Orange Personal Communications Services Ltd. v. Webmasters

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Orange Personal

Communications Services Limited v. Webmasters aka Freeor Enterprises, Wirelessdomains.com,

Freezap.com, Matthew Alessi and Mrs Alessi

Case No.

D2001-0585

1. The Parties

The complainant is Orange

Personal Communications Services Limited of St James Vourt, Great Park Road,

Almondsbury Park, Bradley Stoke, Bristol, BS32 4QJ, United Kingdom, represented

by Matthew Jacob Esq., of Willoughby & Partners of London.

The respondent is Webmasters

aka Freeor Enterprises, Wirelessdomains.com, Freezap.com, Matthew Alessi and

Mrs Alessi of 210 Station Road, North Minneola, New York 11501, United States

of America, represented by Mr J Alessi.

2. The Domain Name and

Registrar

The disputed domain names

are <orangewirefree.com> and <orangewireless.com>. The registrar

is BulkRegister.com, Inc., of Baltimore, MD, USA.

3. Procedural History

This is an administrative

proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the

Policy") adopted by the Internet Corporation for Assigned Names and Numbers

("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute

Resolution Policy, approved by ICANN on October 24, 1999 ("the Rules")

and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

("the Supplemental Rules") of the WIPO Arbitration and Mediation Center

("the Center").

The Complaint was received

by the Center by email on April 23, 2001 and in hardcopy on April 25, 2001.

The Complaint was acknowledged on April 24, 2001. On May 2, 2001 registration

details were sought from and confirmed by the Registrar. On May 4, 2001, the

Center satisfied itself that the complainant had complied with all formal requirements,

including payment of the prescribed fee, and printed out a copy of the disputed

Webpage. On May 8, 2001, the Center formally notified the respondent by post/courier

(with attachments) fax and email (both without attachments) of the Complaint

and of the commencement of this administrative proceeding and sent copies to

the Complainant, the Registrar and ICANN.

The last day specified

by the Center for a response was May 27, 2001. A Response was filed by email

on May 27, 2001 and in hardcopy on June 1, 2001. The Response did not comply

with the Rules in certain respects, to which the Center drew the respondent’s

attention by email on May 29, 2001, confirming the grant of an extension of

time until June 2, 2001 within which to file a Response in conformity with the

Rules. The Center also informed the respondent in that email where to find the

Rules and how to conclude the Response.

Correspondence between

the Center and Mr J Alessi on behalf of the respondent ensued and although Mr

Alessi made many comments in several emails by way of refutation of the Complaint,

no formal response in conformity with the Rules was filed within the extended

time. On June 8, 2001 the Center gave formal notice of the respondent’s default.

By email on June 9, 2001 Mr Alessi rescinded the first Response.

On June 18, 2001 the Center

notified the parties of the appointment of Alan L. Limbury to serve as panelist,

Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality

and Independence. That day, the Center transmitted the case file to the panel

and notified the parties of the projected decision date of July 1, 2001.

The language of the proceeding

was English.

The panel is satisfied

that the Complaint was filed in accordance with the requirements of the Rules

and Supplemental Rules; payment was properly made; the panel agrees with the

Center’s assessment concerning the Complaint’s compliance with the formal requirements;

the Complaint was properly notified to the respondent in accordance with paragraph

2(a) of the Rules; no Response in conformity with the Rules was filed within

the time specified by the Rules (as extended by the Center) or at all and the

administrative panel was properly constituted.

4. Factual Background

The complainant is a telecommunications

company based in the United Kingdom. Since 1994 it has conducted under the trademark

ORANGE what is now the largest cellular phone network in that country, having

in September last year approximately 8 million subscribers. Over £31 million

was spent in advertising and promotion of the ORANGE brand in the previous year.

The complainant has numerous trademark registrations in the United Kingdom and

many other countries, including the United States, in respect of goods or services

associated with telecommunications. The following are examples:

Mark Country

Date of Registration Reg’d Number Class

ORANGE U.K. October

31, 1994 1542751A 09

ORANGE U.K. October

31, 1994 1542751B 09

ORANGE U.K. July

23, 1993 1542752 (Pt. B) 38

ORANGEWIREFREE U.K. June

28, 1995 2025221B 09, 16, 37, 38

WIREFREE U.K. June

28, 1995 2025221A 09, 16, 37, 38

Mark Country

Date of Registration Reg’d Number Class

ORANGE U.S.A. April

25, 2000 2344619 09, 38

(Application

filed July 27, 1998)

WIREFREE U.S.A. December

16, 1997 2122494 09

The disputed domain names

<orangewirefree.com> and <orangewireless.com> were registered in

the name "Webmasters" with the registrar BulkRegister.com on February

16, 2000. The Complainant had not authorized the use of its trademarks nor the

registration of the disputed domain names. On February 13, 2000 the domain name

<vodaphponewireless.com> had been registered in the name "Webmasters"

with the same Registrar and on 17 February, 2000, again with the same Registrar,

the domain name <mannesmannwireless.com> was registered in the name "Webmasters".

Mannesmann and Vodaphone are also European telecommunications companies.

Since then, the administrative,

technical and billing contacts for the disputed domain names have changed to

"WirelessDomains.com Freeor Enterprises", with the same address as

"Webmasters" (in which name the disputed domain names were and remain

registered). WirelessDomains.com describes itself as "the world’s largest

developer of wireless-technological domain names" and it offers domain

names (other than the disputes domain names) for sale on its site <www.wirelessdomains.com>.

A message posted on the

<time.com> website on May 18, 2000 revealed a link between WirelessDomains,

Freeor Enterprises and a person called Alessi:

"We own 1500 of the

key wireless phone and associated technology dot com names. We are asking to

be one of the first free "wireless" net service providers through

wireless bandwidth not wired connection. Is this possible for us too [sic] merge

with a major firm knowing that we cover every industry dot com name from sales

to technology to start up a wirelessfreeisp on a global b2b, b2c basis? Please

contact webmasters@wirelessdomains.com which is under development or call 1-877-799-1084.

Cordially Freeor Enterprises, JMGR. Alessi."

In April 2001 a representative

of the complainant endeavoured to contact the registrant of the disputed domain

names and discovered no company or business existed under the name Webmasters.

He held discussions with various persons who indicated they spoke for the owner

of the disputed domain names, being Mr Matthew Alessi, Mrs Alessi, Mr J Alessi

and their lawyer, Ari Goldberger Esq., who spoke of "the Alessis"

as having explained their registration of the disputed domain names.

During the course of communications

between the parties’ representatives, the reasons for the registration of one

or both of the disputed domain names were variously given as "a[n] aggregate

system for locating and identifying the wireless industry" (from freeor@nyfreei.net);

"a[n] info site for alternative fruits and vitamins" (from Mrs Alessi)

; "strictly an informational site. We’re not about selling domains, although

we offer it, eventually we will be offering that but we’re just strictly in

setting up and developing domain names. We’re not core in the business"

(from Matthew Alessi) and "as the Alessis have explained, they have registered

the domain name in good faith as part of their business in the wireless area"

(from Mr Goldberger).

On April 3, 2001 the complainant

offered to pay Mr Matthew Alessi £700 for the name <orangewirefree.com>.

Mr Alessi responded by saying he wanted about $10,000 - $12,000. Mrs Alessi,

"the oldest of the family" subsequently informed the complainant by

email on April 4, 2001 that "theres over $18.000 invested in this name"

and that "these figures you offered us are way too low".

5. Parties’ Contentions

A. Complainant

The disputed domain

names are identical or confusingly similar to the Orange trademarks in which

the Complainant has rights because they incorporate or include the Orange

trademarks;

The Respondent should

be considered to have no rights or legitimate interests in respect of the

disputed domain names.

The disputed domain

names were registered and are being used in bad faith.

B. Respondent

No formal response

was received by the Center. However, in considering the material put forward

by the complainant the panel has had regard to the emails sent by "J Alessi"

to the Center insofar as they comment upon the Complaint.

6. Discussion and Findings

To qualify for cancellation

or transfer, a Complainant must prove each element of paragraph 4(a) of the

Policy, namely:

(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 domain name; and

(iii) the disputed domain

name has been registered and is being used in bad faith.

Identity or confusing similarity

The respondent seems to

be under the misapprehension that the Policy applies to U.S.-registered domain

names only where a complainant has U.S.-registered trademarks. There are two

errors in this. First, the Policy protects owners of unregistered trademarks

as well as of registered trademarks. Second, the element in paragraph 4(a)(i)

may be established no matter where the trademark rights exist and no matter

where the domain name is registered.

Many cases under the Policy

and under US trademark law have held that "essential" or "virtual"

identity is sufficient for the purposes of the Policy: see The Stanley Works

and Stanley Logistics, Inc v. Cam Creek. Co., Inc. (WIPO Case No. D2000-0113),

Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S

Enterprises Ltd. (WIPO Case No. D2000-0802) and Nokia Corporation v.

Nokiagirls.com a.k.a IBCC (WIPO Case No. D2000-0102).

For a typical US case see

Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489, 497-98

(2d Cir. 2000) (the differences between the trademark "sporty’s" and

the domain name <sportys.com> – specifically, an apostrophe in the trademark

and the addition of .com in the domain name – are "inconsequential,"

such that the domain name is "indistinguishable" from and "certainly

‘confusingly similar’ to the protected mark").

The test of confusing similarity

under the Policy, unlike trademark infringement or unfair competition cases,

is confined to a consideration of the disputed domain name and the trademark:

AltaVista Company v. S.M.A., Inc. (WIPO Case No. D2000-0927); Gateway,

Inc. v. Pixelera.com, Inc (formerly Gateway Media Productions, Inc.)

(WIPO Case No. D2000-0109).

Both disputed domain names

begin with the whole of the Complainant’s trademark ORANGE. The domain name

<orangewirefree.com> incorporates the whole of the Complainant’s U.K.

registered trademark ORANGEWIREFREE and, at the same time, both of the Complainant’s

U.S. registered trademarks ORANGE and WIREFREE. The domain name <orangewireless.com>

adds the word "wireless" (itself containing half of the Complainant’s

registered trademark WIREFREE) to the Complainant’s registered trademark ORANGE.

The Panel finds both disputed

domain names are virtually identical and are confusingly similar to the Complainant’s

trademarks. The Complainant has established this element.

Illegitimacy

The onus rests on the Complainant

to show the absence of any rights or legitimate interests in the disputed domain

names on the part of the Respondent. In State Farm Mutual Automobile Insurance

Company v. Rocky E. Faw (NAF Case No. FA94971) the Respondent was found

to have no legitimate interests in respect of the domain name where he had not

used nor developed the domain name for a legitimate non-commercial or fair purpose

and was not using the domain name in connection with a bona fide offering of

goods or services. See also Leland Stanford Junior University v. Zedlar Transcription

& Translation (NAF Case No. FA94970).

The panel finds the respondent’s

registration, within four days of each other, of domain names incorporating

the names of three European telecommunications companies, one of which was ORANGE,

establishes clearly that the respondent was well aware, at the time of registration

of the disputed domain names, of the complainant and its use of the trademark

ORANGE in the telecommunications field.

The respondent has not

demonstrated any preparations to use either disputed domain name, despite statements

of its intentions to do so. The domain names are not being used.

The respondent Webmasters

does not appear to exist. Those responsible for registering the disputed domain

names appear to be known by several names, none of which are the disputed domain

names.

The complainant has not

authorized the respondent to use its trademarks nor to register the disputed

domain names.

The panel finds the complainant

has established this element and that the respondent has no rights or legitimate

interests in the disputed domain names.

Bad faith registration

and use

In SportSoft Golf, Inc.

v. Hale Irwin’s Golfers’ Passport (NAF case FA94956) a finding of bad faith

was made where the respondent "knew or should have known" of the registration

and use of the trade mark prior to registering the domain name. Likewise Marriott

International, Inc. v. John Marriot (NAF case FA94737); Canada Inc. v.

Sandro Ursino (eResolution case AF-0211) and Centeon L.L.C./Aventis Behring

L.L.C. v. Ebiotech.com (NAF case FA95037).

The panel has already found

that the registration of the disputed domain names took place within a few days

of the registration of other domain names incorporating the names of European

telecommunications companies and that this establishes clearly that the respondent

was well aware, at the time of registration of the disputed domain names, of

the complainant and its use of the trademark ORANGE in the telecommunications

field. This is sufficient to justify a finding that both disputed domain names

were registered in bad faith.

Paragraph 4(b)(i) of the

Policy provides, non-exhaustively, that it is evidence of both bad faith registration

and use if there is proved registration primarily for the purpose of profiting

from sale, rent or transfer to the trademark owner or its competitor for more

than the documented out-of pocket costs directly related to the domain name.

An offer, subsequent to registration, to sell at a profit may evidence registration

for that purpose, but this is not necessarily so: Maureen A. Healy v. Andreas

Kuhlen (WIPO Case No. D2000-0698); The World Phone Company (Pty) Ltd.

v. Telaccount Inc. (WIPO Case No. D2000-1163).

The respondent claims to

have invested $18,000 in the name <orangewirefree.com> alone. This far

exceeds the direct out-of-pocket expenses related to the domain name which are

no more than the registration costs for two years.

Within less than two months

of registering both disputed domain names and having used neither of them in

the meantime, Mr Matthew Alessi told the complainant’s representative he wanted

$10,000 - $12,000 for <orangewirefree.com>.

The panel finds thatthis

statement, coupled with the respondent’s awareness at the time of registration

of the complainant’s name and mark ORANGE, demonstrates that sale to the complainant

was the primary purpose for registering the name <orangewirefree.com>.

Accordingly the panel finds that domain name was registered and is being used

in bad faith, within the meaning of paragraph 4(b)(i).

As to the domain name <orangewireless.com>,

this was registered in identical circumstances on the same day as <orangewirefree.com>.

The complainant did not discover this until April 2001. This accounts for the

discussions between the parties having been confined in April 2000 to the name

<orangewirefree.com>.

Although no price was ever

put on the name <orangewireless.com> by the respondent in communications

between the parties, the identical circumstances in which both disputed domain

names were registered point strongly towards the same purpose in relation to

both. It is not necessary for the panel to reach a concluded view on this point,

however, because it is clear on other grounds that the name <orangewireless.com>

was registered and is being used in bad faith.

In the course of communications

between the parties, the respondent suggested that they do business together

in the United States. The comment it posted to the <time.com> website

indicates the respondent regarded the large number of telecommunications related

domain names it had as an asset that would make it attractive for merger with

a firm interested in providing "a wirelessfreeisp". But for its registration

of domain names incorporating the trademarks of European telecommunications

companies, this would be entirely unexceptionable. However, the registration

of those domain names evinced an intention to prevent the trademark owners from

reflecting their marks in corresponding domain names and to use that leverage

to extract advantages from them. The four domain names thus registered are sufficient

to constitute a pattern of such conduct.

This is evidence of bad

faith registration and use both under the specific terms of paragraph 4(b)(ii)

of the Policy and under the more general terms of paragraph 4(b).

Accordingly the complainant

has established that the disputed domain names were registered and are being

used in bad faith.

7. Decision

Pursuant to Paragraphs

4(i) of the Policy and 15 of the Rules, the panel directs that the domain names

<orangewirefree.com> and <orangewireless.com> be transferred to

the Complainant.

Alan L.

Limbury

Sole Panelist

Dated: June

26, 2001

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