The Complainant is Télévision Française 1, France, represented by SCAN Avocats, France.
The Respondent is Domains By Proxy, LLC, United States of America (“United States”) / Edmond Touboul, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2019. On September 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 6, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 16, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 16, 2019. On September 16, 2019, the Respondent sent two email communications to the Center, stating “Hello, Im sorry fir what happen, It was out if my control, I will do my best to amende this matter, Thank you” and “Hello, i check The case, I dont understood from where is com from, I will contact the service asap, Thank you”. 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 September 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Commencement of Panel Appointment Process on October 8, 2019. The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on October 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 Based on the evidence and undisputed submissions of the Parties, the Panel establishes the following facts on which to base its decision in this case. The Complainant is a company, based in France, producing and broadcasting TV programs in the fields of entertainment, current affairs and fiction. It was founded in 1974 and operates the first and oldest television channel in France. It has received numerous awards, including the “Grand Prix des Medias CB News” in 2018. The Complainant is the owner of a large number of trademarks consisting or including the wording TF1 registered since the early 1980s in France and abroad, including the following (hereafter together referred to as the “Trade Marks”): - European Union trade mark TF1.EU, filed on July 9, 2002 and registered on August 11, 2004 under No. 2770428 - French trade mark TF1, filed on November 22, 1984 and registered under No. (84)1290436 - International device mark TF1 filed on July 30, 1990 and registered under No. 556537 for, inter alia, Austria, Bulgaria, Benelux, Switzerland, Germany, Spain, Hungary, Italy, Portugal, Romania and the Russian Federation - French device mark TF1 filed on November 30, 1988 and registered under No. (88)1489724. The Domain Name was registered on August 7, 2019 and resolves to a website offering subscriptions to “Laboxtv”, a service provided by a competitor of the Complainant offering access to a number of French and foreign broadcasting stations. 5. Parties’ Contentions A. Complainant According to the Complainant, the Domain Name is confusingly similar to the Trade Marks as it incorporates TF1, of which the Trade Marks consist, in their entirety and only differs from the Trade Marks by the addition of the generic term “VIP”, an acronym for “Very Important Person”, as if the Domain Name were resolving to an official website of the Complainant dedicated to premium customers or to audiovisual programs related to the world of luxury or celebrities. The confusing similarity is all the more real, the Complainant submits, since it has in the past broadcast a television program entitled “Carré ViiiP”. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name since (i) to the Complainant’s best knowledge, the Respondent is not currently and has never been known under the Domain Name; (ii) the Respondent is not in any way related to the Complainant’s business, is not one of its distributors and does not carry out any activity for or has any business with it; and (iii) the Complainant has never licensed, authorized, or otherwise permitted the Respondent to register a domain name incorporating the Trade Marks, nor to make any use of the Trade Marks in order to distinguish its own business. In addition, the Complainant purports, the Respondent’s use of the Domain Name does not constitute a bona fide offering of goods, as it resolves to a website that reproduces the website of a direct competitor of the Complainant, thereby increasing the risk of confusion among consumers. The Complainant submits that the Respondent registered the Domain Name in bad faith, since it is highly unlikely that the Respondent was not aware of the existence of the Complainant and the Trade Marks when registering the Domain Name since (i) the Trade Marks were registered by the Complainant well before the Domain Name; (ii) the Trade Marks are well-known marks; (iii) the mark TF1 is not a common word in any language; (iv) in view of the strong distinctive nature of the Trade Marks, it is highly unlikely that the Respondent’s choice to register a domain name confusingly similar to the Trade Marks was purely coincidental; and (v) the Domain Name has been registered for the purpose of disrupting the business of the Complainant and illegally obtaining a payment by reproducing the website of one of its competitors. Furthermore, the Complainant claims that the Respondent is using the Domain Name in bad faith since it resolves to a website that slavishly reproduces the website of a direct competitor of the Complainant, creating a high risk of confusion in the consumer’s mind regarding a possible affiliation between these two entities. In addition, the Complainant states, there is no plausible explanation why the Respondent selected the Domain Name, which is confusingly similar to the Trade Marks which are widely used and well-known to the public, other than for the fraudulent exploitation of the Domain Name. In addition, the Complainant contends, the Respondent has provided merely summary information concerning its identity when registering the Domain Name, in order to prevent identification, which confirms the Respondent’s bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it wholly incorporates the mark TF1. The addition of the word “vip”, an acronym of “very important person”, does not avoid a finding of confusing similarity between the Domain Name and the Trade Marks (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.8; see also, inter alia, TPI Holdings, Inc. v. Carmen Armengol,WIPO Case No. D2009-0361, and F. Hoffmann-La Roche AG v. John Mercier,WIPO Case No. D2018-0980). The generic Top-Level Domain (“gTLD”) “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.11). Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has registered rights. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, the Complainant has to make out a prima facie case that the Respondent does not have rights to or legitimate interests in the Domain Name upon which the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Domain Name (WIPO Overview 3.0, section 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent is not a distributor of its services and has not received the Complainant’s consent to register or use the Domain Name or make any other use of the Trade Marks. In addition, it is not prima facie evident that the Respondent’s use of the Trade Marks and the Domain Name has resulted in it becoming commonly known by the Domain Name (paragraph 4(c)(ii) of the Policy). The use of the Domain Name serves a commercial purpose, namely to direct potential customers and other Internet users to the website under the Domain Name on which services are offered of a competitor of the Complainant. Therefore, the Respondent is not making a legitimate noncommercial or fair use of the Domain Name (paragraph 4(c)(iii) of the Policy), nor can such use be considered to be in connection with a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy. Therefore, the Panel concludes that the Respondent has no rights to or legitimate interests in the Domain Name in terms of paragraph 4(c) of the Policy. C. Registered and Used in Bad Faith Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of and indeed specifically targeted, the Complainant and the Trade Marks. In particular, such knowledge and intent is derived from the following facts: (i) the Respondent’s registration of the Domain Name occurred 35 years after the registration of the earliest of the Trade Marks; (ii) the element TF1 of which the Trade Marks consists, is incorporated in its entirety in the Domain Name, and does not appear to be a name of which a registrant is likely to spontaneously or accidentally think; (iii) a simple trade mark register search, or even an Internet search, prior to registration of the Domain Name in its name would have informed the Respondent of the existence of the Trade Marks. In view of these circumstances and the use of the Trade Marks on the website to which the Domain Names resolves for services competing with those offered by the Complainant, the fact that the Respondent tried to hide its identity through the use of a privacy service and the fact that the Respondent, although reacting to the Complaint that it was sorry for what happened and that it would do its best to amend the matter, did not file a Response, the Panel concludes that the Respondent registered and used the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the website or other online location creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation or endorsement of the website or location or of the services on the website to which the Domain Name resolves, in accordance with paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith. 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 Wolter Wefers Bettink
Sole Panelist
Date: October 28, 2019
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