The Complainant is Canal + France of Issy-les-Moulineaux Cedex, France, represented internally.
The Respondent is E Media Spark Ltd. of Rose Hill, Mauritius. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2010. On October 25, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On the same day, Tucows Inc. 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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2010. Although the Respondent sent email communications on October 31 and November 1, 17 and 21, 2010 regarding this matter, it did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2010.
The Center appointed Cherise M. Valles as the sole panelist in this matter on November 29, 2010. 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, based in France, is well-known for its production of premium and specialized television channels and counts 12.5 million subscribers. The Complainant launched its first French satellite package on November 14, 1992 in Albertville, France. It is a leader in multi-channel offer in France and currently offers 300 channels and services.
The “Canalsatpackage” is well-known internationally and is available in the Republic of Mauritius (the jurisdiction where the Respondent appears to be located). Canal+France owns many trademarks, including in Mauritius:
- CANALSAT MAURICE, no. 21666, filed August 22, 2006 in classes 9, 16, 35, 38, 41 and 42:
- CANALSATELLITE MAURICE, no. 3700, filed April 2, 2001, in classes 9 and 16; and,
- CANALSATELLITE, no. 270, filed April 15, 1999 in classes 9, 16 and 28.
It also owns the international trademark, CANALSAT, no. 881566, filed on August 17, 2005, the Community trademark, no. 002666907, filed on April 24, 2002 and the French trademarks, no. 3127720, filed on October 24, 2001 in classes 9., 16, 35, 38, 41 and 42 and no. 3373430, filed on August 1, 2005 in classes 14,18, 24, 28, 36 and 37. The CANALSAT trademarks have a strong reputation and are well-known.
The Complainant also owns numerous domain names containing the term “Canalsat” including the following:
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The Complainant, together with Groupe Canal+, also owns .
E Media Spark Ltd. is the registrant of the disputed domain name. The disputed domain name was registered on July 4, 2009. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, in its Complaint filed in October 2010, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name is confusingly similar or identical to the CANALSAT trademark in the light of the fact that it incorporates its trademark in its entirety in the domain name. The identical use of the “canalsat” term in the disputed domain name creates sever confusion and high association with the CANALSAT trademark and domain name so that the public will believe that they share a common origin. The disputed domain name creates a likelihood that individuals will be confused into thinking that the site is owned, endorsed, licensed, sponsored or maintained by Canal+ France.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant states that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has not obtained any information indicating that the Respondent has been using in a manner that would give it rights or legitimate interests to the name. The website associated with the disputed domain name does not offer any goods or services sponsored by Canalsat; instead, it offers commercial links leading to pornographic and satellite television websites. The registrant of the disputed domain name has only demonstrated use by diverting Internet users to websites unrelated to Canal+ France, which does not establish its right or legitimate interests in the domain name. Rather, the Respondent appears to want to make commercial gain by diverting consumers to its website.
The disputed domain names have been registered and used in bad faith.
The Complainant asserts that the disputed domain name was registered in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use. The Complainant asserts that the disputed domain name is being used with the intention to attract Internet users to the Respondent’s website for commercial gain, by creating a likelihood of confusion with its well-known mark. Bad faith may be found where the Respondent uses the legitimate trademark of the Complainant for nefarious purposes, namely to divert Internet traffic searching for legitimate Canalsat services.
The Complainant asserts that the Respondent has registered and is using the Complainant’s mark in bad faith.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent sent email communications on October 31 and November 1, 17 and 21, 2010 regarding a possible transfer of the disputed domain name. The Respondent did not file a formal reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (the complainant) establishes each of the following elements:
(a) the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(b) the respondent has no rights or legitimate interests in respect of the disputed domain name; and,
(c) the disputed domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a formal reply in these proceedings and is therefore in default and the Panel shall draw such appropriate inferences therefrom. A. Identical or confusingly similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant has submitted evidence demonstrating that it is the owner of the registered trademark CANALSAT. The Complainant has submitted evidence of its trademark registrations in Annex 6 of the Complaint, including trademark registration in Mauritius, the jurisdiction where the Respondent appears to be located. The Complainant has also submitted in Annex 7 of the Complaint evidence of its registrations of domain names containing the term “canalsat”. The disputed domain name incorporates the Complainant’s mark in its entirety. It has been held in many prior UDRP panel decisions that when a domain name incorporates a registered mark in its entirety, it is generally accepted to be confusingly similar to that registered trademark. See, Heidelberger Druckmaschinen AG v. Wayne Graham (Trading) Limited, WIPO Case No. D2006-1131 and Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505.
In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(ii) of the Policy is satisfied. B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three, non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent did not submit a formal Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate.
The Panel finds that the Respondent, at the time of registration of the disputed domain name, most likely knew or should have known of the existence of the Complainant’s well-known CANALSAT trademark. See, Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021. The Complainant, who registered the trademark CANALSAT, has not authorized, licensed, permitted or otherwise consented to the Respondent’s use of the mark in the disputed domain name. In Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055, the panel stated “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or bona fide or legitimate use of the domain name could be claimed by the Respondent.”
The Respondent has not attempted to make any bona fide or legitimate noncommercial or fair use of the disputed domain name. Instead the evidence suggests that the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to commercial links leading to pornographic and satellite television websites. By doing this, the Respondent is using the CANALSAT trademark and misleading Internet users to commercial websites and consequently, the Respondent is unfairly trading on the trademark CANALSAT. The evidence suggests that the Respondent registered, and is using the disputed domain name, only because it is similar to the Complainant’s well-known mark, and for the purposes of attracting Internet users to its site. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(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;
(ii) 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 web site or location or of a product or service on its website or location.
The Complainant has demonstrated that its CANALSAT trademarks are well-known and that the disputed domain name incorporates in full the trademark and that the Respondent has no relationship to the CANALSAT trademarks. The Panel shares the view that the registration of a domain name that is confusingly similar or identical to a trademark by any entity that does not have a relationship to that mark may be evidence of bad faith registration and use. See, Centurion Bank of Punjab Limited v. West Coast Consulting LLC,WIPO Case No. D2005-1319. The Complainant has provided evidence to the Panel that the website associated with the disputed domain name has contained links leading to pornographic and satellite television services. Consequently, the Panel finds that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under 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.
Cherise M. Valles
Sole Panelist
Dated: December 13, 2010
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