The Claimant is Télévision Française 1 (TF1) of Boulogne Billancourt, France, represented by INLEX IP EXPERTISE, France.
The Respondent is Cristina Donea of Bistra, Romania. 2. Domain Name
The dispute concerns the following domain-name (hereinafter the "Domain-Name"). 3. Procedural History
The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2011. On July 22, 2011, the Center transmitted by email to SWITCH, the “.ch” and “.li” Registry, a request for verification in connection with the Domain Name at issue. On July 27, 2011, SWITCH transmitted by email to the Center its verification response confirming that the Respondent is listed as the holder of the Domain Name and providing the relevant contact details. The Center verified that the Request satisfied the formal requirements of the Rules of procedure for dispute resolution proceedings for “.ch” and “.li” domain-names (the Rules of Procedure), adopted by SWITCH, on March 1, 2004.
In accordance with the Rules of Procedure, paragraph 14, the Center formally notified the Respondent of the Request, and the Dispute resolution proceedings commenced on July 28, 2011. In accordance with the Rules of Procedure, paragraph 15(a), the due date for Response was August 17, 2011.
The Respondent has neither filed a Response nor expressed his readiness to participate in a Conciliation in accordance with Paragraph 15(d) of the Rules of Procedure and no Conciliation conference has taken place within the deadline specified in Paragraph 17(b) of the Rules of procedure.
On August 18, 2011 the Center notified the Claimant accordingly, who on August 18, 2011 made an application for the continuation of the Dispute resolution proceedings in accordance with specified in paragraph 19 of the Rules of procedure and paid the required fees.
On September 2, 2011, the Center appointed Michael A.R. Bernasconi as Expert in this case. The Expert finds that he was properly appointed. In accordance with Rules of Procedure, paragraph 4, the above Expert has declared his independence of the parties. 4. Factual Background
The Claimant is a leading and well-known French TV network. Claimant is the owner of a great number of TF1 trademarks and domain names. The trademark is also registered for Switzerland as international trademark no. 556 537 dated July 30, 1990. In addition, Claimant has registered several domain names containing the trademark TF1 in different countries.
In January 2011, Claimant noticed that the Domain Name has been registered by a company and that the Domain Name redirects to a so-called "parking website". After having requested the owner of the Domain Name to stop using the Domain Name, the Domain Name was transferred to another person. In May 2011the Domain-Name once again was transferred, this time to Respondent. 5. Parties’ Contentions A. Claimant
Claimant is of the opinion that because of its trademark, which is also registered for Switzerland, and which has been registered prior to the Domain Name, it has all rights in the Domain Name and therefore Respondent has to transfer the Domain Name to Claimant.
The registration of the trademark TF1 in Switzerland gives Claimant, in its opinion, an exclusive right on this distinctive sign in the classes of goods for which the trademark has been registered. In addition, the Claimant is of the opinion that TF1 is a well-known trademark and therefore is protected according to Article 15 of the Swiss Trademark Act. Even though the website does not contain any content (since it is a mere parking site), the Claimant is of the view that also the mere registration of the website infringes its trademark. B. Respondent
The Respondent did not reply to the Claimant’s contentions. 6. Discussion and Findings
According to the Rules of Procedure, paragraph 24(c), “the Expert shall grant the request if the registration or use of the Domain Name constitutes a clear infringement of a right in a distinctive sign which the Claimant owns under the laws of Switzerland”.
The Rules of Procedure, paragraph 24(d) specify that “a clear infringement of an intellectual property right exists when
i. both the existence and the infringement of the claimed Right in a distinctive sign clearly result from the wording of the law or from an acknowledged interpretation of the law and from the presented facts and are proven by the evidence submitted; and
ii. the respondent has not conclusively pleaded and proven any relevant grounds for defence; and
iii. the infringement of the right justifies the transfer or deletion of the domain-name, depending on the remedy requested in the request”. A. The Claimant has a right in a distinctive sign
Claimant proved its ownership of its trademark in Switzerland and throughout the world, covering and using the name TF1. (cf. exhibit F and G of the Request). B. The registration or use of the Domain-Name at issue constitutes a clear infringement of the Claimant’s right
According to article 13 paragraph 2 of the Swiss Trademark Act (TMA) in connection with article 3 paragraph 1 lit. c TMA the Claimant as owner of the trademark is entitled to enjoin the Respondent to use a sign similar to TF1 in connection with goods and services identical or similar to Claimant’s. For goods and services which are not identical, Claimant only has such a right, if its trademark is considered to be famous in the meaning of article 15 paragraph 1 of the TMA.
The sign used by Respondent is identical with the one of Claimant. Respondent, however, does not market or sell any products or services over the website. The website is a mere parking website and Respondent therefore uses the sign not for the labeling of her goods or services. If the sign used by Respondent is not used for labeling goods and services, the trademark is not used in the sense of article 1 of the TMA. Contrary to the Claimant's view, the mere registration of the Domain Name does therefore not infringe its trademark (cf. Swiss Federal Tribunal decision 4C.31/2004).
The use of domain names, however, has to be in compliance with the Swiss Federal Act on Unfair Competition (UCA). The abusive registration of a domain name merely to prevent someone else from using such domain name is generally considered to be unfair and therefore in violation of article 2 of the UCA. Claimant has proved that the website has not been used since its registration and that, upon Claimant's request to transfer the Domain Name, it has been transferred from one person to another. Such behavior can only be seen as an abusive attempt to prevent Claimant from using the Domain Name. It is obvious that Claimant has a genuine interest in using the Domain Name for Switzerland, since it has registered the trademark TF1 also in Switzerland and uses the second level domain "tf1" in several countries. Since the behavior of Respondent prevents Claimant from using its trademark as domain-name, the behavior of Respondent is considered to be unfair and therefore in violation of article 2 of the UCA. According to article 9 paragraph 3 of the UCA, Claimant may claim for damages if it, through an act of unfair competition, suffers an impairment in its economic interests. From the behavior of the persons that were registered as owner of the Domain-Name previous to Respondent and also from the behavior of Respondent, in the opinion of the Expert, there is no doubt that Respondent did act willfully and registered the Domain Name for no other purpose than to prevent Claimant from using the Domain Name for its web presence in Switzerland. Claimant therefore suffers an impairment in its economic interests. According to the jurisprudence of the Swiss Federal Tribunal, as compensation the court may also transfer the Domain Name from Respondent to Claimant (cf. Swiss Federal Tribunal decision 4C.9/2002). 7. Expert Decision
For the above reasons, in accordance with paragraphs 24 of the Rules of Procedure, the Expert orders that the Domain Name be transferred to the Claimant.
Michael A.R. Bernasconi
Expert
Dated: September 19, 2011
Full & Egal Universal Law Academy