WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fremantlemedia Limited and 19 TV Limited v. Giusto Daniel
Case No. DTV2010-0007
1. The Parties
Complainants in this proceeding are Fremantlemedia Limited and 19 TV Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Inlex Conseil, France.
Respondent is Giusto Daniel of Liege, Belgium.
2. The Domain Name and Registrar
The disputed domain name <nouvellestar.tv> (the “Domain Name”) is registered with eNom Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2010. On June 21, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 22, 2010, the Registrar 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 June 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2010. On July 2, 2010 Respondent sent an email request to the Center to receive the Complaint and the annexes to it in French. On July 7, 2010, the Center informed Respondent that, in accordance with Rules, paragraph 11 and subject to the authority of the Panel to determine otherwise, the language of proceedings shall be the language of the Registration Agreement for the Domain Name, and the latter has been confirmed by the Registrar to be English. The Center also informed Respondent that there appeared to be no agreement between the parties to conduct the proceeding in a different language other than the language of the Registration Agreement. Thereafter, Respondent did not send any communication to the Center and submitted no formal response. Accordingly, the Center notified Respondent’s default on July 16, 2010.
The Center appointed Assen Alexiev as the sole panelist in this matter on July 28, 2010. 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 Panel has not been made aware of any circumstances that would warrant a change of the language of this proceeding. Therefore, in accordance with Rules, paragraph 11, the language of proceedings shall be English.
4. Factual Background
Complainants are the producers of the French television series “Nouvelle Star” (also known as “A la Recherche de la Nouvelle Star” for the first series), which has been broadcasted by M6 in France and in Belgium since 2003. In this show, about 25,000 candidates participate in various towns around France and Belgium in a contest to find the next star of the French song.
The ratings track of the Nouvelle Star audience show that in 2009, the percentage of individuals aged 4 years or more watching this show in France during the Series 7 was 18.3, and in 2007, the percentage of individuals aged 4 years or more watching this show in Belgium during the Series 5 was 31.7.
Complainants are the owners of the following NOUVELLE STAR trademarks:
- French Trademark NOUVELLE STAR + design, No.06 3 428 193, registered on May 11, 2006 in International Classes 03, 09, 16, 25, 28, 38, 41 and 44;
- French Trademark NOUVELLE STAR + design, No.07 3 480 012, registered on February 7, 2007 in International Classes 14, 18 and 35;
- Benelux Trademark NOUVELLE STAR + design No.0818876, registered on June 7, 2007 in International Classes 09, 25, 28, 38 and 41; and
- Swiss Trademark NOUVELLE STAR + design, No.562410, registered on September 14, 2007 in classes 09, 25, 28, 38 and 41.
The Domain Name was registered on March 10, 2007.
5. Parties’ Contentions
According to Complainants, the Domain Name is identical or confusingly similar to the trademarks of Complainants in which “nouvelle star’’ is the dominant and distinctive element.
The country code top level domain name “.tv” is irrelevant for the determination of identity or confusing similarity between the Domain Name and Complainants’ trademarks.
In Complainants’ submission, Respondent has no rights or legitimate interests in the Domain Name, as he carries out no activity under it and owns no trademark registration of NOUVELLE STAR. Complainants have not licensed or otherwise authorized Respondent to use their trademarks, and there is no relationship between them.
As contended by Complainants, the Domain Name was registered and is being used in bad faith.
Respondent has a Belgian nationality, so he could not be unaware of the existence of the famous television series “Nouvelle Star” at the time of registration of the Domain Name.
Initially, the Domain Name automatically redirected to a French language TV website at “http://liegetv.tv”. After Complainants sent their first cease and desist letter to Respondent on January 27, 2009, the automatic redirection to this website was removed, and the Domain Name was linked to a parking website containing links related to TV. Thereafter, the Domain Name continued to be associated to websites containing links related to TV and other similar service providers which compete with Complainants, and was renewed two times in spite of Complainants’ later cease and desist letters. According to Complainants, these circumstances show that Respondent uses the Domain Name in an attempt to attract for commercial gain Internet users by creating a likelihood of confusion with Complainants’ trademarks and thus to extract financial gain from the goodwill of these trademarks.
On April 7, 2009, Complainants resent their previous cease and desist letter to Respondent. On April 15, 2009, Respondent sent a response, whereby he informed Complainants that he will agree to receive a proposal from them. On May 15, 2009, Respondent requested a gesture of support for his TV website, and on June 3, 2009, he proposed to transfer the Domain Name to Complainants against the payment of EUR 1,500. This proposal was not accepted by Complainants, and the parties failed to reach an agreement. Complainants submit that the above evidences the attempt of Respondent to transfer the Domain Name to them in exchange of an amount well above his out of pockets costs related to the Domain Name, which shows Respondent’s bad faith.
Complainants request the transfer of the Domain Name to Complainant Fremantlemedia Limited.
Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), Complainants must prove each of the following to justify the transfer of the Domain Name:
(i) That the Domain Name registered by Respondent is identical or confusingly similar to trademarks or service marks in which Complainants have rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That Respondent has registered and is using the Domain Name in bad faith.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name[…]” In this case, the Center has employed the required measures to achieve actual notice of the Complaint to Respondent, in compliance with Rules, paragraph 2(a), and Respondent was given a fair opportunity to present its case.
In the event of a default, under Rules, paragraph (14)(b): “[…] the Panel shall draw such inferences therefrom as it considers appropriate.”
As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques., WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. […]In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, Respondent has chosen not to submit a Response. His default entitles the Panel to conclude that Respondent has no arguments or evidence to rebut the assertions of Complainants. The Panel has to take his decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
Complainants have provided evidence and have thus established their rights in the NOUVELLE STAR trademarks, registered for the territories of France, Benelux and Switzerland.
It is a common practice under the Policy to disregard ccTLDs such as the “.tv” section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the Domain Name is its “nouvellestar” element. This element is identical to the NOUVELLE STAR verbal element of Complainants’ trademarks, which is their most distinctive element. In the Panel’s view, this makes the Domain Name confusingly similar to Complainants’ trademarks.
Therefore, the Panel finds that the Domain Name is confusingly similar to trademarks in which Complainants have rights.
B. Rights or Legitimate Interests
Complainants claim that Respondent has no rights or legitimate interests in the Domain Name, stating various arguments in this regard. This Panel finds that, Complainants have made a prima facie case under Policy, paragraph 4(a)(ii).
It is well established that once a complainant makes out a prima facie case that respondent has no rights or legitimate interests in a domain name, the burden shifts to respondent to rebut the showing by providing evidence to the contrary.
Respondent has chosen not to present to the Panel any allegations or documents in his defence despite the burden under the Rules, paragraph 5(b)(i) and 5(b)(ix) or the consequences that a panel may extract from the fact of a default (Rules, paragraph 14). If Respondent had any justification for registering or using the Domain Name, he could have provided it. In particular, Respondent has not contended that any of the circumstances described in Policy, paragraph 4(c) — or any other circumstance — is present in their favour.
The only information available about Respondent is the WhoIs information, provided by the Registrar, and the content of the website, associated to the Domain Name.
The WhoIs information contains no evidence of rights or legitimate interests of Respondent in the Domain Name. Respondent makes no claims for having rights or legitimate interests in respect of the Domain Name and provides no explanation whatsoever for its registration and use. As submitted by Complainants and not denied by Respondent, the website associated to the Domain Name was first linked to an Internet TV website, and following the demand letters sent by Complainants, was associated to a parking website containing various links related to television and to Complainants’ competitors. Taking into account the Belgian nationality of Respondent and the popularity of Complainants’ television program, as contended by them, it is likely that Respondent had Complainants’ business and trademarks in mind at the time of registration of the Domain Name. Respondent’s registration and use of a domain name confusingly similar to Complainants’ trademarks appears as an attempt to attract Internet users to Respondent’s website without authorisation by Complainants to do so. For the Panel, this is not a genuine bona fide activity that may establish rights or legitimate interests of Respondent in the Domain Name.
Therefore, and in the lack of any evidence or allegations to the contrary, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name within the meaning of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
For the purposes of Policy, paragraph 4(a)(iii), 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:
(ii) 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 your website or location or of a product or service on the holder’s website or location.
In the present case, the Domain Name is confusingly similar to Complainants’ NOUVELLE STAR trademarks. Respondent has no rights or legitimate interests in it, while he is positively aware of Complainants and of the significant commercial value of their trademarks. Respondent appears to have used the Domain Name initially to associate it to TV website, and then to a parking website containing various links related to television and to Complainants’ competitors. There being no evidence or arguments to the contrary, the Panel is prepared to accept that this conduct illegitimately exploits with a commercial purpose the reputation of Complainants and their trademarks.
Taking into account all above, the Panel finds that the Domain Name has been registered and used by Respondent in an attempt for commercial gain to attract Internet users to the Domain Name by creating an illegitimate association with Complainants and their trademarks. These actions amount to bad faith registration and use of the Domain Name under the Policy.
Further, Complainants have submitted evidence that Respondent has offered to transfer the Domain Name for a price of EUR 1,500. Respondent has not submitted before the Panel any rebuttal or justification for the requested amount. At the same time, Respondent has stated in his email to Complainants dated June 3, 2009, that the expenses of Complainants for an administrative proceeding under the Policy would exceed this amount. The Panel finds that this statement confirms Complainants’ allegations regarding the bad faith of Respondent and his motivation to illegitimately extract some financial benefit from Complainants. The requested amount is obviously well above the normal out of pocket expenses for the registration of a domain name. Therefore, the Panel is convinced that the attempt of Respondent to sell the Domain Name to Complainants justifies a finding of bad faith under Policy, paragraph 4(a)(iii).
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 <nouvellestar.tv> be transferred to Complainant Fremantlemedia Limited.
Dated: August 18, 2010