Complainant is Ville de Paris, France, represented by Nataf Fajgenbaum & Associés, France.
Respondent is Paris.TV LLC, United States of America, represented by John Berryhill, Ph.D., Esq., United States of America.
The disputed domain name <paris.tv> (“Domain Name”) is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2009. On December 11, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On December 11, 2009, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact. 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 the Respondent of the Complaint, and the proceedings commenced December 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2010. The Response was filed with the Center on January 7, 2010.
On January 13, 2010, Complainant filed a supplemental document in reply to Respondent's Response. The Panel has decided, in its discretion, to have regard to this supplemental submission.
The Center appointed Clive Elliott, Christiane Féral-Schuhl and Diane Cabell as panelists in this matter on January 22, 2010. The Panel finds that it was properly constituted. Each member of 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.
Complainant is a territorial authority/unit and administrative capital city of the French territory.
Complainant is the owner of the French trademark PARIS No. 04 3 295 151, registered on June 2, 2004 in classes 1 to 45 and specifically for “telecommunications, transmission of messages and images aided by computers, radio broadcasting, communications by telegrams, by telephone, communications by computer terminals, information on telecommunication, data transmission of data base, access and information services of data base, telewriting, transmission of fax, and telegrams, electronic mail services”. The trademark registration comprises the word “Paris” and a logo or device.
Complainant is also the owner of domain name <paris.fr>.
The Domain Name was first created (according to the Whois) on October 10, 2006 and updated on September 11, 2009.
Complainant asserts that Ville de Paris is a public body established for the specific purpose of meeting the general interests of the citizens of the city of Paris and that it is financed mostly by the state, regional or local authorities or other bodies. Complainant is in charge of a range of missions of public-utilities including in the fields of communication and information about activities available in the city of Paris and in particular communication services for internet users in Paris.
Complainant states that the sign “Paris” is widely used for a website “www.paris.fr” run by it to promote and broadcast information about available services in Paris, notably in matter of culture, tourism, visiting tours around the city, hotel bookings and temporary accommodation. Complainant contends that it translates into English its web articles related to tourism and travel services in several columns named amongst others “Museum and theatres”, “Tourism information”, “Heritage and sights”.
Complainant states that on its website “www.paris.fr” it has set up a web TV, which is available to Internet users to view various videos dedicated to Paris and which allows people to view new images from Paris and keep in touch with topics relating to culture, leisure, solidarity, sustainable development and Counsel of Paris.
Complainant advises that it became aware that the Domain Name had been registered without authorization and that a cease and desist letter was sent to Respondent on October 31, 2006, with a further cease and desist letter being sent on December 20, 2006.
Complainant advises that by way of response, on January 22, 2007 Respondent filed in the United States Federal Court for the Eastern District of Virginia a complaint for declaratory relief under Lanham Act for Tortuous Interference with contract and defamation. Complainant states that this complaint was dismissed on August 30, 2007 on the basis that personal jurisdiction did not exist over Ville de Paris.
Complainant advises that shortly thereafter it became aware that the Domain Name was transferred to another entity named Paris.TV.LLC. Complainant alleges that this entity is closely linked to Respondent and therefore that the Domain Name is still in the control of Respondent through another of his companies. Complainant alleges that other domain names belonging to Respondent also direct Internet users to the same homepage as that available at the Domain Name.
Complainant contends that Domain Name is too similar to its own PARIS trademark and its web TV contained therein and that Internet users will be increasingly confused due to the suffix “.tv” TLD leading them to believe that it is an internet website dedicated to a TV channel.
Complainant submits that Respondent has registered the Domain Name in bad faith and only for the intention of pecuniary gain without regard to the disruption of Complainant's business.
Respondent asserts that the complaint has been brought about by Complainant believing that it is entitled to any and all domain names with the word “Paris” in them and that it has brought three similar cases against other domain names, but failed on all three occasions.
Respondent contends that the registered trademark relied upon by Complainant is a compound mark which contains the word Paris but is dominated by a stylised logo resembling a dove or a hand.
Respondent contends that Complainant has failed to demonstrate that the Domain Name is identical or confusingly similar to a trade or service mark right and further that Complainant has neglected to mention it has had costs awarded against it for unsuccessfully making the same argument in the past.
Respondent states that it is one of a family of companies formed for development of subject-matter specific multimedia channels and is a limited liability company of which its sole member is Media Ventures LLC. It states that Respondent acquired the Domain Name in the course of preparations for media channels to be serviced by other entities associated with it in relation to online production, hosting and technical services. It also contends that these activities were conducted in parallel with the acquisition of other generic and descriptive “.tv” domain names.
Accordingly, it submits that its activities are entirely proper and there is no merit in the complaint.
The majority of the Panel finds that Complainant has failed to make out its complaint. We have reached this view for the following reasons.
The Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. It is common ground that Complainant is the registered proprietor of French registration No. 043295151, “the Trademark”. The Trademark is a compound mark which comprises the word “Paris” in conjunction with a stylized logo. Respondent argues that the device represents a dove or a hand “reaching out” and that the logo part dominates the overall mark. The device or logo element is certainly a material part of the Trademark. A fundamental question in this case is the nature and extent of recognition, if any, that should be afforded to a trademark registration which incorporates as a material part a well known geographic term.
We accept that the Trademark is clearly similar to the Domain Name. It is however not identical. The Trademark comprises both the word part “Paris” and the logo or device. As a composite mark the Trademark has to be considered as a whole. We consider that that question is necessarily context specific and that a valid distinction exists between a text mark and an image mark such as in the present situation.
Respondent relies in its response on a series of WIPO decisions under the UDRP where panels have considered similar complaints based on the Trademark, namely the same registration relied on in these proceedings. It contends that in each case the Panels found that the Trademark does not confer rights in the geographic term “Paris”, apart from the compound mark as registered. While not bound by these decisions the majority finds these decisions helpful in resolving what is not a straightforward issue.
In Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279, the panel stated:
“The confusing similarity question can be difficult where a complainant relies on a figurative mark comprising a logo and a descriptive or geographical expression. On one approach, the logo element of the complainant's mark is ignored in the comparison with the disputed domain name, on the basis that it is normally the words in a figurative mark which convey the mark's principal meaning, or impression. But where the words in the mark are purely descriptive, or the name of a well-known place, the words alone will not convey any meaning other than the descriptive or geographical one (unless of course the descriptive words have acquired, through use, a secondary meaning denoting the complainant's particular goods or services —something which has not been alleged in this case).”
In Ville De Paris v. Whois Privacy Services/Comar Ltd., WIPO Case No. D2009-1255 the panel found as follows:
“First, the Complainant has not registered a trademark in the word “Paris” simpliciter and it is in this Panel's view doubtful that it could do so, or claim an exclusive right to use that geographic term. See, e.g., Empresa Municipal Promociòn Madrid S.A. v. Easylink Services Corporation, WIPO Case No. D2002-1110; Land Sachsen-Anhalt v. Skander Bouhaouala, WIPO Case No. D2002-0273; City of Lake Worth v. John C. Becker, Inc., WIPO Case No. D2003-0576. The Panel also notes that the Complainant is far from having a monopoly on registered marks incorporating the word “Paris”: using “Paris” as the search term in the trademark data base of Institut National de la Propriété Industrielle yields 7,928 responses, including such French and European Community trademarks as PARIS SECRETS, DJAZZ PARIS, VIVRE PARIS, and MIMA PARIS, to name just a few. Similarly, the Internet abounds with domain names and business names incorporating the word “Paris”, such as “www.paris-live.com” or “www.parisguide.com”.
Second, the Panel finds that, as used in the Complainant's PARIS AND DESIGN trademark, the word “Paris” is so closely intertwined with the graphic image within the mark that the word element on its own does not suffice as a separable, distinctive, or dominant element of the trademark for the purpose of the Policy. Such use of a geographic term in combination with such additional design elements does not in the Panel's view suffice to create protectable rights in such geographic term alone under the Policy. See, e.g., Empresa Municipal Promociòn Madrid, supra (registered trademarks for PROMOCION MADRID and MADRID CIUDAD 2002 did not create trademark rights in “Madrid” standing alone); Chambre de Commerce et d'Industrie de Rouen v. Marcel Stenzel, WIPO Case No. D2001-0348 (June 18, 2001) (registered trademark for C.C.I. ROUEN E.S.C. ROUEN L'ESPRIT DE CONQUETE did not create trademark rights in “Rouen”); Brisbane City Council v. Joyce Russ Advertising Ply Ltd, WIPO Case No. D2001-0069 (May 14, 2001) (finding the distinguishing feature of registered trademark BRISBANE CITY WORKS to be the conjunction of “works” with “Brisbane city” and not “Brisbane City” by itself).”
We find the reasoning in these decisions to be relevant and persuasive in the present situation. Complainant sought to distinguish these decisions but ultimately it is faced with the reality that no WIPO UDRP panel has to date found that Complainant's composite mark gives it exclusive rights in the word “Paris” and that the use of the word “Paris” in and of itself is likely to lead to confusion.
For these reasons we find that Complainant has failed to make out the first limb of the Policy. This means that the Complaint must fail. However, for completeness we will deal with the other two grounds.
As noted above Respondent asserts that it is one of a family of companies formed for development of subject-matter specific multimedia channels and that it acquired the Domain Name in the course of preparations for media channels to be serviced by other entities associated with it. It also contends that these activities have been conducted in parallel with the acquisition of other generic and descriptive “.tv” domain names and that this activity is legitimate and permitted by the Policy.
Respondent acknowledges that it has acquired a portfolio of domain names relating to a range of media services and more specifically the descriptor and TLD “tv”. In our view, even if Respondent has acquired and is holding a number of domain names for resale or speculation this may, depending on the circumstances, be legitimate.
In the present situation, for the reasons which we expand on below, there is nothing to suggest to us that Respondent's interests and actions, while perhaps opportunistic, are illegitimate.
As we have noted above we consider that speculation in domain names is not per se prohibited by the UDRP. Speculation in domain names may under certain circumstances point towards bad faith, for example, when the main purpose is to extract money from the mark owner or from a competitor. In that case we accept that such speculation may amount to bad faith conduct.
However, there can be no doubt that the word “Paris” is in common use. First and foremost perhaps, it is the name of the capital city of France, and is used to describe that city and geographic area. There are many towns, many companies and even individuals who use the name, including the celebrity Paris Hilton who has her own television programs. Complainant does not have exclusive world-wide rights to use the term. As we see it the UDRP was designed to take into account that mark rights are local in nature and that many common and legitimate users of local rights would have to learn to share Internet space. The purpose of the UDRP is not to privilege the first of many mark name users to seek redress, but instead to prevent any mark owner from being particularly and purposefully harassed and targeted.
We see no indication, other than the similarity of names, that Respondent intended to use the Domain Name for any of the purposes identified in paragraph 4(b) of the Policy. Respondent has made no effort to sell the Domain Name to Complainant or a competitor (at least not yet). Further, Complainant's Trademark includes only the term “Paris” and not “paris.tv” so we do not see how it has been prevented from reflecting the term “Paris” or its Trademark online, particularly as it already has the domain name <paris.fr>.
Finally, even if some degree of confusion may result, that does not appear to the purpose for which Respondent registered the Domain Name. Respondent has made no attempt to interfere with Complainant's business, or attract users for commercial gain, or pass itself off as Ville de Paris.
For all these reasons we consider that, at least for now, Complainant has not shown that the 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 majority of the Panel denies the Complaint.
Clive L. Elliott
In this case, Complainant produced evidence that it has registered PARIS as a mark in June 2004 and the domain name <paris.fr> in July 2001. This mark and this domain name existed prior to the Domain Name <paris.tv> registered by Respondent in October 2006. Complainant also produced evidence of the existence of its online web TV but didn't give the exact date of its launching.
Complainant clearly has rights in the PARIS mark for the purpose of paragraph 4(a)(i) of the Policy (see Ville de Paris vs Salient Properties LLC, WIPO Case No. D2009-1279). The two cases mentionned by Respondent are far different from the present case: the word “Paris” was connected with the name of a device element (wifi). In these particular cases the word “Paris” on its own was no more than a geographic indicator. That is presumably why the panels in those cases stated that the domain names involved were not confusingly similar to the PARIS mark of Ville de Paris.
In this present case, the Domain Name <paris.tv> is exactly identical to the PARIS mark.
The Dissenting Panelist underlines that the French Intellectual Property Code states that the imitation of a mark and the use of an imitated mark for goods or services that are identical or similar to those designated in the registration shall be prohibited “if there is a likelihood of confusion in the mind of the public” (article L. 713-3 of the said Code).
Here, the Domain Name <paris.tv> creates confusion in the mind of the public with both PARIS mark and <paris.fr> domain name registered by Ville de Paris.
Furthermore the likelihood of confusion is increased by the “.tv” TLD, which leads people to believe of an Internet website dedicated to a TV channel. Most Internet users are not aware of the fact that this TLD is a geographic one and may think that <paris.tv> refers to Complainant's official web TV.
Thus, the Dissenting Panelist's opinion is that the Domain Name <paris.tv> is identical or confusingly similar to the PARIS mark in which Complainant has rights.
Respondent did not produce clear evidence of a connection between the Domain Name <paris.tv> and the city of Paris.
The Domain Name <paris.tv> points on a web site entitled “www.meze.tv” where the word “Paris” is not mentionned. There is no offer of product or service (such as online TV) related with the word “Paris”. Moreover, the same home page is used with other domain names such as <usarmy.tv>, <macau.tv> or <uk.tv>.
Last, the alleged preparations for media channels seem to date back several years (2006). Indeed, the home page of the website of Respondent contains announcements of “coming actualities” in 2007.
Thus, the Dissenting Panelist's opinion is that Respondent has no rights or legitimate interests in respect of the <paris.tv> Domain Name.
The Dissenting Panelist considers that Respondent registered and used the Domain Name in bad faith.
According to paragraph 4(b)(i) of the Rules: “Evidence of Registration and Use in Bad Faith. For the purposes 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 a domain name in bad faith: (i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name”. In this case, Complainant produced a quote from the Respondent saying that the main purpose of the disputed registration and use is a speculative one. Respondent did not deny this assertion. Moreover, Respondent never offered any goods or services on the “www.paris.tv” website (see herebefore) and registered a number of domain names leading to the same homepage. Lastly, Complainant is truly deprived of the possibility to use the Domain Name to fulfill its missions of public utilities.
Therefore, the Dissenting Panelist opinion is that there is evidence of registration and use in bad faith.
Consequently, the Dissenting Panelist considers that the disputed Domain Name should be transferred to Complainant.
Dated: February 17, 2010