WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Télévision Française 1 (TF1) v. John Walker
Case No. D2013-0336
1. The Parties
The Complainant is Télévision Française 1 (TF1) of Boulogne, Billancourt Cedex, France, represented by Fidal, France.
The Respondent is John Walker of Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland and of New York, United States of America.
2. The Domain Names and Registrar
The disputed domain names <mytff1.com>, <mytff1.net>, <mytf11.com>, <mytf111.com> and <mytf111.net> are registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2013. On February 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 21, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding registrant information, the Complainant filed an amended Complaint on February 22, 2013.
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 February 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2013.
The Center appointed Daniel Kraus as the sole panelist in this matter on April 2, 2013. 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 leading and well-known French TV network. The Complainant is the owner of a great number of TF1 trademarks and domain names. The trademark MY TF1, in particular, is registered as a French nominative trademark no. 3640969 dated April 1, 2009. In addition, the Complainant has registered several domain names containing the trademark MY TF1 in different countries.
In January 2013, having noticed the registration of the disputed domain name <mytf11.com> and the website associated with it, the Complainant tried to act on the content of the website, particularly on the video displayed on it. It submitted a copyright infringement notification to YouTube that hosted the video in order to request removal of the content. The video was successfully removed on January 17, 2013 but was published again on January 18, 2013. The same process was then undertaken by the Complainant and ended successfully by the definitive removal of the litigious video on YouTube platform. However, this video reappeared the next day, hosted on another platform.
On January 21, 2013, the Complainant sent a cease and desist letter to the registrant of the disputed domain name <mytf11.com>, John Walker, with no response.
On February 8, 2013, the Complainant investigated the disputed domain name and its registrant, and discovered two other disputed domain names, namely <mytf111.net> and <mytff1.net> which redirect the Internet users to websites displaying the same content as the first one.
As the hosting provider was the same for the three disputed domain names, the Complainant sent it a notification on February 12, 2013, requesting the removal of all the websites’ content. The Complainant also discovered two other disputed domain names, owned by the same registrant as the ones cited above and built on the same model, namely <mytff1.com> and <mytf111.com>.
According to the Complainant, the websites accessible from these URLs realize an infringement of several intellectual property rights owned by the Complainant, namely its trademarks TF1 and MY TF1, its graphic charter and its copyrights.
The Complainant’s logo MY TF1 and the official graphic charter of the Complainant’s corporate website located at “www.tf1.fr” are reproduced on the websites associated with the disputed domain names. Furthermore, the same menu as the one chosen for “www.tf1.fr” website is also displayed on those two websites, but without any functional links. The background of those disputed websites is just a screenshot of the Complainant’s website at “www.tf1.fr”.
A video displayed on the Respondent’s websites hijacks the Complainant’s newscast in order to promote a trading platform, namely XP Markets. The litigious video reproduces the newscast of Jean-Pierre Pernaut, a famous French newscast presenter, whose voice has been replaced by another one promoting XP Markets business. A report is then broadcasted in order to make the XP Markets’ activities more credible.
Under this video, a detailed explanation of the binary options trading is made and some (false) testimonies of people who may have tried this trading method are displayed on the right, in order to convince the Internet users that it works.
The only links that functioned on those websites redirect the Internet users to “www.xpmarkets.com”, a trading platform.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to its TF1 and MY TF1 trademarks and domain names in which it owns exclusive rights. The mere addition of the letter “f” or of one or two “1” does not have any impact on the risk of confusion.
The Complainant further argues that the Respondent has no right or legitimate interests in respect of the disputed domain names, as there is no relationship between the Respondent and the Complainant.
Finally, the Complainant argues that disputed domain names were registered and are being used in bad faith, in particular due to the fact that despite cease and desist letters, the Respondent has never replied to the letters nor transferred the disputed domain names back to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established registered trademark rights in TF1 and MYTF1.
The disputed domain names include the Complainant’s trademarks in its entirety together with an additional letter “f” or one or two additional numbers “1”. These additional elements however fail to dispel the connection between the disputed domain names and the trademarks (see e.g. HUGO BOSS AG, HUGO BOSS Trade Mark Management GmbH & Co. KG v. Above.com Domain Privacy / Above.com Legal, Host Master / Transure Enterprise Ltd, WIPO Case No. D2012-0273; AutoScout24 Deutschland GmbH. v. Mark Marchese, WIPO Case No. D2005-0777; Lilly ICOS LLC v. Tommy Hillinger, WIPO Case No. D2005-0475; ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034; The Price Company v. Price Club, also known as Tsung-Pei Chang, WIPO Case No. D2000-0664).
Those additional elements “1” or “f” are generic terms. Thus, the disputed domain names are solely dominated by the elements “tf1” or “mytf1” which is identical to the Complainant’s well-known trademarks.
The Panel finds that the disputed domain names are therefore confusingly similar to the Complainant’s TF1 and MY TF1 trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name: (i) use of, or preparations to use, a domain name in connection with a bona fide offering of goods or services; (ii) the fact that a respondent has commonly been known by a domain name; and (iii) legitimate noncommercial or fair use of a domain name, without intent for commercial gain to mislead consumers or tarnish the trademark.
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the burden of production shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.
It should first be noted that the Complainant has not licensed or otherwise authorized the Respondent to use its trademarks.
As to paragraphs 4(c)(i) and (iii) of the Policy, the Panel concludes that the Respondent cannot be considered to have been using or preparing to use the disputed domain names in connection with a bona fide offering of goods or services. It is difficult to imagine why the disputed domain names could have been registered if it was not to benefit from the reputation of the trademarks TF1 and MY TF1 and by creating a likelihood of confusion with the Complainant’s trademarks. In these circumstances, this Panel finds that the Respondent’s behavior cannot be considered to be bona fide nor does it constitute legitimate noncommercial or fair use (see HUGO BOSS AG, HUGO BOSS Trade Mark Management GmbH & Co. KG v. Above.com Domain Privacy / Above.com Legal, Host Master / Transure Enterprise Ltd, WIPO Case No. D2012-0273; MasterCard International Incorporated v. Acme Mail, WIPO Case No. D2008-0701; MasterCard International Incorporated v. Eric Hochberger, WIPO Case No. D2006-1050).
As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain names.
The Complainant established a prima facie case that the Respondent lacks rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel hence concludes that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Based on the case record, and as discussed above, the Panel is satisfied that the disputed domain names were registered in bad faith. As discussed above, given that the Complainant’s trademarks is well-known and that the Respondent is using it referring to “Jean Pierre Pernaut” a former presenter of this TV network, it is therefore clear to this Panel that the Respondent was aware of the Complainant when it registered disputed domain name names.
In addition to publishing a video on the websites at the disputed domain names, this Panel notes that the Respondent is promoting a trading platform “XP markets” and therefore is satisfied that the disputed domain names are used exclusively for the purpose of exploiting the reputation of the Complainant and its trademarks TF1 and MY TF1.
Therefore, in accordance with paragraph 4(b)(iv) of the Policy, the Panel finds that the disputed domain names were registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <mytff1.com>, <mytff1.net>, <mytf11.com>, <mytf111.com> and <mytf111.net> be transferred to the Complainant.
Date: April 16, 2013