Nominet UK Dispute Resolution Service

DRS :  03629

Orange Personal Communications Services Limited -v- Orange Broadband Limited

Decision of Independent Expert

1.	Parties

Complainant:		Orange Personal Communications Services Limited
Country:		GB

Respondent:		Orange Broadband Limited
Country:		GB

2.	Disputed Domain Names

The domain names in dispute are <orangebroadband.co.uk> and <orange-broadband.co.uk>.

3.	Procedural Background

On 26 April 2006 the Complaint was lodged with Nominet UK in accordance with the Dispute Resolution Service Policy (the “DRS Policy”) and hard copies of the Complaint were received in full on the same date.

On 26 April 2006 Nominet UK validated the Complaint.

On 27 April 2006 Nominet UK sent a copy of the Complaint to the Respondent and inter alia advised the Respondent that the Procedure for the conduct of proceedings under the Dispute Resolution Service (“the DRS Procedure”) had been invoked and allowed the Respondent 15 working days within which to file a Response to the Complaint.

On 23 May 2006 as no Response had been received from the Respondent by Nominet UK, the Complainant was advised accordingly.  

On 24 May 2006 Nominet UK received the relevant fee for these proceedings from the Complainant and Nominet UK proceeded to select and appoint an expert.

On 26 May 2006 James Bridgeman was selected and duly appointed as Expert and the file was transmitted to the Expert pursuant to paragraph 11 of the DRS Procedure 

4.	The Facts

The Complainant operates the Orange mobile telephone network in the UK which it launched in 1994, and supplies related goods and services. 

The Complainant owns a large portfolio of trade mark registrations thoughout the world for the word mark ORANGE, the ORANGE square device and the colour ORANGE in relation to telecommunications and other goods and services. The Complainant has recently registered a Benelux trade mark registration for the mark ORANGE BROADBAND. Said registrations include the following: -
 
•	UK trade mark ORANGE registration number 1542715A, registered on 13 February 1994 in respect of goods in class 9, filing date 31 October 1994;
•	UK trade mark ORANGE registration number 1542752, registered on 7 October 1994 in respect of services in class 38, filing date 23 July 1993;
•	CTM ORANGE registration number E127837, registered on 29 March 2001 in respect of goods and services in classes 9, 16 18, 25, 35 36, 37, 38, 41 and 42, filing date 1 April 1996;
•	CTM ORANGE and Device, registration number E1619386, registered on 28 October 2003 in respect of goods and services in classes 9,12 and 38, , filing date 19 April 2000;
•	CTM ORANGE and Device, registration number E1079629, registered on 14 September 2004 in respect of goods and services in classes 3,5,9,14,16,18,21,25,26,28,29,30,35,36,37,38,39, 41 and 42, , filing date 17 February 1999, claiming protection for the colour orange as a characteristic element of the mark; and
•	Benelux trade mark registration ORANGE BROADBAND, registration number 0776333, registered in respect of goods and services in classes 9, 38 and 42 filed on 7 November 2005.

The Complainant is the owner of the domain name <orange.co.uk> and maintains a web site at that address. 

The Respondent has not filed any Response and the only information available is that provided in the Complaint and on the Nominet UK file. The Respondent is a private limited company incorporated in the UK on 22 August 2003.

According to the WHOIS report on the file the domain names in dispute were both registered on 21 August 2003.

The registrant is the contact, administrative contact and billing contact for the registration.

5.	The Parties’ Contentions

Complainants’s Submissions

The Complainant refers to the above trade mark registrations and claims rights in the trade marks ORANGE and ORANGE BROADBAND. 

The Complainant submits that the core elements of the Orange brand include: use of the word “ORANGE”; use of the colour ORANGE, being shade “Pantone 151” under the Pantone colour classification; and the ORANGE square device comprising the word “orange” in white lower case font on an orange coloured square.

The Claimant has submitted extracts from the Complainant’s Annual Report and Accounts for 2004, together with information about the Complainant’s group and licensees and claims to have established a substantial goodwill in the said trade marks in the UK and elsewhere with a substantial annual turnover under the ORANGE brand. Since 1994, the Complainant and its licensees have invested heavily in promoting telecommunications goods and services under the brand. Since 1997, for example, the Complainant has spent over £50,000,000 a year on advertising and promotion in the UK. Precise figures for UK advertising and promotion are confidential. Such investment in the ORANGE brand has resulted in substantial goodwill in the brand, a strong brand identity and high level of brand recognition. 

The Complainant has also sponsored a number of high profile activities and events, including setting up the annual Orange Prize for fiction in 1996, and sponsoring the British Academy Film Awards, the Orange Arrows Formula 1 team and the Glastonbury Festival. The Complainant has submitted examples of the Complainant’s advertising and promotional material showing use of the core elements of the brand and printouts from the Complainant’s UK web site at <www.orange.co.uk> showing how the brand is used online.

By 2005, the Complainant had gained over 14.5 million subscribers to its UK mobile telephone services and achieved a market share of 23% of the UK mobile telephone market. 

The Complainant submits that broadband services were offered by fixed line phone providers after about the year 2000. The Complainant describes as "ORANGE broadband" the services that have been provided by the Complainant via Orange 3G mobile handsets since 2004. The Complainant intends to use the ORANGE BROADBAND name in future for internet services via a fixed line connection. Such services are currently offered by the Complainant’s affiliate companies (being subsidiaries of the Complainant’s parent company, France Telecom), including under the ‘Wanadoo’ brand. In June 2005, France Telecom announced the re-branding of certain services to ORANGE. 

Addressing the Respondent's alleged activities, the Complainant alleges that in September 2005, it came to the Complainant’s attention that one of the domain names in dispute, <orangebroadband.co.uk> had been registered by the Respondent without authority. This domain name is similar to the Complainant’s ORANGE word mark as it exactly reproduces it with the addition of the descriptive word ‘broadband’ and is identical to the Complainant’s ORANGE BROADBAND trade mark registration. The Complainant submits that it is established that the ‘.co.uk’ suffix should be ignored for this comparison. 

The home page of the site hosted at the<orangebroadband.co.uk> domain name purported to offer a high speed internet service and displayed a copy of the Complainant’s ORANGE square device which had been modified to include a depiction of a satellite dish and the word ‘broadband’. The home page also copied the look and feel of the Complainant’s genuine web site, positioning the logo on the top left corner of the page, using an orange colour similar to Pantone 151 and using orange coloured text on a white background. The Complainant has submitted printouts of these pages. 

Following a Complaint from a third party who had seen the Respondent’s website West Sussex Trading Standards Office (“WSTSO”) contacted the Complainant. The Complainant advised that it had no connection with the Respondent and WSTSO proposed to approach the Respondent on the basis of suspected trade mark infringement. Copies of the Complainant’s emails and attendance notes have been supplied.

The Complainant later became aware that the Respondent had also registered <orange-broadband.co.uk> and the gTLD <orange-broadband.com>. The Complainant believes that <orange-broadband.co.uk> traffic was also directed to the Respondent’s web site. 

Accordingly, on 4 November 2005, the Complainant wrote to the Respondent requiring it to cease all unauthorised use of the ORANGE trade marks. 

On 10 November 2005, WSTSO advised that the Respondent's web site had been taken down and, as it had been unable to contact the Respondent, it would take no further action. The web site at the <orangebroadband.co.uk> address was later put back up and WSTSO re-opened its investigation.

The <orangebroadband.co.uk> domain name had intermittently pointed to the web site of Evolutions Creative Design Agency (“ECDA”) at <www.evolutionsltd.com> and the Complainant wrote to ECDA for further information. ECDA advised that it had been supplied with the Respondent’s branding/logo to design the web site.

Having had no response from the Respondent, in January 2006, the Complainant instructed its legal advisors to write to the Respondent alleging trade mark infringement and passing off. AKP Chartered Accountants subsequently contacted the Complainant’s legal advisors and confirmed that it had registered the company name following instructions from the Respondent’s Managing Director, Mario Moirinho, but that he had since been un-contactable. 

The two domain names in dispute are currently pointing to a predominantly blank page bearing the ECDA logo and a holding page of Namesco Limited advertising broadband services respectively. Traffic to the <orange-broadband.com> address is also directed to the same Namesco holding page.

The Complainant has submitted detailed evidence in the form of copy correspondence, marketing materials, annual report and web site print outs to support the above claims, allegations and description of events in the Complaint.

The Complainant alleges that the domain names in dispute are abusive registrations in the hands of the Respondent because they were registered or otherwise acquired primarily for the purpose of unfairly disrupting the Complainant’s business. Although the registration of the domain names pre-date the registration of the Complainant’s trade mark ORANGE BROADBAND, they were registered speculatively in 2003 when broadband services were under consideration and development by mobile phone companies. 

The Respondent abused the fame of the ORANGE name as represented in the domain names to attract and capture as much traffic as possible seeking the Complainant’s services. As a result, the Respondent has obtained a business opportunity. It is likely that customers genuinely seeking information about broadband services associated with the Complainant, who reasonably assume information about such services might be found on sites at the addresses of the domain names in dispute, would have been diverted to the Respondent’s site. Seeing what purported to be an ‘Orange broadband’ service offered there, Internet visitors are likely to have been deceived into believing they were dealing with the Complainant or a company within the Complainant’s group and are likely to have looked no further for broadband services associated with the Complainant. This may have resulted in loss of custom by the Complainant. The Complainant does not know the extent of such disruption.

The Complainant submits that the domain names in dispute, in the hands of the Respondent are Abusive Registrations as they have been used by the Respondent in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s rights. The redirection of the said domain names to the Respondent’s web site is an appropriation of the goodwill associated with the Complainant's ORANGE trade marks. Further, the Respondent’s use was likely to confuse people into thinking that the domain names in dispute were controlled by the Complainant or that the services offered from the site were those of the Complainant. 

The domain names in dispute were then used by the Respondent to host a site, the content of which was presented in such a way as to further deceive visitors into thinking that the services offered were operated or authorised by the Complainant. This included reproducing the ORANGE  square device with additional elements and the Complainant’s corporate style. The Respondent in fact relied on creating confusion in order to derive benefit from it. By using such methods to attract customers to its own purported ‘Orange broadband’ services, the Respondent’s activities amount to trade mark infringement and passing off. 

The Respondent’s activities also take unfair advantage of and are unfairly detrimental to the Complainant’s rights as the Complainant has no control over the way the Complainant's ORANGE trade marks are used in the domain names or on the Respondent's web site. Neither does the Complainant have any control over the quality of the services purported to be supplied by the Respondent under the Complainant's trade  marks. 

Use of a registered trade mark to divert traffic to a competitor’s site is a well recognised phenomenon which will ordinarily deprive a respondent of any right or legitimate interest in the domain name in issue. The Complainant submits that there have been numerous decisions under the Nominet UK Dispute Resolution procedure where such use of a domain name was held  to constitute an Abusive Registration: 

Furthermore the Complainant contends that commercial use of the domain names in dispute, which is so inherently likely to lead to confusion of Internet users cannot constitute a genuine offering of goods or services.

The Complainant further submits that the Respondent is not commonly known by the name ‘Orange Broadband’. The Complainant does not know the extent of the Respondent’s trade under the name but believes it to be limited. The Complainant relies on its market wide intelligence monitoring and has not come across any trade by the Respondent. Neither the WSTSO nor the Respondent’s accountants having been able to contact the Respondent. Further, any connection with the Complainant's ORANGE trade marks established through the Respondent’s trade, results from the Respondent’s passing off and thus cannot constitute a legitimate connection. 

To the best of the Complainant’s belief, the Respondent has no trade mark or service mark rights (registered or unregistered) in respect of the domain names. Furthermore, the Respondent is not authorised by the Complainant or any companies within its group to use the Complainants ORANGE trade marks. 

At the time of the Respondent’s registration of the domain names the Respondent must have been aware of the Complainant and its rights in the ORANGE trade marks and must have decided to acquire the domain names with a view to appropriating the goodwill in those marks and luring Internet users to its own purported services advertised there. 

In summary, the Complainant relies on the following:- (i) ORANGE is a very well known trade mark around the world and must be known to all those aware of mobile phone and communication services whether via the Internet or otherwise; (ii) the Respondent is well aware of the Complainant’s business and its trade marks as is clear from the Respondent’s choice of corporate name, its use of the Complainant’s ORANGE device mark on its web site, the similarity of the look and feel of the Respondent’s web site with the Complainant’s; and the Respondent’s knowledge of the industry as seen from the content of its web site; (iii) the Respondent used the domain names to link to a site purporting to offer broadband internet services in direct competition with services provided by companies within the Complainant’s group.

Respondent’s Submissions

The Respondent has not filed any Response. 

6.	Discussion and Findings:

In order to succeed in these proceedings, paragraph 2(b) of the DRS Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2(a) are present, viz. that 

i.	the Complainant has Rights in respect of a name or mark which is identical or similar to the domain names in dispute; and

ii.	the domain names, in the hands of the Respondent, are Abusive Registrations.

Complainant’s Rights

The Complainant has established that it has Rights in respect of the ORANGE, ORANGE and Device, and ORANGE BROADBAND trade marks in numerous jurisdictions throughout the world. The Complainant's Rights under its UK, CTM and Benelux trade mark registrations listed above are particularly relevant in this case. On the evidence submitted it is clear that the Complainant also has common law rights established by its extensive use of the ORANGE mark in the provision of telecommunications in the UK and other jurisdictions directly and through its licensees. 

On the evidence, the Complainant has only relatively recently developed broadband services through its Orange 3G mobile handsets and has yet to provide fixed line broadband services. 

Both the <orangebroadband.co.uk> and <orange-broadband.co.uk>domain names are similar to the Complainant’s ORANGE word mark as they exactly reproduce the dominant element of the mark with the addition of the descriptive element being the word "broadband". They are identical to the Complainant's more recently registered Benelux trademark ORANGE BROADBAND. 

Abusive Registration

“Abusive Registration” is defined in paragraph 1 of the DRS Policy as follows:-

	“A Domain Name which either:

i.	was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; or

ii.	has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.”

The Respondent has failed to file a Response in these proceedings. There is no explanation forthcoming from the Respondent as to why it should have chosen to register domain names that have the Complainant’s well known ORANGE trademark as their dominant and distinctive elements.

While the Complainant's Benelux trademark registration post-dates the registration of the domain name, when the Respondent company was incorporated with the name Orange Broadband Limited and the domain names in dispute were registered in August 2003, the Complainant had a well established, significant reputation and goodwill in the use of the distinctive word ORANGE in the telecommunications market. 

It is inconceivable that the Respondent was not well aware of the Complainant's rights in the ORANGE mark at the time that the Respondent company was incorporated and the domain names in dispute were registered in August 2003.

While the Complainant has only relatively recently offered what it describes as "Orange broadband" services through its Orange 3G mobile handsets and has yet to provide fixed line broadband services, on the balance of probabilities, the Complainant is correct when it alleges that the domain names in dispute were registered speculatively in 2003 when broadband services were under consideration and development by mobile phone companies

By using the domain names as addresses for a web site promoting telecommunications services, it is obvious that the Respondent's intention, when registering the domain names, was to use the domain names as addresses of a web site intended to take unfair advantage of the Complainant's reputation, to confuse Internet users into believing that the Respondent was or was connected with the Complainant and to attract and capture Internet traffic abusing the Complainant's goodwill. 

In reaching this conclusion, it is relevant that the Respondent adapted the Complainant's ORANGE device trade mark and used a very similar device as a logo on its web site. The Complainant has submitted a copy of a print out of a page of the Respondent's web site that contains an orange-coloured square-shaped device, very similar to the Complainant's ORANGE device trade mark, having the same colours and using a very similar, if not identical, typeface/font.

It is difficult to understand how the Respondent expected to get away with this, but there does not appear to be any other explanation.

A non-exhaustive list of factors, which may be evidence that the domain name is an Abusive Registration is set out in paragraph 3.a of the DRS Policy. Sub-paragraph 3.a.ii of the DRS Policy, in particular, provides that "[c]ircumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant" is a factor which may be evidence that the domain name is an Abusive Registration. A complaint was made about the Respondent's web site by a third party to the West Sussex Trading Standards Office. 

On the balance of probabilities therefore, and in the absence of a Response, the Complainant has made out a prima facie case that the registration is an Abusive Registration as described either under sub-paragraph 3.a.ii of the DRS Policy.

The Complainant has therefore succeed in its application.

7.    Decision

This Expert therefore directs that the domain names <orangebroadband.co.uk> and <orange-broadband.co.uk> be transferred to the Complainant.

         James Bridgeman                             Date:  15 June 2006