Complainant is GROUPE CANAL+ SA of Issy les Moulineaux, France, represented by SCP LDBM - BARISSAT & MARTY, France.
Respondent is CDN Properties Incorporated of Panama City, Panama.
The disputed domain name <sexcanalplus.com>is registered with Fabulous.com Pty Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2009. On April 8, 2009, the Center transmitted by email to Fabulous.com Pty Ltd a request for registrar verification in connection with the disputed domain name. On April 9, 2009, Fabulous.com Pty Ltd transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2009. Respondent did not submit a Response. Accordingly, the Center notified the Respondent's default on May 8, 2009.
The Center appointed Mark Partridge as the sole panelist in this matter on May 20, 2009. 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.
The submissions show that Complainant has used the name GROUPE CANAL for pay television services in France since 1984. Complainant owns French registrations for the marks CANAL PLUS, filed on November 20, 1986, and CANAL+, filed on June 14, 1989. Complainant also owns the domain names <canalplus.com>, <canalplus.fr> and <canal-plus.fr>.
The disputed domain name was registered on July 3, 2003, and has been used for a website that consists of a holding page with pay per click advertising for a variety of goods and services including “satellite television” and with a link labeled “inquire about this domain,” which leads to a page stating the domain name may be for sale, soliciting an offer of purchase, and further stating that “the owner of this domain is in no way stating an intention to sell the domain.”
Complainant contends that the disputed domain name is confusingly similar to a mark in which it owns rights; that Respondent has no legitimate right or interest in the disputed domain name; and that the disputed domain name was registered and is used in bad faith.
Respondent is in default and has not contested these allegations.
The Panel finds that the disputed domain name is confusingly similar to Complainant's trademark CANAL PLUS in that it is comprised of Complainant's entire mark with the addition of the generic or merely descriptive term “sex.” The resulting name fails to create a separate commercial impression but instead maintains “canal plus” as the salient impression of the mark.
Respondent's website does not offer any goods or services, but instead provides links to the goods or services of others, including links to television services and adult entertainment offered by others. Such use is not a bona fide offering of goods or services as contemplated under the Policy. Further, there is no indication that Respondent is known by or otherwise makes bona fide use of the name Sex Canal Plus. Based on the facts appearing from the record, Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the domain name, which Respondent has not rebutted. As stated in Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110:
“While the overall burden of proof is on Complainant, the element of possible rights or legitimate interests of Respondent in the disputed domain name involves Complainant proving matters, which are peculiarly within the knowledge of Respondent. It involves the Complaint in the often impossible task of proving the negative. This should, as indicated correctly in WIPO Case No. D2001-0121, Julian Barnes v. Old Barn Studios, be approached as follows: Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, Respondent has no rights to the name of which he is aware, he has not given any permission to Respondent). Unless the allegation is manifestly misconceived, Respondent has to demonstrate his rights or legitimate interests in respect of the domain name under paragraph 4 (c) of the Policy.”
Those principles apply equally here and support Complainant's position. The Panel concludes that Respondent lacks any right or legitimate interest in the disputed domain name.
The submissions of Complainant lead to the conclusion that the disputed domain name was registered and used for the purpose of trading on the goodwill in Complainant's CANAL PLUS mark by deliberately leading Internet users to a site populated with sponsored links to the goods and services of others, including services in competition with Complainant, based on similarity and confusion with Complainant's name and mark. Respondent's use of a landing page with pay per click advertising appears similar to that addressed in Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474, which states:
“Respondent's bad faith is further illustrated by the domain name's resolution to a PPC parking page with links to websites selling products competing with Complainant's. It is now well-established that the use of a parking page in this manner is strong evidence of bad faith. See, e.g., Bayerische Motoren Werke AG v. bmwrider llc, WIPO Case No. D2008-0610 (June 23, 2008); Roust Trading Ltd. v. AMG LLC, WIPO Case No. D2007-1857 (February 29, 2008); Express Scripts Inc. v. Windgather Investments Limited/Mr. Cartwright, WIPO Case No. D2007-0267 (April 26, 2007); Sports Saddle, Inc. v. Johnson Enters., WIPO Case No. D2006-0705 (August 18, 2006). Not only does Respondent's registration divert internet users to his site based on the goodwill of the SERTA mark, but it also threatens to divert actual mattress sales away from Complainant.
(…) Respondent made the affirmative decision to register the domain name with a registrar who uses PPC parking pages, and thus know or should have known that the result would be the display of diversionary, competitive links. Respondent also, apparently, did not take any steps to instruct the registrar not to use a PPC parking page when he registered the domain name. He may not have made specific decisions regarding which links would appear, but he did make the specific decision to use this registrar and allow a third party to disrupt Complainant's business.
It is also no defense that Respondent may not himself currently derive any commercial gain from the sponsored links on the parking page. As past panels have noted, “the requirements of Paragraph 4(B)(iv) of the Policy do not require the owner of the domain name to be the entity that commercially gains from the diversion.” Roust (citing Express Scripts); see also Villeroy & Bosch AG v. Pingerna, WIPO Case No. D2007-1912 (February 18, 2008) (“Respondent cannot infringe the Complainant's rights with impunity on the basis that it is allowing a third party to reap the profits of it wrongful conduct”). Commercial gain inured to someone as a result of Respondent's intentional free-riding off Complainant's goodwill, and it was within Respondent's powers, as owner of the domain name, to have the parking page removed.”
These principles apply here. Respondent either knew or should have known that the domain name was registered and used in bad faith for commercial gain by trading on Complainant's mark. Accordingly, the Panel finds that the disputed domain name was registered and used in bad faith.
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, <sexcanalplus.com> be transferred to Complainant.
Dated: June 9, 2009