WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Les Publications Grand Public PGP v. BWI Domains
Case No. D2008-0905
1. The Parties
The Complainant is Les Publications Grand Public PGP of Levallois Perret, France, represented by Borowsky & de Baecque, France.
The Respondent is BWI Domains, Domain Manager, of West Bay, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with R Services Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2008. On June 16, 2008, the Center transmitted by email to R Services Corp. a request for registrar verification in connection with the domain name at issue. On June 17, 2008, R Services Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 paragraphs 2(a) and 4(a) of the Rules the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 23, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was July 13, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 14, 2008.
The Center appointed Brigitte Joppich as the sole panelist in this matter on July 23, 2008. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is a French company publishing reviews and periodicals and belonging to Axel Springer Group. It has published a TV programme magazine with the title “TELEMAGAZINE” since 1956 and sold over 340.000 copies of this magazine in 2007. The Complainant further uses the domain name to provide online information about such magazine.
The Complainant owns two French trademark registrations “TELEMAGAZINE”, namely registration no. 97661532 with a priority of January 31, 1997, covering international class 38 and registration no. 93466746 with a priority of May 3, 1993, covering international classes 16, 28, 38 and 41 (the “TELEMAGAZINE Marks”).
The domain name was first registered on March 8, 2003 and is used in connection with a parking website providing advertising links to third parties' websites.
The Complainant sent a cease and desist letter to the Respondent on April 15, 2008 which remained unanswered.
The Respondent has previously been involved in at least nine domain name cases where the transfer of domain names to the respective complainant was ordered (Chivas Brothers Limited, Chivas Brothers Pernod Ricard Limited, Muir Mackenzie & Company Limited v. BWI Domains/Whois Protection,WIPO Case No. D2008-0722; Gene Kelly Image Trust v. BWI Domain Manager,WIPO Case No. D2008-0342; Det Berlingske Officin A/S v. BWI Domain Manager,WIPO Case No. D2007-1717; AARP v. BWI Domain Manager, NAF Case No. FA 1094042; American Girl, LLC v. BWI Domain Manager, NAF Case No. FA 1104431; Choice Hotels International, Inc. v. BWI Domains c/o Domain Manager, NAF Case No. FA 1174416; Keystone Automotive Operations, Inc. v. BWI Domain Manager, NAF Case No. FA 1177906; Cavaliers Operating Company LLC; Gund Business Enterprises, Inc; and NBA Media Ventures, LLC. v. BWI Domains c/o Domain Manager, NAF Case No. FA 1192083; Hercules Incorporated c/o Sandra D. Dobbs v. BWI Domain Manager c/o Domain Manager, NAF Case No. FA 1199010).
5. Parties' Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is identical to the Complainant's TELEMAGAZINE Marks as it incorporates the Complainant's marks in their entirety.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name, because it does not offer any products or services through the website at the disputed domain name but merely uses the domain name in connection with a parking website offering links to third parties' competing with the Complainant, and because the Respondent is not known in the television industry nor for publications related to television.
(3) The Complainant finally contends that the domain name was registered and is being used in bad faith. In support of these allegations, the Complainant contends that the Respondent has ignored the Complainant's cease and desist letter, that the registration of the domain name prevents the Complainant from registering it, that the actual use of the domain name attracts Internet users to the Respondent's website for commercial gain and creates a likelihood of confusion with the Complainant's marks, that the registration of the domain name disturbs the Complainant's transactions because the website at the disputed domain name provides links to the Complainant's competitors, and, finally, that the Respondent has engaged in a pattern of registering domain names in order to prevent trademark owners from reflecting their mark in a corresponding domain name.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant's trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant's distinctive TELEMAGAZINE Marks in which the Complainant has rights and is therefore identical to such marks.
It is well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant's trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trade mark or service mark at issue.
Even though paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name, it is consensus view among panelists that the complainant has to make a prima facie case to fulfil the requirements of paragraph 4(c) of the Policy. The burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then lie with the respondent.
The Complainant has asserted that the Respondent has no rights or legitimate interests in the domain name, is not using the domain name in connection with a bona fide offering of goods or services and is not commonly known by the domain name and has therefore fulfilled its obligations under paragraph 4(c) of the Policy. The Respondent has not denied these assertions and therefore failed to prove rights or legitimate interests under paragraph 4(a)(ii) of the Policy.
Accordingly, and also noting the Panel's findings under the third element below, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or 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 its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.
While the Complainant has published a TV magazine entitled TELEMAGAZINE in France for many decades, the Respondent maintained a website at the disputed domain name with sponsored links in English and French language related to television, i.e. “TV Magazine”, “Téléloisirs”, “Télé DVD 7” and “Programmes télé”. Furthermore, such website contains a link entitled “Contact Axel Springer”, which is the name of the group of companies the Complainant belongs to. Finally, the word “tele” included in the disputed domain name is the French word for “television” but has no self-contained meaning in English, where it is merely used in combination with other words (i.e. tele-adjusting, tele-control or tele typewriter). The Panel is therefore satisfied that the Respondent was aware of the Complainant and its rights in “TELEMAGAZINE” when it registered the disputed domain name and therefore registered the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.
As to bad faith use, by fully incorporating the TELEMAGAZINE Marks into the domain name and by using the website under such domain name as a parking website providing links to direct competitors of the Complainant, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for the purpose of earning click-through-revenues from Internet users searching for the Complainant's website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (cf. L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623, with further references). The Panel is therefore satisfied that the Respondent also used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy. This inference of bad faith use is supported by the fact that the Respondent was ordered to transfer domain names to the respective complainants in at least nine earlier proceedings, where registration and use in bad faith were established. The Respondent therefore acted in a pattern of preventing owners of a trademark or service mark from reflecting their mark in a corresponding domain name as required under paragraph 4(b)(ii) of the Policy.
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
For all 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.
Brigitte Joppich
Sole Panelist
Dated: August 6, 2008
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