The Complainant is Pathé Marques S.A.S., France, represented internally.
The Respondent is Kalyani Thiruchelvam, United States of America.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2021. On September 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 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 the Complainant on September 24, 2021, 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 28, 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 the Respondent of the Complaint, and the proceedings commenced on October 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2021.
The Center appointed Zoltán Takács as the sole panelist in this matter on December 23, 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.
The language of this administrative proceeding is English, that being the language of the Registration Agreement.
4. Factual BackgroundPathé is the name of various French businesses that were founded and originally run by the Pathé Brothers in 1896. In the early 1900s, Pathé became the world’s largest film equipment and production company, as well as a major producer of phonograph records.
The Complainant, belonging to the Pathé Group, is a major film production and distribution company, owning a number of cinema chains and television networks across Europe. It is the second oldest operating film company with revenue of EUR 946 million, employing close to 5000 thousand people.
The Complainant owns several trademarks consisting of or comprising the term “Pathé” and/or “Pathe”, including the European Union Trademark Registration (“EUTM”) No. 008463391 for the word mark PATHE, registered since June 28, 2010, for goods and services of classes 9, 16, 25, 28, 35, 38, 41, 42, and 43 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks.
Since August 19, 1997, the Complainant owns the domain name
The disputed domain name was registered on July 5, 2021, and resolved to a pay-per-click webpage containing various links related to cinema and movies.
5. Parties’ Contentions A. ComplainantThe Complainant contends that apart from the international standard for English language “en”, the disputed domain name is identical to its PATHE trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely of any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant states that use of the disputed domain name relating to a pay-per-click webpage displaying content identical with or similar to its own products or services amounts to bad faith registration and use.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the disputed domain name is identical or confusingly similar to a trademark 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 in bad faith.
A. Identical or Confusingly SimilarUnder paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced evidence of having registered rights in the PATHE trademark and for the purpose of this administrative proceeding the Panel finds that the Complainant’s EUTM No. 008463391 satisfies the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has trademark rights in the PATHE mark, the Panel next assesses whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark.
According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
The disputed domain name incorporates the Complainant’s PATHE trademark in its entirety.
The Respondent added the abbreviation “en” as prefix in the disputed domain name, which is the two letter International Organization for Standardization (“ISO”) code for English language. Previous UDRP panels have found that the incorporation of an ISO code is not sufficient to avoid a finding of confusing similarity (see LEGO Juris A/S c. pcmaniabg, Paisiy Aleksandrov,WIPO Case No. D2010-1965).
According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top Level Domain (“TLD”) in a domain name is viewed as a standard registration requirement and as such should be disregarded under the first element confusingly similar test.
The Panel finds that the disputed domain name
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the PATHE trademark.
The Complainant has never authorized the Respondent to use its PATHE trademark in any way, and the Complainant’s prior rights in the PATHE trademark precede the date of registration of the disputed domain name.
According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.
As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights of legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
Use of the disputed domain name to host a parked page with pay-per-click links that target the Complainant’s trademark, capitalize on the Complainant’s reputation is not use for a bona fide offering of goods or services. See section 2.9 of the WIPO Overview 3.0.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The disputed domain name fully reproduces the Complainant’s inherently distinctive PATHE trademark and the Respondent used it to direct Internet users to a webpage displaying pay-per-click links related to cinema and movies, products and services in direct competition with those of the Complainant.
This in view of the Panel not only demonstrates that the Respondent was aware of the Complainant’s trademark at the time of registration of the disputed domain name, but also the Respondent’s obvious intent to target the Complainant’s trademark through diverting Internet users to its website (or website under its control) without any authorization or rights to do so.
Use of a domain name incorporating third-party trademark to divert Internet users to a competing pay-per-click website generating revenue for either the Respondent or anyone else is activity that is well within paragraph 4(b)(iv) of the Policy and the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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,
Zoltán Takács
Sole Panelist
Date: January 6, 2022