The Complainant is Télévision Française 1, France, represented by AARPI Scan Avocats, France.
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / rafael isuyama, The Fortune 1, Brazil.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2021. 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 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 November 15, 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 November 22, 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 November 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2021. Aside from an informal communication on November 29, 2021, the Respondent did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on December 14, 2021.
The Center appointed Nick J. Gardner as the sole panelist in this matter on December 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 BackgroundThe 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 trademark registrations for the TF1 word and device marks across multiple jurisdictions, including, for example:
(i) International Trademark TFI, registration No. 556537, registered on July 30, 1990, in classes 9, 16, 25, 28, 35, 38, and 41;
(ii) European Union Trademark TF1.EU, registration No. 2770428, registered on August 11, 2004, in classes 38, 41, and 42; and
(iii) French Trademark TF1, registration No. 1290436, registered on November 22, 1984, in classes 1 to 42.
These trademarks are referred to as the “TF1 trademark” in this decision.
The Complainant also owns the following domain names:
The Respondent is an individual apparently based in Brazil. The Disputed Domain Name was registered by the Respondent on July 26, 2021. It does not resolve to any active website.
5. Parties’ Contentions A. ComplainantThe Complainant sets out in considerable detail the Complainant’s case, with reference to numerous supporting decisions under the Policy. The Complainant’s primary contentions can be summarised as follows:
(a) the Disputed Domain Name is confusingly similar to the Complainant’s registered TF1 trademark;
(b) the Complainant has never authorised or given permission to the Respondent, who is not affiliated with the Complainant in any way, to use the TF1 trademark, therefore the Respondent has no rights or legitimate interests in the Disputed Domain Name; and
(c) The registration and use of a domain name which is evidently connected with a famous or well-known trademark, by someone with no connection with said trademark, suggests opportunistic bad faith. The Respondent never replied to a letter of formal notice sent to him by the Complainant. The Disputed Domain Name is setup with MX servers, which suggests it is likely to be used for a phishing attack targeting the Complainant which amounts to bad faith.
B. RespondentThe Respondent did not formally reply to the Complainant’s contentions. On November 29, 2021, the Respondent sent the following email to the Center – “Hello, My company has not activated the domain t f1.com. We will not use it and plan on letting our subscription of it expire. Thank you”.
6. Discussion and Findings Preliminary MattersThe Panel notes that no formal response has been filed. While the Respondent’s failure to file a Response does not automatically result in a decision in favour of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909).
The Panel also notes this is a case where one Respondent (Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
“Panel discretion
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case the Panel considers the substantive Respondent to be rafael isuyama, The Fortune 1 and references to the Respondent are to that person.
Substantive MattersTo succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 SimilarThe Complainant has rights in the TF1 trademark. To the extent that this trademark comprises trademarks which are a device mark it features prominently as part of the registered device the letters and numeral “TF1”. Similarity between a domain name and a device mark which includes words or letters is a readily accepted principle where the words or letters comprise a prominent part of the trademark in question – see for example EFG Bank European Financial Group SA v. Jacob Foundation,WIPO Case No. D2000-0036 and Sweeps Vacuum & Repair Centre, Inc. v. Nett Corp,WIPO Case No. D2001-0031.
The only difference between the Disputed Domain Name and the TF1 trademark is the inclusion of a hyphen which the Panel does not consider a material difference.
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate InterestsThe Panel finds the TF1 trademark is, on the evidence before the Panel, a term in which the Complainant has developed a significant reputation.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the TF1 trademark. The Complainant has prior rights in the TF1 trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
While the Panel notes that the Respondent has listed “The Fortune 1” as part of its name with the registrar (which could be seen as “TF1”), the Respondent has not advanced a claim that this is its corporate name or otherwise in use by it – to the contrary it has said it will let the disputed domain name expire, and therefore the Panel does not give it evidentiary weight. The Panel also notes that any registrant can list any name – real or fake – in the registrar’s database on an unverified basis and merely listing a designation with the registrar cannot by itself be the basis for a finding of rights in a domain name. See notably in this respect Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847.
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad FaithPanels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trademark by an unaffiliated entity can 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 creates a presumption of bad faith. The Panel moreover notes the Respondent’s communication indicating that it will let the disputed domain name registration expire.
In any event even if the Respondent has made no use of the Disputed Domain Name passive holding of the Disputed Domain Name may itself amount to bad faith registration and use. In the circumstances of this case the Panel adopts the approach set out in the WIPO Overview 3.0 at 3.3 as follows:
“Can the ‘passive holding’ or non-use of a domain name support a finding of bad faith?
From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
In the present case the Panel adopts this approach and notes in particular the Respondent’s failure to provide any evidence of actual or contemplated good-faith use.
See also to similar effect Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574, Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131, Westdev Limited v. Private Data,WIPO Case No. D2007-1903; Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393, and Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273.
Accordingly, and applying the principles in the above noted UDRP decisions, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith.
If alternatively the Disputed Domain Name has in fact been used in connection with some form of phishing attempt (as alleged by the Complainant) that would provide an alternative basis for finding bad faith registration and use. Generally active MX records indicate a possible use for email, which evidences a likelihood of additional bad-faith use of the Disputed Domain Name to engage in fraudulent email or phishing communications. See, e.g., Tetra Laval Holdings & Finance S.A. v. Himali Hewage,WIPO Case No. D2020-0472 (concluding that evidence of active MX records indicated that the disputed domain name may be used for fraudulent email communications); Ares Management LLC v. juandaohanjing,WIPO Case No. D2020-3254 (finding the respondent used the disputed domain name in bad faith based on evidence of active “MX records for the disputed domain name” which “indicate that the Respondent has connected the disputed domain name to email servers, which creates a grave risk that the Respondent may be using the disputed domain name for misrepresentations and/or phishing and spamming activities”.
Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled
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
Nick J. Gardner
Sole Panelist
Date: January 13, 2022