the Orange brand around the world. Such investment has resulted in a high level of brand awareness and recognition globally. The Complainant notes that it has accordingly established substantial rights in the ORANGE Trademark, which is inherently distinctive, non-descriptive and is famous throughout the world.

The Complainant further contends that it has had a significant presence and reputation in the Russian Federation since 2006 focused on providing IT and communications services, business-to-customer and business-to-business.

The Complainant also alleges that the Disputed Domain Name is confusingly similar to the Complainant’s ORANGE Trademark because of the Disputed Domain Name consists of the Complainant’s ORANGE Trademark as a dominant element combined with the descriptive and non-distinctive word “service”; two words are separated by a hyphen. The Complainant considers that the word “service” is not sufficient to differentiate the Disputed Domain Name from the Complainant's ORANGE Trademark.

The Complainant further contends that the Respondent’s use of the ORANGE name clearly infringes the Complainant’s rights in the ORANGE Trademark and there is no credible evidence that the Respondent has been – or no credible legitimate basis on which the Respondent could be – commonly known by the Disputed Domain Name. The Complainant also notes that there is no credible evidence that – or no credible legitimate basis on which – the Respondent is or could be making any legitimate noncommercial or fair use of the Disputed Domain Name.

The Complainant asserts that it is clear that the Disputed Domain Name was registered and is being used in bad faith by the Respondent based on any credible assessment of the above circumstances and facts of this case:

- the Disputed Domain Name was registered many years after the Complainant first started using the Orange Trademark. The reputation of the Complainants ORANGE Trademark worldwide (including, in particular, in the Russian Federation) indicates that the Respondent knew or ought to have known about the Complainant’s rights when registering the Disputed Domain Name;

- the Respondent offers goods/services under the Disputed Domain Name, which are similar to those offered by the Complainant;

- 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 ORANGE Trademark as to the source, affiliation and endorsement of its website or of a product or service on its website;

- 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 Complainant also notes that its lawyers in the Russian Federation attempted to contact the Respondent by a cease and desist letter on July 17, 2018, but no response has been received from the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the Complainant must demonstrate to the Panel that:

(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 respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

Pursuant to paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established its rights in the ORANGE Trademark due to long and extensive use in respect of telecommunication services in many countries all over the world, including in Russian Federation.

Also, previous UDRP panels have acknowledged the ORANGE Trademark as well-known and famous, see e.g., Orange Brand Services Limited v. Ankush Kostha, WIPO Case No. D2017-1859 (“The Domain Names incorporate the well-known ORANGE Mark in its entirety”); Orange Brand Services Limited v. Cinematurka Film Yaplm ve Organizasyon, Ismail Atil Turk, WIPO Case No. D2011-0002 (“The Panel finds that this case is no different than the others in that the addition of a generic word (‘telekom’) to the famous trademark ORANGE does not alter the fact that the disputed domain name is confusingly similar to the trademark”).

The Panel finds that the Disputed Domain Name incorporates the Complainant’s ORANGE Trademark in its entirety with addition of non-distinctive and descriptive word “service” with a hyphen. Addition of a hyphen to the Disputed Domain Name is typically inapplicable for the consideration of confusing similarity between a trademark and a domain name. Also pursuant to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Therefore, the Panel concludes that the descriptive word “service” in the Disputed Domain Name does not assist the distinguishing the Disputed Domain Name from the Complainant’s Trademark.

The Disputed Domain Name also includes the gTLD suffix “.pro”, however a gTLD suffix is normally disregarded under the confusing similarity test as a standard registration requirement for the purposes of the Policy.

In view of the above, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s ORANGE Trademark and consequently, the Panel concludes that the Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. The Complainant has used its ORANGE Trademark for twenty two years across the globe, including thirteen years in the Russian Federation, providing IT and telecommunication services.

The Complainant alleges that the Respondent has no rights or legitimate interests in the Disputed Domain Name due to the following:

- the use of the ORANGE name clearly infringes the Complainant’s rights in the ORANGE Trademark;

- there is no credible evidence that the Respondent has been commonly known by the Disputed Domain Name; and

- there is no credible evidence that the Respondent is or could be making any legitimate non-commercial or fair use of the Disputed Domain Name.

The Panel finds that the Respondent is using the Disputed Domain Name for operating a website in connection with offering the services for repair of different electronic devices of various world brands. At the same time, the Respondent does not own any trademark for ORANGE or ORANGE SERVICE brands and there is no evidence that the Respondent is commonly known by the Disputed Domain Name.

Taking into consideration the notoriety of the Complainant’s ORANGE Trademark, the Panel is of an opinion that the Respondent could not to be unaware of existing of the Complainant’s Trademark at the moment of registration of the Disputed Domain Name.

In accordance with the WIPO Overview 3.0, section 2.8.1 UDRP panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.

As may be inferred from the circumstances of this case it is apparent that the website under the Disputed Domain Name was designed to create an impression of official or related Complainant’s website, without being the same. Furthermore, the Respondent is using the Disputed Domain Name to promote goods/services of competitors to the Complainant. Therefore, the Respondent does not match the conditions of the Oki Data test.

Therefore in view of the above and in view of the Respondent has never been provided by any permissions or licences by the Complainant

The Panel also finds that the Respondent is not affiliated with the Complainant in any way, it has not ever been authorized or licensed by the Complainant to use the Complainant’s ORANGE Trademark, in particular in Russian Federation, respectively, there is no bona fide offering of goods and services and the Respondent consequently does not have a legitimate interest in the Disputed Domain Name.

Pursuant to the WIPO Overview 3.0, section 2.1 where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

Finally, the Respondent did not reply to the Complainant’s lawyers cease and desist letter and does not take part in this administrative proceeding, therefore the Respondent has failed to indicate any circumstance which could demonstrate any rights or legitimate interests in the Disputed Domain Name.

In light of the above, the Panel finds that the second element of the UDRP has been met by the Complainant.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy indicates some circumstances, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is 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) the Respondent has 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) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site 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 web site or location or of a product or service on its website or location.

The Panel finds that the Disputed Domain Name was registered in 2016, that is many years after the first use and the first registration of the Complainant’s ORANGE Trademark. The Panel considers that in view of the Complainant’s Trademark’s fame across the globe, it is more than likely that the Respondent was well aware of the Complainant, its activity and its well-known Trademark when registering the Disputed Domain Name.

The Complainant has duly demonstrated that its ORANGE Trademark is famous and that the Respondent, incorporating the Complainant’s ORANGE Trademark completely in the Disputed Domain Name, has no connection with the Complainant and its Trademark. The Panel concludes that the registration of the Disputed Domain Name, which is confusingly similar to the well-known ORANGE Trademark and also does not have a relation to this Trademark, may be evidence of bad faith registration and use. See e.g., Centurion Bank of Punjab Limited v. West Coast Consulting LLC, WIPO Case No. D2005-1319.

The Panel also considers that the Disputed Domain Name was registered and is being used for the purpose of attracting the Internet users to its website by creating a likelihood of confusion with the Complainant’s business and Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and of the products sold on it. According to section 3.1.4 of the WIPO Overview 3.0, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.

Furthermore, the Respondent did not respond to the Complainant’s cease and desist letter, that also evidences the Respondent’s bad faith registration and use of the Disputed Domain Name, see e.g. Accor v. Domains by Proxy, Inc. / Ostrid Company, WIPO Case No. D2008-0707. In addition, the Respondent did not take any efforts for justification of its actions with respect to the Disputed Domain Name registration and use.

Accordingly, the Panel finds that the Complainant has met 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 <orange-service.pro> be transferred to the Complainant.

Mariya Koval
Sole Panelist
Date: March 19, 2019