ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Television Francaise 1 v. Host Master, Transure Enterprise Ltd Case No. DCO2023-0102 1. The Parties The Complainant is Television Francaise 1, France, represented by Scan Avocats AARPI, France. The Respondent is Host Master, Transure Enterprise Ltd, United States of America. 2. The Domain Name and Registrar The disputed domain name is registered with Above.com Pty Ltd. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2023. On December 4, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 2023, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 December 21, 2023. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 16, 2024. The Center appointed María Alejandra López as the sole panelist in this matter on January 22, 2024. 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.
page 2 4. Factual Background The Complainant is a recognized European company which operates at local and international level in the field of production and broadcasting original TV programs. The Complainant was founded in 1974 and operates one of the first and oldest television channel in France. In 1987, the Complainant integrated the TF1 Group, which includes several generalist and thematic television channels, including TF1, as well as production and distribution companies for the film and television industries. The Complainant, among others, owns the following TF1 Trademarks: - French Trademark Reg. No. 1290436 for TF1 (word mark), registered on November 22, 1984, and in force until November 22, 2024, for goods and services in classes 1-42; - French Trademark Reg. No. 1489724 for TF1 (and design), registered on November 30, 1988, and in force until November 30, 2028, for goods and services in classes 1-45; - International Trademark Reg. No. 556537 for TF1 (and design), registered on July 30, 1990, and in force until July 30, 2030, for good and services in classes 9, 16, 25, 28, 35, 38 and 41. The Complainant also owns the following domain names: , registered on December 3, 1995; , registered on April 2, 1998; , registered on February 2, 2006; , registered on March 9, 2006; and , registered on March 24, 2010, to promote its activities online, based on its TF1 Trademark. The disputed domain name was registered on October 17, 2023, and by the time of this Decision, redirects to a parking page with sponsored pay-per-click (“PPC”) links. According to the records, there is evidence that at certain point, the disputed domain name redirected to a website with potentially suspicious download content. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. In relation to the first element of the Policy, the Complainant contends that is the owner of numerous TF1 trademarks and domain names registered prior to the date of registration of the disputed domain name; that the disputed domain name is confusingly similar to its Trademark TF1, which it is incorporated on its entirety in the disputed domain name with the addition of the term “pro”, noting that the Complainant also uses the name “TF1 PRO” as part of its business dedicated to professionals. In relation to the second element of the Policy, the Complainant contends that to its best knowledge, the Respondent is not currently and has never been known under the disputed domain name; that the Respondent has been involved in numerous previous UDRP Cases (namely 229 cases to date), filed at the Center; that the Complainant has never given any authorization or permission to the Respondent to register or to use its trademarks TF1; that 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. In relation to the third element of the Policy, the Complainant contends that the Respondent registered the disputed domain name in bad faith, as it was highly unlikely that the Respondent ignored the existence of the Complainant and its trademarks since the Complainant, which enjoys a worldwide reputation for its services, has been actively using its trademarks in France and abroad since 1980, meaning many years before the disputed domain name was registered; that since the disputed domain name, which incorporates a well-
page 3 known trademark, was registered by someone with no connection with the Complainant, such action suggests opportunistic bad faith. Regarding the bad faith use, the Complainant contends that the disputed domain name is being used in bad faith, since it redirects to a website which provides suspicious content, which does not constitute good faith use. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy sets out that in order to succeed, a complainant must prove each of the following elements: (i) the disputed domain name is identical 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 respondent has registered and is using the disputed domain name in bad faith. In this dispute, no Response or any kind of communication has been submitted by the Respondent, despite the fair opportunity given by the Center to present its case, in accordance to paragraph 2(a) of the Rules. In consequence, and in accordance to paragraph 15(a) of the Rules, this Panel “shall decide a complaint 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”. Additionally, as sets out by the UDRP Jurisprudence, this Panel will consider that “the applicable standard of proof in UDRP cases is the ‘balance of probabilities’ or ‘preponderance of the evidence’; some panels have also expressed this as an ‘on balance’ standard. Under this standard, a party should demonstrate to a panel’s satisfaction that it is more likely than not that a claimed fact is true”, see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2. A. Identical or Confusingly Similar The Complainant has provided vast and sufficient evidence of having trademark rights over TF1, at least since 1984 (e.g.: Reg. No. 1290436 for TF1, registered on November 22, 1984). The Panel finds the trademark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the Complainant’s Trademark TF1, for the purposes of the Policy. See WIPO Overview 3.0, section 1.7. The disputed domain name is the result of the incorporation of the Complainant’s Trademark TF1, plus the addition of the term “pro”, which does not prevent a finding of confusing similarity (see e.g.: Television Francaise 1 v. Host Master, Transure Enterprise Ltd, WIPO Case No. D2023-2497; and WIPO Overview 3.0, section 1.8). In relation to the country code Top-Level Domain (“ccTLD”) “.co”, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark, as it is a technical requirement of registration. See WIPO Overview 3.0, section 1.11.1. Therefore, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
page 4 Although 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 difficult 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 relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1. The Panel notes that nothing in the submitted evidence, suggests that the Respondent is commonly known by the disputed domain name; or that the Complainant has authorized the Respondent to register or to use its trademark TF1 as a domain name; or that it is commercially related to the Respondent in any manner. In fact, the Panel notes that, according to the submitted evidence, by November 23, 2023, the disputed domain name was redirected to a website where the download of malicious content was a potential risk to any Internet user in the Complainant’s detriment, a scenario with potential disastrous consequences that can never confer rights or legitimate interests on a respondent. See WIPO Overview 3.0, section 2.13.1. Subsequently, by the time of this Decision, the disputed domain name redirected to a parking page containing sponsored PPC links related to the Complainant’s business activity, which does not represent a bona fide offering, in particular, where such links compete with or capitalize on the reputation and goodwill of the Complainant’s Trademark or otherwise mislead Internet users. See WIPO Overview 3.0, section 2.9. Therefore, having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name, such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In relation to the bad faith registration, the Panel notes that, the disputed domain name was registered by the Respondent more than 30 years after the Complainant’s acquired its Trademark rights over TF1 (since 1984, at least), providing a significant amount of time to the Respondent to learn about the Complainant’s business and its Trademark value. Facts that lead to this Panel to conclude that at the time of the registration of the disputed domain name, the Respondent registered it with the Complainant in mind, incurring in bad faith. As UDRP panels have consistently found, the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the trademark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity, as in this case, can by itself create a presumption of bad faith on the part of the Respondent. See WIPO Overview 3.0, section 3.1.4. In this regard, the Panel notes the composition of the disputed domain name reproducing the Complainant’s trademark in its entirety along the term “pro” that, as the Complainant states, is also related to its business activities dedicated to media professionals, and the similarities between the disputed domain name and the Complainant’s domain name . Additionally, this Panel notes that, the Respondent certainly has been engaged in a pattern of trademark- abusive domain name registration, since it has been involved in a relevant number of previous UDRP Cases, filed at the Center, and with it falling into paragraph 4(b)(ii) of the Policy. (see e.g.: Capel Grandes Tailles v.
page 5 Host Master, Transure Enterprise Ltd, WIPO Case No. D2023-4807; Skopos Financial, LLC v. Host Master, Transure Enterprise Ltd, WIPO Case No. D2023-3713; Sopra Steria Group v. Host Master, Transure Enterprise Ltd, WIPO Case No. D2023-3690; BPCE v. Host Master, Transure Enterprise Ltd, WIPO Case No. D2023-3476; International Business Machines Corporation (IBM) v. Host Master, Transure Enterprise Ltd, WIPO Case No. D2023-3282; Automobili Lamborghini S.p.A. v. Host Master, Transure Enterprise Ltd, WIPO Case No. D2023-3153; and Television Francaise 1 v. Host Master, Transure Enterprise Ltd, WIPO Case No. D2023-2497) In relation to the bad faith use, this Panel observes that the disputed domain name initially resolved to a website with potential malicious content, which as described, can generate a cascade of disastrous events to the Internet user in direct detriment of the Complainant’s trademark reputation (e.g.: phishing activity, malwares, ransomware, etc.). Panels have held that the use of a domain name for illegal activity as phishing, malware distribution, unauthorized account access/hacking, or other types of fraud, constitutes bad faith. See WIPO Overview 3.0, section 3.4. Subsequently, and as described along this Decision, the disputed name changed and currently resolves to a website with PCC links related to the Complainant’s business activity, targeting the Complainant and falling into paragraph 4(b)(iv) of the Policy (see e.g.: Television Francaise 1 v. Host Master, Transure Enterprise Ltd, WIPO Case No. D2023-2497). Therefore, this Panel concludes that the disputed domain name is being used in bad faith. The Panel finds that the Complainant has established the third element of the Policy. 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 be transferred to the Complainant. /María Alejandra López/ María Alejandra López Sole Panelist Date: January31, 2024
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