The Complainant is Vidéotron s.e.n.c. of Montréal, Québec, Canada, represented by Legault Joly Thiffault LLP, Canada.
The Respondent is Web Administrator of Kaoshiung, Taiwan Province of China. 2. The Domain Name and Registrar
The disputed domain name () is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on May 23, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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 June 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2014.
The Center appointed Steven A. Maier as the sole panelist in this matter on June 30, 2014. 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 general partnership created under the laws of the province of Quebec, Canada. It offers broadcasting, multimedia and telecommunications services in Canada.
The Complainant is the owner of trademark registrations including the following:
- Canadian trademark number TMA364199 for the word mark VIDÈOTRON PLUS filed on August 2, 1988 for goods and services including telecommunications and television services.
- Canadian trademark number TMA559755 for the word mark VIDEOTRON filed on December 6, 1999 for goods and services including Internet and telephone services.
- Canadian trademark number TMA816239 for a figurative mark including a logo and the word VIDÉOTRON filed on April 8, 2009 for goods and services including telecommunications, television, Internet and related services.
The disputed domain name was created on January 29, 2007.
At the date of the Center’s formal compliance review, June 4, 2014, the disputed domain name resolved to as website at “www.vidé”, the home page of which was headed “Vidé” and included apparent links to “Privacy Policy” and “Legal Policies” but no other apparent content. 5. Parties’ Contentions A. Complainant
The Complainant states that it is, and has been for several years, a well-known leader in the telecommunications sector in Canada, offering services in the field of broadcasting, interactive multimedia, the Internet, phone and mobile phone services. It states that in 2004 it had 1,453,000 customers for its broadcasting services and 527,000 customers for its Internet services. As of March 31, 2014, it had 1,811,100 customers for its broadcasting services, 1,419,200 for its Internet services and 1,280,400 for its telephone services.
The Complainant submits evidence that it is the owner of the domain name which resolves to its official website at “www.vide”. It states that the website attracts enormous interest with 13,565,913 visits in 2005 and more than 79,800,000 visits between January 2012 and January 2014, of which 28,800,000 were unique visits. It submits Adobe Marketing Cloud and Google Analytics reports in support of these figures. The Complainant also submits copies of pages from the website (which it states has been modified from time to time) which refer extensively to the name “Vidéotron”.
The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).
The Complainant states that it is the owner of what it calls the “Videotron family of trademarks”. This includes VIDEOTRON trademarks with and without an accent on the “e”, including the trademarks specifically referred to above and others. The Complainant states that it has used the trademarks in connection with its services since the early 1980s and has spent enormous amounts of time and money in promoting and selling its services under the marks. The Complainant submits examples of its advertisements in Canada for the period 2001 to 2007, which it points out predates registration of the disputed domain name. These examples refer extensively to the website referred to above and to the name “Vidéotron”.
The Complainant relies specifically on its trademark registrations referred to above. It submits that the disputed domain name is effectively identical to its mark VIDEOTRON because the accent on the “e” is of no significance for the purpose of distinguishing the disputed domain name from that mark. It also submits that the disputed domain name is also similar to its figurative marks, as these include the mark VIDÉOTRON with the accent.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii) of the Policy).
The Complainant states that it has never authorized the Respondent to use its mark VIDEOTRON (with or without the accent) for any purpose whatsoever. It also submits that the Respondent has never legitimately been known by the disputed domain name. The Complainant submits that it developed the name and mark VIDEOTRON (with and without the accent) for the purposes of selling its goods and services. It states that it does not believe the term has any other meaning in French, English or indeed any other language. It submits that its use of the mark from the early 1980s long predates the Respondent’s registration of the disputed domain name in 2007.
The Complainant states that the Respondent has used the disputed domain name misleadingly to attract Internet users to a website which offers goods and services competitive with those of the Complainant (see below). It submits that this cannot be a bona fide use of the disputed domain name, nor does it constitute legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
The Complainant exhibits a series of print-outs of web pages from the website at “www.vidé”, dated May 9, 2014. The first page bears the heading “Vidé” and contains a list of ten links including “Mobile Phone Deals”, “Internet”, “TV”, “High Speed Internet Service” and others. The remaining pages appear to be the results of clicking on those links and each such page then includes ten further links of its own, such as “Computer”, “Free Internet Service” and “Broadband”. Further clicks then appear to produce links to specific providers of the services in question. The Complainant asserts that, based on information contained on the website, these links are the result of an automated system that provides optimized sponsored links from which the Respondent will benefit financially when those links are clicked. The Complainant submits that several of these links lead to providers of services who are directly in competition with the Complainant: for example, the link “Mobile Phone Deals” leads to competitors including AT&T and Verizon and the link “Cheap Unlimited Calls” to a Canadian competitor named Visioncell.
In the circumstances, the Complainant asserts that the Respondent registered and has used the disputed domain name in the knowledge of the Complainant’s trademarks and with the obvious intention of taking advantage of the Complainant’s goodwill and brand in order to generate advertising revenue. The Complainant further submits that the Respondent is misleadingly using the Complainant’s trademarks to intentionally attempt to attract, for commercial gain, Internet users to its website for the purposes of paragraph 4(b)(iv) of the Policy.
The Complainant requests a transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Even in a case such as this where the Respondent has failed to file a Response, the Complainant must still establish that all three of the above elements are present. A. Identical or Confusingly Similar
The Complainant has established that it is the owner of registered trademark rights for marks including the word mark VIDEOTRON and a figurative mark including a logo and the term VIDÉOTRON. The Panel accepts the Complainant’s submissions that the acute accent on the “e” of the disputed domain name is not sufficient to distinguish the disputed domain name from the Complainant’s mark, and also that the disputed domain name is confusingly similar to the Complainant’s figurative mark. In the circumstances, the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights and the first element of the test under paragraph 4(a) of the Policy is satisfied. B. Rights or Legitimate Interests
The Complainant asserts that it has never authorized the Respondent to use its VIDEOTRON trademark (with or without an accent) for any purpose and that the Respondent has never legitimately been known by the disputed domain name. The Complainant further asserts that its mark VIDEOTRON (with or without an accent) is invented and has no meaning in ordinary language. Further, the Complainant submits that the Respondent’s use of the disputed domain name for the purposes of a misleading website, which takes advantage of the Complainant’s goodwill, does not amount to bona fide use, or legitimate noncommercial or fair use, of the disputed domain name.
In the opinion of the Panel, the Complainant’s submissions above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent had an opportunity to answer this case and to explain, for example, its choice of the disputed domain name and any rights or legitimate interests that it may claim to have in it. However, the Respondent has not participated in this proceeding and there is no other evidence before the Panel to suggest that the Respondent has any rights or legitimate interests in respect of the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the second element of the test under paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s submissions concerning the Respondent’s use of the disputed domain name. In particular, the Panel finds that that the Respondent has used the disputed domain name for the purposes of a website that provides advertising revenue for the Respondent as a result of Internet users clicking on the sponsored links to websites including those which offer services competitive with the Complainant.
The Panel also accepts the Complainant’s submissions concerning the reputation of its trademarks prior to the date of registration of the disputed domain name and infers on balance that the Respondent registered the disputed domain name in the knowledge of the Complainant’s trademarks and with the intention of unfairly profiting from the Complainant’s goodwill. The Panel finds that a significant number of Internet users would likely believe that the disputed domain name was owned or operated by the Complainant and would visit the Respondent’s website for that reason. The Panel concludes, therefore, that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of products on those websites (paragraph 4(b)(iv) of the Policy).
The Panel also notes that the Center was unable to communicate with the Respondent at its registered postal address because the address and associated telephone number were incorrect.
In all the circumstances, the Panel concludes that the disputed domain name has been registered and is being used in bad faith and that the third element of the test under paragraph 4(a) of the Policy is satisfied. 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 () be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: July 11, 2014
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