WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société d'Exploitation d'un Service d'Information SESI v. DH V
Case No. D2011-1534
1. The Parties
The Complainant is Société d'Exploitation d'un Service d'Information SESI of Paris, France, represented by SCP Clairmont, France.
The Respondent is DH V of Surat thani, Thailand, represented per se.
2. The Domain Name and Registrar
The disputed domain name <i-tele.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2011. On September 13, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 13, 2011, GoDaddy.com, Inc. 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 Complainant on September 16, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 16, 2011.
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 Respondent of the Complaint, and the proceedings commenced on September 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2011. The Response was filed with the Center on September 26, 2011.
The Center appointed Christophe Imhoos as the sole panelist in this matter on October 18, 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 Complainant is a subsidiary of the Groupe Canal+ Company and provides a service of television channel freely accessible primarily on TNT, cable, satellite, ADSL TV, mobile TV and non-stop on the Internet.
The Complainant's trademark rights in France on the trademark i TELE date back to May 18, 1999. Among these trademarks (appendix 3 to the Complaint), there are:
- the French trademark I Télé, filed under No. 99792602, on May 18, 1999, and duly renewed in classes 9, 14, 16, 18, 25, 28, 35, 38, 41, 42, 43 and 45;
- the French trademark i TELE + device, filed under No. (02)3189794, on October 18, 2002, in classes 09, 14, 16, 18, 25, 28, 35, 38, 41 and 42;
- the international registration i TELE + device, filed under No. 805968, on April 17, 2003, in classes 16, 38 and 41;
- the French trademark i TELE + device, filed under No. (08)3607173, on October 27, 2008, in classes 09, 14, 16, 18, 25, 28, 34, 35, 38, 41 and 42;
- the international registration i TELE + device, filed under No. 1018458, on April 10, 2009, in classes 09, 14, 16, 18, 25, 28, 34, 35, 38, 41 and 42;
- the community trademark i TELE+ device, filed under No. 008696312, on November 18, 2009, in classes 09, 16, 35, 38 and 41.
Furthermore, the Complainant is the owner of the following domain names (appendix 4 to the Complaint):
- <itele.fr>, registered on December 11, 2001;
- <itele.info>, registered on January 28, 2005;
- <itele.mobi>, registered on June 12, 2006;
- <i-tele.fr>, registered on August 7, 2006.
The disputed domain name was registered on September 21, 2006.
5. Parties’ Contentions
The Complainant’s arguments are mainly the following:
(i) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name identically reproduces the trademarks of the Complainant.
It consists of the association of the letter "i", standing for "information" and the word "tele", word abbreviation for "television". The mere addition of the hyphen between "i" and "tele" in the disputed domain name is not sufficient to avoid confusion with the Complainant’s trademarks, since it is a punctuation mark commonly used to join words, to separate syllables of a single word or a letter/word from another word which form an indivisible whole as the Complainant’s trademarks.
The disputed domain name and the Complainant’s trademarks still remain visually identical.
Moreover, they are pronounced in the exact same way, meaning that it is impossible to pronounce the disputed domain name without pronouncing the Complainant's trademarks.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent has no rights on the disputed domain name nor interests thereto.
In particular, the Respondent has not been licensed, contracted or otherwise permitted by the Complainant in any way to use the prior i TELE trademarks or to register for any domain name incorporating the i TELE marks, nor has the Complainant acquiesced in any way to such use or registration by the Respondent.
(iii) The disputed domain name was registered and is being used in bad faith.
The Respondent registered the disputed domain name on September 21, 2006, that is after the registration of (i) three of the aforementioned trademarks and of (ii) all the Complainant’s domain names. At that time, the address of the Respondent was located in Evry, France, until November 2006. Then, he moved to Thailand and went back to France, in Creteil, from May 2009 to December 2010 before going back to Thailand (appendix 5 to the Complaint). For this reason, the Complainant – a French Company – submits that the Respondent had been aware of the existence of the Complainant's trademarks i TELE.
The disputed domain name leads to a website on which homepage are mentioned (i) on a top banner "Watch TV on PC — Free Internet TV" and (ii) below: "On i-tele.com you can watch free world direct TV channels, free TV on your PC, free online direct TV, guide news TV" (appendix 6 to the Complaint), whereas the Complainant’s trademarks are used in connection with a French television channel freely accessible primarily on TNT, cable, satellite, ADSL TV, mobile TV and non-stop on the Internet. The Respondent therefore intends to take advantage of the reputation of the Complainant's trademarks "i TELE" and to disrupt its activity by pretending to offer similar services.
The Complainant points out that this website also presents an erotic and pornographic content which is introduced in French language in order to attract French Internet users: "rejoins les amatrices hot de ta region pour un tchat sex!!!". This act of “pornsquatting”, namely taking advantage of a well-known trademark to attract Internet users to a pornographic website, has often been recognized as evidence of bad faith registration and use (Ty, Inc. v. O.Z. Names, WIPO Case No. D2000-0370; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022; and Perlier S.p.A. v. Mr. Stanley Filoramo, WIPO Case No. D2003-0848). Such an erotic and pornographic content has a negatively and highly damaging affect on the image and reputation of the "i TELE TV" channel of the Complainant. Previous panels have held that, in such cases of pornsquatting: "The inevitable viewer confusion resulting from the re-direction clearly injures the Complainant, tarnishing its marks and damaging its reputation" (Sound Unseen, Ltd.; Apple Bottoms, LLC; and Cornell Haynes p/k/a "Nelly" v. Patrick Vanderhorst, WIPO Case No. D2005-0636).
The Complainant finally submits that the disputed domain name was registered in order to prevent the Complainant from reflecting its marks in a corresponding domain name, and, being a company acting on the Internet, the Complainant has a true legitimate interest in having a ”.com” domain name reflecting its core trademarks. In support of this assertion, the Complainant submits an email from the Respondent to the Complainant dated from December 2, 2010 - in response to an injunction of the Complainant sent the same day - in which it is said: "If you want this domain name, please make me an offer to buy it" (appendix 7 to the Complaint). Therefore, it clearly appears that the Registrant of the disputed domain name has done such a registration in order to make a commercial gain by taking advantage of lnternet traffic searching for "i TELE" services and diverting the customers in the first place, then by trying to make the Complainant pay the highest price possible to have it back.
All of this constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy in the Complainant's view.
For all of these reasons, the Complainant requests to have the domain name in dispute transferred in its favor.
The Respondent’s main arguments are stated hereinafter:
(i) Whether the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Respondent submits that it runs the disputed domain name whose look, feel and content, as well as its logo, significantly differ from that of the Complainant's web site <i-tele.fr> (appendix 1 to the Response). The disputed domain name is an English website targeting English speaking people. The Complainant and the Respondent do not have common Internet users.
In effect, the Complainant website <i-tele.fr> is an empty website (appendix 2 to the Response) whilst its website <itele.fr > is in the French language and has no English version (appendix 3 to the Response). Therefore, the Complainant is solely targeting non-English speaking French people. It is a well established principle that similarity or difference of the content of a website from that of a trademark holder is irrelevant in the finding of the confusingly similarity, (Arther Guiness Son & Co (Dublin) Limited v. Dejan Macesnic, WIPO Case No. D2000-1698).
Regarding pronunciation, the French "i" is pronounced "e" in English; in fact the "i"s and the "e"s differ greatly between the two languages. The Respondent submits that its website is pronounced "i tele" unlike the Complaianant’s trademarks. Clearly, the Complainant does not speak English. As the Complainant does not know who the Respondent is and where it is located, the former is not in a position to argue on pronunciation.
The disputed domain name is made up from two generic terms "i" and "tele". The combination of those two words is sufficiently distinctive to acquire trademark status; this is also evidenced by the fact that various registrars have agreed to the registration of the Complainant trademark, as, for example, <itele.com> as (appendix 4 to the Response) and <itele.se> (appendix 6 to the Response).
The Respondent finally points out that anyone can still register the domain name <i-tele.info>, <i-tele.biz> and <i-tele.org> (appendix 6 to the Response).
(ii) Whether the Respondent has rights or legitimate interests in respect of the disputed domain name.
The Complainant has shown that it has a legitimate right to the i TELE trademark and submitted that it did not provide any license or authorization to the Respondent to use this trademark. Whilst relevant, this factor alone is not conclusive as to whether the Respondent's use of the mark in its business is legitimate (Amscot Corporation v. Fibertech Columns. Inc., WIPO Case No. D2005-0656). The Respondent submits that it bought the disputed domain name in good faith and without prior knowledge that this would create any problem to the Complainant. Morover, the Respondent is completely unaware that it had to request permission or to be licensed or contracted in order to use the disputed domain name.
The Respondent further explains that it does not understand why the Complainant, a large TV company, set up this company trademark six years ago without purchasing the disputed domain name. The Respondent also submits that had it bought the disputed domain name for the purpose of selling it at a high price to the Complainant, it would have done so many years ago. For the Respondent, it looks as if the Complainant had just thought of creating a website and unfortunately the domain name had already been taken. Indeed, one of the Complainant's websites is still under construction.
The Respondent finally submits that it legitimately offers advertising space, including adverts for free TV, for a modest income, like any other usual course of business.
(iii) The disputed domain name has been registered and is being used in bad faith.
The Complainant submitted that the disputed domain name was registered on December 21, 2006 but the history of the disputed domain name shows that it was actually created in 1998, i.e. far from the creation of its trademark (appendix 7 to the Response).
The Respondent explains that it runs a portal website; it is a TV channel directory. The purpose of the website is to let people watch online worldwide TV channels. It submits that it never had any intention or knowledge of infringing the Complainant's trademark rights in any way, that it never took advantage of the Complainant's logo or slogan for its website. The Complainant is trying to take advantage of a small business and to damage the Respondent's trade. In addition, the fact that some of Respondent's banners are in French is not relevant because they are also in other languages, depending on the Internet user's country.
The Respondent rejects the Complainant's contention of the Respondent doing "pornsquatting" affecting thereby the image and reputation of the "I tele TV channel". Web searches show that the Complainant's website also contains reference of sexual nature (appendix 8 to the Response).
The Respondent further denies that it intends to sell the disputed domain name for the highest price possible. The Complainant's email requesting the transfer of the disputed domain name in its favour (appendix 9 to the Response) is a harassment and abuse of power without any fair proposal being made or discussion undertaken with the Respondent which makes its living from the disputed domain name.
Respondent finally points out that when protecting the rights of a trademark holder one has also to consider the rights of business people to conduct trade without any harassment.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:
(i) the Respondent’s 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 domain name; and
(iii) the Respondent’s domain name has been registered and is being used in bad faith.
The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to paragraph 4(a) of the Policy.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules.
A. Identical or Confusingly Similar
The Complainant has established its rights in the trademark i TELE for both France and internationally (appendix 3 to the Complaint). As a general rule, the date of registration or first use is not relevant for the purpose of finding rights in a trademark under this requirement.
The disputed domain name is obviously confusingly similar to the Complainant’s trademark i TELE. The hyphen between "i" and "tele" in the disputed domain name does not affect that finding. This does not eliminate any risk of confusion with the Complainant’s trademark, at least from a visual effect.
Pronunciation is also not decisive from the point of view of the Panel. Likewise, even if the disputed domain name were made of generic terms, as the Respondent submits, this would not eliminate the risk of confusion for Internet users.
Finally, the mere fact that some of domain names incorporating "i-tele" are still open for registration is of no relevance for the purpose of this requirement under the Policy.
For the reasons stated above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the disputed domain name. Those circumstances are described as follows:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or 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.
The Respondent acknowledges the fact that the Complainant has not granted any license or have otherwise permitted the Respondent to use the Complainant’s trademark or to apply for any domain name incorporating the Complainant’s trademark. Moreover, the Respondent is not known by the disputed domain name.
The mere fact that the Complainant did not acquire the disputed domain name at much earlier date is irrelevant for the purpose of the examination of this requirement.
Under these circumstances and absent convincing evidence to the contrary, the Panel is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the disputed domain name.
The Panel finds therefore that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Anyone of the following behaviors is sufficient to support a finding of 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The circumstances described by the Complainant in its Complaint show that the Respondent had not been unaware of the Complainant's registered rights, as the former used to live in France at the time (see appendix 5 to the Complaint). The Respondent's submission made in respect of the history of the disputed domain name (appendix 7 to the Response) is neither conclusive nor convincing in this respect in the Panel's view.
With regards to Respondent’s use of the disputed domain name to attract Internet users to an adult website, the Panelist’s view is the following. Preliminary, it is commonly understood, under WIPO case law, that, whatever the motivation of the Respondent may be, the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the domain name was registered and is being used in bad faith (Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022; Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860; Bass Hotels & Resorts, Inc. v. Mike Rodgerall, WIPO Case No. D2000-0568).
In addition, the Complainant has provided evidence, in the instant matter, of the fact that Respondent is using the confusion in the consumers’ minds with the Complainant's mark and services to divert Internet users for commercial gain. In particular, Complainant has demonstrated (see appendix 6 to the Complaint) that Internet users entering into the website at the disputed domain name are redirected to other websites of sexual adult content (sex chat rooms, pictures and videos) when clicking on any hyperlinks that are available on screen whose full access is available to subscribing members only. As has been clearly pointed out in a previous UDRP decision "it is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques" (National Association of Stock Car Auto Racing, Inc. v. RMG Inc - BUY or LEASE by E-MAIL, WIPO Case No. D2001-1387). As the Panel finds, this is clearly not the case for the Complainant, contrary to the Respondent's contention.
For the reasons stated above, the Respondent's conduct has to be considered, in this Panel’s view, as bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy. It is therefore unnecessary to examine whether the Respondent's conduct also falls within the circumstance described under paragraph 4(b)(i) of the Policy.
For all 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 <i-tele.com> be transferred to the Complainant.
Dated: November 1, 2011