Complainant is PINK TV, France, represented by PROMARK, France.
Respondent is Cihan Sabyan, Angels Models LTD UK 12848828, Turkey.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2021. On July 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 2021, 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 Complainant on July 28, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 30, 2021.
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 Respondent of the Complaint, and the proceedings commenced on August 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 24, 2021.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on August 30, 2021. 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 BackgroundComplainant is a French media company that provides content for the LGBT community, including a TV channel, video on demand services, and a website featuring adult/pornographic content as well as discussion forums. Complainant has been in operation since 2001 and is registered with the Trade Register of Paris. Complainant owns several European Union and French trademarks, including:
- PINK (design mark), European Union trademark No. 005153358, registered on January 28, 2003 in classes 9, 38, 42;
- PINK T.V., European Union trademark No. 002648475, registered on July 22, 2003 in classes 9, 38, 41;
- PINK, European Union trademark No. 009595869, registered on February 8, 2017 in classes 9, 35, 38, 41;
- PINK TV (stylized mark), French trademark No. 043271664, registered on January 30, 2004 in classes 35, 38, 41.
Complainant has used the corporate name “Pink TV” since June 25, 2021 and also uses “Pink TV” as its trade name. Complainant has also used the PINK TV trademark in connection with a gay TV channel since 2004. A Wikipedia page is available in English about Complainant.
Complainant has owned the
The disputed domain name was registered on April 23, 2021. At the time the Complaint was filed and currently, the disputed domain name resolves to a website featuring pornographic content.
5. Parties’ Contentions A. ComplainantAccording to Complainant, the disputed domain name is virtually identical to Complainant’s PINK and PINK TV trademarks in which Complainant has rights as demonstrated through its cited registrations. Complainant asserts that the disputed domain name incorporates the PINK and PINK TV trademarks in their entirety. Furthermore, Complainant contends that the addition of the new generic Top-Level Domain (“gTLD”) extension “.live” in the disputed domain name does not prevent confusion between Complainant’s trademarks and the disputed domain name. Complainant also states that Respondent’s use of the disputed domain name to provide the same type of services as Complainant (i.e., provision of pornographic content) further contributes to confusion between Complainant’s trademarks and the disputed domain name.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not a licensee of Complainant and does not have permission from Complainant to register or use the disputed domain name. Complainant states that Respondent has no relationship with Complainant and that Respondent is not commonly known by the disputed domain name. Complainant asserts that Respondent is using the disputed domain name specifically to capitalize upon Complainant’s reputation and to divert traffic from Complainant’s website. As such, there is no bona fide offering of goods or service associated with the disputed domain name.
As Respondent reproduces Complainant’s trademarks not only in the disputed domain name, but on the website that resolves when entering the disputed domain name into a web browser, Complainant asserts that Respondent has registered and is using the disputed domain name in bad faith. Complainant states that the fact that Respondent’s services are very similar to Complainant’s also contributes to an intent to mislead consumers. Furthermore, Complainant explains that the gTLD for the disputed domain name, “.live”, refers to entertainment that is broadcast live, and thus Internet users could easily assume that the disputed domain name is associated with live content provided by Complainant. Complainant contends that all of these factors demonstrate that the disputed domain name was registered and is being used in bad faith.
B. RespondentRespondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraphs 5(e) and 14(a) of the Rules, the effect of a default by a respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A respondent’s default does not by itself satisfy a complainant’s burden of proof and is not necessarily an admission that the complainant’s allegations are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340.
A. Identical or Confusingly SimilarA national or international trademark registration is prima facie evidence that the holder has the requisite rights in the registered mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it owns various European Union and French registrations in the PINK and PINK TV marks, as referenced above. Therefore, Complainant has established that it has rights in the PINK and PINK TV marks.
The remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the gTLD in which the domain name is registered) is identical or confusingly similar to Complainant’s mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id.
Here, the disputed domain name incorporates the PINK and PINK TV trademarks in their entirety. Prior panels have found that the incorporation of a complainant’s trademark in its entirety into the disputed domain name supports a finding that the disputed domain name is identical or confusingly similar to a complainant’s trademark. See Aldermore Bank Plc v. Hildegard Gruener,WIPO Case No. D2016-1617.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to its PINK and identical to its PINK TV marks.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
Paragraph 4(c) of the Policy lists the ways that Respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed 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 disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that Respondent is not a licensee of Complainant and that Respondent has no other business relationship with Complainant.
The disputed domain name resolves to a website that offers content in the same industry category as Complainant’s services (i.e., pornographic content), which website also uses Complainant’s PINK TV trademark. Prior panels have found that use of an identical match of a complainant’s trademark as a disputed domain name results in a high risk of an implied affiliation between the complainant and respondent, which implication would not support a right or legitimate interest in the disputed domain name. See The Royal Edinburgh Military Tattoo Limited v. Identity Protection Service, Identity Protect Limited / Martin Clegg, WM Holdings,WIPO Case No. D2016-2290. Prior panels have also found that use of a complainant’s trademark in a domain name that resolves to a website offering similar goods or services to those offered by the complainant cannot be considered a bona fide offering of goods or services. See Richemont International SA v. Turvill Consultants,WIPO Case No. D2014-0862.
Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad FaithIn this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided evidence of its registration and widespread use of the PINK and PINK TV trademarks, as well as the
Respondent is currently using the disputed domain name to offer content in the same category as Complainant’s business, i.e., pornographic content. Respondent selected the gTLD “.live” for its registration of the disputed domain name. While the gTLD is not always relevant in a domain name dispute (albeit most notably under the first element), in connection with media offerings, “live” commonly refers to content that is broadcast in real time, i.e., broadcast at the same time it is being created. Thus, Internet users could reasonably assume that the disputed domain name is being used to offer a new type of “live” service from Complainant’s business. Prior panels have found that the use of a disputed domain name to create consumer confusion and divert traffic from a complainant’s business, particularly when offering similar goods or services through the disputed domain name, demonstrates registration and use in bad faith. See Michael Patrick Lynch v. Steve Nicol (Stephen Joel Nicol),WIPO Case No. D2015-0933.
For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was in bad faith.
7. DecisionFor 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
Brian J. Winterfeldt
Sole Panelist
Date: September 13, 2021