The Complainants are Canal + France and Groupe Canal + SA of Issy les Moulineaux, France, represented by SCP Clairmont, France.
The Respondents are Private Whois Service and I Corp. of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2010. On December 3, 2010, the Center transmitted by email to I Corp. a request for registrar verification in connection with the disputed domain name. On December 5, 2010, I Corp. 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 Complainants on December 8, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. On the same day, the Center sent an email to the Complainants regarding the language of the proceeding. The Complainants filed an Amended Complaint on December 10, 2010.
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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on December 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2011. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on January 7, 2011.
The Center appointed Luca Barbero as the sole panelist in this matter on January 17, 2011. 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 Background
The Group CANAL + broadcasts premium and theme pay television channels and distributes premium and multi-channel offers in France and in many other countries. The Group CANAL + is the French leading distributor of pay television offers in France, with 10.6 million subscriptions on all offers. Five premium channels are comprised in the Complainants’ offer “Les Chaines Canal +”: “Canal +”, “Canal + Cinéma”, “Canal + Sport”, “Canal + Family” and “Canal + Décalé.”
Most of the Complainants’ CANALSAT programs are accessible via satellite, ADSL and TNT, 3G, Edge mobile phones and Catch-up TV. CANAL+ and CANALSAT offers are marketed in Africa and in other countries by the subsidiary CANAL + Overseas, while the STUDIOCANAL is among the major players in the production and distribution of movies in Europe and offers more than 5,000 French, British and American movies.
The Complainants are the owners of several trademark registrations for CANAL PLUS, including the French trademarks No. 1218827, filed on November 5, 1982, registered on November 5, 1982 and duly renewed, in classes 9, 25, 35, 38, 39, 41 and 42; 1380676, filed on November 20, 1986, registered and duly renewed until the last renewal of November 29, 2006, in classes 1 to 42; and 3692088, filed on November 18, 2009, in classes 9, 16, 35, 38, 41 and 42. The Complainants are also the owners of trademark registrations for CANAL +, such as the French trademark No. 063434960, filed on June 15, 2006, in classes 9, 16, 25, 28, 35, 38, 41, 42 and 093692355, registered on November 19, 2009, in classes 1 to 45.
Canal + France is also the owner of the domain names , registered on July 30, 2001; , registered on March 27, 2002; , registered on May 20, 2006; , registered on September 25, 2008; , registered on June 12, 2006; , registered on January 11, 2003; , registered on August 22, 2000.
The disputed domain name was registered on September 19, 2001.
According to the printouts of the WhoIs database dated June 4, 2009 attached to the Complaint, the disputed domain name was previously registered in the name of “” and the registrant was based in France. 5. Parties’ Contentions A. Complainants
The Complainants point out that Canal + Group SA is a major player in the television broadcasting and in the distribution of pay television offers and that the trademark CANAL + is well known in France and overseas.
The Complainants contend that the disputed domain name is confusingly similar to the trademarks CANAL PLUS and CANAL + owned by the Complainants and that the Top Level Domain “.tv” is apt to increase the risk of confusion between the disputed domain name and the Complainants’ marks.
The Complainants state that the Respondents have no rights in the disputed domain name, that they have not received any authorization by the Complainants and that they have not used or prepared to use the disputed domain name in connection with a bona fide offering of goods and services. The Complainants highlight that the web site corresponding to the disputed domain name does not directly offer goods and services as it is constituted by a web page displaying links to third parties’ web sites where various products and services, such as cars, Internet and television services and adult content sites are advertised.
The Complainants conclude, with reference to the issue of the rights or legitimate interest, that the Respondents do not have any rights or legitimate interest in the disputed domain name, as the Respondents are using the Complainants’ marks in order to divert Internet users to other web sites.
With reference to the circumstances evidencing bad faith, the Complainants indicate that the Complainants’ trademarks CANAL + and CANAL PLUS are undeniably famous and that the selection of the disputed domain name was made by the Respondents in an attempt to attract, for commercial gain, Internet users to the Respondents’ web site or other on line locations, by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of the Respondents’ web site or location or of a product or service on the Respondents’ web site or location.
As a further circumstance evidencing bad faith, the Complainants state that the contact information of the disputed domain name, which previously showed a French postal address, have been hidden behind a privacy shield after a cease and desist letter received by the Complainants in 2009.
The Complainants conclude that the disputed domain name was registered and has been used in bad faith. B. Respondents
The Respondents did not reply to the Complainants’ contentions. 6. Discussion and Findings A. Language of the Proceedings
The language of the registration agreement, as ascertained by the Center during its verifications prior to the notification of the Complaint, is English. The Complainants originally filed the Complaint in French and, following the Center’s communication that the language differed from the language of the registration agreement of the disputed domain name, the Complainants timely submitted an amended Complaint in English. The Complainants, nevertheless, request that the language of the proceedings be French since, prior to the Complainants’ cease and desist letter addressed on June 12, 2009, the disputed domain name was, according to the WhoIs database, owned by a different holder based in France and the links published on the web site corresponding to the disputed domain name were connected to French web sites.
Pursuant to Paragraph 11 of the Rules, the language of proceedings is typically the language of the relevant domain registration agreement, but the panel has the authority to conduct proceedings in a language other than that of the registration agreement when fairness requires. Thus, in situations where, for instance, (a) the complainant would be disadvantaged by proceeding in the language of the registration agreement; (b) the complainant would be prejudiced by undue expense, delay, or complication; or (c) the respondent is able to communicate in complainant’s language but the complainant is unable to communicate in respondent’s, the panel may accept the complainant’s choice of language to ensure fairness and efficiency.
The Panel notes that the Respondents in the present proceedings are based in the Bahamas, whose official language is English, and that the Complainants have shown that they are able to communicate in English, since they have promptly submitted an amended Complaint in English.
Therefore, the Panel determines that the language of the proceeding be English. B. Substantive Elements of the Policy
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following:
(i) that the disputed domain name registered by the Respondents is identical or confusingly similar to a trademark or a service in which the Complainants have rights; and
(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. C. Identical or Confusingly Similar
The Complainants have provided evidence of ownership of several trademark registrations for CANAL PLUS, including the French trademarks No. 1218827, filed on November 5, 1982, registered on November 5, 1982 and duly renewed, in classes 9, 25, 35, 38, 39, 41 and 42; 1380676, filed on November 20, 1986, registered and duly renewed until the last renewal of November 29, 2006, in classes 1 to 42; and 3692088, filed on November 18, 2009, in classes 9, 16, 35, 38, 41 and 42. The Complainants have also proved the ownership of the following French trademark registrations for CANAL +: No. 063434960, filed on June 15, 2006, in classes 9, 16, 25, 28, 35, 38, 41, 42 and 093692355, registered on November 19, 2009, in classes 1 to 45.
In comparing the Complainants’ marks to the disputed domain name with reference to it should be taken into account the well established principle that the suffixes, including the generic top level domains, may be excluded from consideration as being merely a functional component of a domain name. See Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 “the specific top level of the domain name such as ‘.net’ or ‘.com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.”
In view of the above, the Panel finds that the Complainants have proven that the disputed domain name is identical to the CANAL PLUS trademarks and confusingly similar to the CANAL + trademarks in which the Complainants have rights in accordance with paragraph 4(a)(i) of the Policy. D. Rights or Legitimate Interests
The Complainants must show that the Respondents have no rights or legitimate interests in respect of the disputed domain name. The Respondents may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
It is well-established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the complainant show a prima facie case that the respondent lack rights or legitimate interests in the disputed domain name in order to shift the burden of evidence on the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).
In the case at hand, by not submitting a Response, the Respondents have not rebutted the Complainants’ prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
Moreover, it has been repeatedly stated that when a respondent does not avail itself of its right to respond to a Complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269).
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondents and the Complainants. The Respondents are not licensee of the Complainants, nor have the Respondents otherwise obtained an authorization to use the Complainants’ trademarks.
Furthermore, there is no indication before the Panel that the Respondents are commonly known by the disputed domain name, have made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the disputed domain name.
The Panel notes that the disputed domain name is pointing, as underlined by the Complainants, to a sponsored pay-per-click (“ppc”) web site mainly aimed at directing visitors to third party web sites where various products and services are advertised, including television services.
The Panel finds that under the circumstances the use of the disputed domain name merely for a pay-per-click page which directs visitors to various third party commercial web sites does not constitute a legitimate, noncommercial use of the disputed domain name under the Policy, as found in Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044.
Along the same lines were the decisions Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 and Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787, where the panel found that the respondent’s use of the domain name to resolve to a directory of commercial websites was not a bona fide offering of goods and services because “(a) the disputed domain name is fairly unique and specific to the Complainant; (b) there is no apparent connection between the disputed domain name and the Respondent’s website directory [...]; and (c) there is no other apparent legitimate justification for the Respondent’s registration and use of the disputed domain name for its website.” Similarly, in Bilfinger Berger AG v. eService Finance Dept.,WIPO Case No. D2003-0827, the panel stated that “[a]lthough services are offered in the form of a directory, the services do not correspond to a bona fide offering by Respondent. The domain name [] is only used as a link to a generic directory [. . .]. There is no indication that the links contained on the website are related to the Respondent or to the BILFINGER name.” See also inter alia Sports Holdings, Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1146, where the panel stated: “The evidence in the Complaint indicates that the website at the disputed domain name is commercial in the sense that it appears to provide links to other sites being competitors of the Complainant, and of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit. Such use does not constitute a legitimate non-commercial or fair use of the disputed domain name by the Respondent within the meaning of Paragraph 4(c)(iii) of the Policy.”
Moreover, the Panel finds that the Respondents, whose true identity was obscured by the privacy shield, has not shown that they are commonly known by the disputed domain name, as stated in Fry’s Electronics, Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1435. See along these lines Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services,WIPO Case No. D2007-1743, in which the panel has stated that “Here, the Respondent MSA either used a domain privacy service that did not reliably forward communications about alleged infringement, or else the Respondent MSA simply disregarded such communications when they were forwarded. In either case, this reflects a cavalier attitude toward the rights of others that is contrary to the spirit of the registration agreement and suggests bad faith in the registration and use of the Domain Name. It also suggests that a motive for using a domain privacy service in this instance was to increase the difficulty for a trademark owner of identifying the registrant, assessing the merits of a legal claim or Policy complaint, and contacting the registrant, which does not reflect good faith.”
Thus, in light of the above, the Panel finds that the Respondents have no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy. E. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 the holder’s website or location or of a product or service on the holder’s website or location.
As to bad faith at the time of the registration, the Panel finds that, in light of the Complainants’ prior trademark registrations for CANAL PLUS, which are dated back to 1982 and 1986, and of the spread and success of the Complainants’ premium channels in France and in other countries, the Respondents were more likely than not aware of the Complainants’ trademarks when the Respondents registered the disputed domain name.
The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks, as found in Gateway, Inc. v. Lorna Kang,WIPO Case No. D2003-0257. Along the same lines, Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd.,WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions,WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group,WIPO Case No. D2005-0868 “...it is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith.”
The Panel finds that, in light of the contents of the web page linked to the disputed domain name, where several sponsored links advertising television services are published, Internet users may be misled on the source, sponsorship, affiliation, or endorsement of the Respondents’ web site. Moreover, in all likelihood, the Respondent profits by earning pay-per-click revenues (see, inter alia, Manheim Auctions Inc. v. Whois ID Theft Protection, supra, Fry’s Electronics, Inc v. Whois ID Theft Protection, supra, Barry D. Sears, Ph.D. v. YY / Yi Yanlin,WIPO Case No. D2007-0286).
The Panel, therefore, finds paragraph 4(b)(iv) of the Policy to be applicable in this case, since the Respondents have attempted to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation or endorsement of the Respondents’ services.
The Panel also finds that the use of a privacy shield is, under the circumstances of the case, an additional evidence of the Respondents’ bad faith. As stated in Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302, “Although privacy shields might be legitimate in some cases such as protecting the identity of a critic against reprisal it is difficult to see why this Respondent needs to protect its identity except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trademarks against infringement and cybersquatting. In circumstances like this, the privacy shield may also allow registrants to transfer domain name registrations amongst themselves without any public record that there has been a transfer, thus allowing them to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy.”
As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response and in this case, as stated in Sports Holdings, Inc v. Whois ID Theft Protection, supra, “[i]t is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith.”
Along the same lines is the decision Renegade LLC v. Kenneth Gibert,WIPO Case No. D2008-0646, in which the panel stated: “The Complainant argues that the Domain Names were registered and used in bad faith to divert Internet users to the Respondent’s website for commercial gain based on confusion with the Complainant’s mark. Again, the Respondent has not denied these allegations or provided any evidence to support a finding that it registered and used the Domain Names in good faith.”
In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainants.
Luca Barbero
Sole Panelist
Dated: January 31, 2011
Full & Egal Universal Law Academy