The Complainant is TELEVISION FRANCAISE 1, France, represented by Scan Avocats AARPI, France.
The Respondent is Name Redacted1 . 2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2021. On February 15, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On February 16, 2021, the Registry 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 .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”). In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 18, 2021. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was April 1, 2021. The Respondent did not submit any response, however the Center received a communication on February 19, 2021, claiming identity theft. Accordingly, the Center notified the Parties of the Commencement of the Panel Appointment on April 7, 2021. The Center appointed Edoardo Fano as the sole panelist in this matter on April 9, 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 ADR Rules, Paragraph B(5). The language of the proceeding is English, being the language of the Registration Agreement, as per Paragraph A(3)(a) of the ADR Rules. 4. Factual Background The Complainant is TELEVISION FRANCAISE 1, known as TF1, a French company operating in the field of production and broadcasting TV programs and owning several trademark registrations for TELEFOOT, among which the following one: - French Trademark Registration No. 99780742 for TELEFOOT, registered on March 15, 1999. The Complainant operates on the Internet, owning several domain name registrations for TELEFOOT, among which The Complainant provided evidence in support of the above. The disputed domain name The Complainant states that the disputed domain name Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, nor is the Respondent commonly known by the disputed domain name. The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark TELEFOOT is distinctive and internationally known. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name, with the purpose to intentionally attract, for commercial gain, Internet users to a website offering escort services, thereby damaging the Complainant’s public image. B. Respondent The Respondent did not reply to the Complainant’s contentions. On February 19, 2021, the Center received an email communication from a third party with the same name and address of the apparent Respondent, alleging that he has never bought the disputed domain name and that somebody had stolen his identity and used it to register the disputed domain name. 6. Discussion and Findings As stated in paragraph A(1) of the ADR Rules “[the] ADR Rules are applicable to domain name disputes where the domain name has been registered under the .eu Top Level Domain”. Article 22(2) of the Commission Regulation (EC) No 874/2004 of 28 April 2004 laying down public policy rules concerning the implementation and functions of the .euTop Level Domain and the principles governing registration states that “[p]articipation in the ADR procedure shall be compulsory for the holder of a domain name”. In addition, section 15 of the Domain Name Registration Terms and Conditions for “.eu” domain names states that: “[t]he Registrant must participate in ADR Procedures if a third party (a ‘Complainant’), in compliance with the Dispute Resolution Rules, assents to an ADR Provider and initiates a complaint against the Registrant on the basis of speculative or abusive registration.” In order to succeed in its Complaint, the Complainant is required under Paragraph B(11)(d)(1) of the ADR Rules to demonstrate the following: (i) that the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by national law of a Member State and/or European Union law and; either (ii) that the disputed domain name has been registered by the Respondent without rights or legitimate interests in the name; or (iii) that the disputed domain name has been registered or is being used in bad faith. (i) Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union law The Panel finds that the Complainant is the owner of the registered trademark TELEFOOT both by registration and acquired reputation and that the disputed domain name Regarding the deletion of the second letter “o” of the Complainant’s trademark, the Panel notes that this is a typical case of a deliberate misspelling of a mark (so-called “typosquatting”), by adding, deleting, substituting or reversing the order of letters in a mark, where numerous UDRP panels in the past have found confusing similarity to be present (see, inter alia, Yurtici Kargo Servisi A.S. v. Yurticicargo Yurticikargo,WIPO Case No. D2003-0707; CareerBuilder, LLC v. Azra Khan,WIPO Case No. D2003-0493; The Sportsman’s Guide, Inc. v. Vipercom,WIPO Case No. D2003-0145; Neuberger Berman Inc. v. Alfred Jacobsen,WIPO Case No. D2000-0323). The deletion of the second letter “o” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark and can be considered as a case of typosquatting. It is well established in decisions under the ADR Rules that the country-code Top-Level Domain (“ccTLD”) “.eu” is typically ignored when assessing the similarity between a trademark and a domain name. The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to Paragraph B(11)(d)(1)(i) of the ADR Rules. (ii) Rights or Legitimate Interests The Respondent has failed to file a response. The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that it has no relationship or association with the Respondent, it has not authorized the Respondent to use or register in a domain name the TELEFOOT trademark, and that the Respondent is not commonly known by the disputed domain name. The disputed domain name was used for a website offering escort services. The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it. The Panel could not find any evidence by referring to the examples listed in Paragraph B(11)(e) of the ADR Rules that (i) prior to commencing this proceeding the Respondent has used the disputed domain name in connection with the offering of goods or services or has made demonstrable preparations to do so; On the contrary, the use of the disputed domain name for a website where escort services are offered is likely to tarnish the Complainant’s trademark. The Panel therefore finds that Paragraph B(11)(d)(1)(ii) of the ADR Rules has been satisfied. (iii) Registered or Used in Bad Faith According to Article 21(1) of the Regulation and Paragraph B(11)(d)(1) of the ADR Rules (ii) lack of rights or legitimate interests and (iii) registration or use in bad faith are alternative requirements. The Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name and therefore there is no need to consider also the bad faith element. In any case, the Panel finds that the content of the Respondent’s website at the disputed domain name is an evidence of bad faith, pursuant to Paragraph B(11)(d)(1)(iii) of the ADR Rules. 7. Decision For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name, Edoardo Fano 1 Considering the substantive similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel also refers to UDRP cases, where appropriate. The Panel decided to redact the name of the named Respondent, adopting the criterion of the panel in Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788 (“The Panel has decided that no purpose is to be served by including the named Respondent in this decision, and has therefore redacted its name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrars regarding transfer of the disputed domain name that includes the name of the referenced co-Respondent, and has authorized the Center to transmit Annex 1 to the Registrars as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances”). 2 (i) The decision shall be implemented by the Registry within thirty (30) days after the notification of the decision to the Parties, unless the Respondent initiates court proceedings in a Mutual Jurisdiction, as defined in Paragraph A(1) of the ADR Rules. (ii) The Complainant sought the transfer of the disputed domain name. As the Complainant is located in France, a Member State of the European Union, it satisfies the general eligibility criteria for registration of the disputed domain name set out in Article 4(2)(b) of Regulation (EC) No. 733/2002 as amended by Regulation (EU) 2019/517. Therefore, the Complainant is entitled to request the transfer of the disputed domain name.
(ii) the Respondent as an undertaking, organization or natural person has been commonly known by the disputed domain name; or that
(iii) the Respondent is making a legitimate and noncommercial or fair use of the disputed domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or European Union law.
Sole Panelist
Date: April 12, 2021
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