The Complainant is Télévision Française 1, France, represented by AARPI Scan Avocats, France.
The Respondent is Whoisguard, Inc., Panama / Moheman Ibrahim, Mo Co., Iraq. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2019. On July 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 8, 2019, providing the registrant and the contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 9, 2019.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 6, 2019. The Center received several email communications from the Respondent, however, the Respondent did not submit any formal response. Accordingly, the Center proceeded with the panel appointment on August 8, 2019.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on August 14, 2019. 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 well-known French television broadcaster established in 1974 and has become one of the most popular television networks in Europe.
The Complainant is the owner of numerous trade mark registrations for the TF1 word and device marks across multiple jurisdictions, including, inter alia:
(i) International Trade Mark TFI, registration No. 556537, registered on July 30, 1990, in classes 9, 16, 25, 28, 35, 38, and 41;
(ii) French Trade Mark TF1.FR, registration No. 99826408, registered on November 30, 1999, in classes 9, 16, 28, 35, 38, 40, 41, 42, 43, and 45;
(iii) European Union Trade Mark TF1.EU, registration No. 2770428, registered on July 9, 2002, in classes 38, 41, and 42; and
(iv) French Trade Mark TF1, registration No. 1290436, registered on November 22, 1984, in classes 1 to 42.
The Complainant also owns the following domain names: , , , , , and .
The Respondent is an individual based in Baghdad, Iraq. The Disputed Domain Name was registered by the Respondent on April 17, 2019. Within a few days of registering the Disputed Domain Name, the Respondent impersonated the Complainant in order to send phishing emails to an employee at Facebook, requesting access rights on behalf of the Complainant. The Respondent also redirected the Disputed Domain Name to the Complainant’s official website “www.”. To combat the Respondent’s phishing attack, the Complainant filed an abuse complaint with the Registrar.
At the time of writing this Decision, the Disputed Domain Name still resolves to the Complainant’s official website. 5. Parties’ Contentions A. Complainant
The Complainant’s primary contentions can be summarised as follows:
(a) the Disputed Domain Name is identical or confusingly similar to the Complainant’s registered trade mark TF1, which has been wholly incorporated into the Disputed Domain Name;
(b) the Complainant has never authorised or given permission to the Respondent, who is not affiliated with the Complainant in any way, to use its mark TF1, therefore the Respondent has no rights or legitimate interest in the Disputed Domain Name; and
(c) The reputation and distinctiveness of the Complainant’s trade mark, combined with the Respondent’s use of the Disputed Domain Name to send fraudulent emails impersonating the Complainant, support the fact that the Respondent is acting in bad faith. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favor of the Complainant. However, the Respondent’s failure to file a formal Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the TF1 trade marks, based on its various trade mark registrations.
It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain Name (“gTLD”) extension “.net” may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Disputed Domain Name incorporates the Complainant’s TF1 mark in its entirety with the addition of the word “groupe”. The Panel agrees with the Complainant that the mere addition of a hyphen and the generic word “groupe”, which is French for “group”, does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trade mark.
The Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s TF1 trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Shutterstock, Inc. v. Rahele Mahdavi,WIPO Case No. DIR2014-0004; and Giorgio Armani S.p.A., Milan, Swiss Branch Mendrisio v. Hessamaldin Varposjty,WIPO Case No. DIR2014-0001.
The Panel accepts the Complainant has not authorised the Respondent to use the TF1 marks, and that there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the TF1 marks as it has. Accordingly, the Panel is of the view that a prima facie case has been established by the Complainant and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Although at the time of writing this Decision the Disputed Domain Name still resolves to the Complainant’s official website, the Panel has examined the evidence provided by the Complainant, including screenshots of the emails dated April 19, 2019, and April 30, 2019, sent from the email address [...]@ (“Emails”). It is clear from the Emails that the Respondent had been using the Disputed Domain Name together with the Complainant’s TF1 mark to impersonate the Complainant for the purposes of dishonest activity. Given that the Complainant has not granted any right or licence to the Respondent to use the TF1 marks, there is no evidence to suggest that the Disputed Domain Names have been used in connection with any legitimate noncommercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy.
In light of the above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names and that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. As such, the fact that the Disputed Domain Name incorporates the Complainant’s TF1 mark in its entirety already creates a presumption of bad faith.
It is also widely accepted that the registration of a domain name and the use of an email address associated with the Disputed Domain Name in furtherance of a phishing scam support a finding of bad faith registration and use. See Accor v. SANGHO HEO / Contact Privacy Inc.,WIPO Case No. D2014-1471 and BHP Billiton Innovation Pty Ltd. v. Domains By Proxy LLC / Douglass Johnson,WIPO Case No. D2016-0364. The Panel finds that the evidence submitted in support of the phishing allegation by the Complainant, combined with the strong likelihood of confusion between the Disputed Domain Name and the Complainant’s TF1 mark, is sufficient evidence of bad faith.
The Panel notes that there has been email correspondence between an alleged representative of the Respondent and the Complainant. However, the Panel is of the view that such email correspondence fails to provide any reasonable explanation for the Respondent’s registration of the Disputed Domain Name and as such, do not prevent a finding of bad faith.
In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Names in bad faith, and paragraph 4(a)(iii) of the Policy has been 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.
Gabriela Kennedy
Sole Panelist
Date: August 26, 2019
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