World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CANAL + FRANCE v. Franck Letourneau

Case No. DTV2010-0012

1. The Parties

The Complainant is CANAL + FRANCE of Issy les Moulineaux, France, represented internally.

The Respondent is Franck Letourneau of Le Verger, France.

2. The Domain Name and Registrar

The disputed domain name <canalsat.tv> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2010. On September 8, 2010, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On September 8, 2010, 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.

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 on September 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 10, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2010.

The Center appointed Alexandre Nappey as the sole panelist in this matter on October 27, 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.

4. Factual Background

Canal + France (hereafter the Complainant) is the leading pay-TV group in France, producing specialized channels since 1992. It has approximately 12.5 million subscribers.

Among its various activities, the Complainant operates CanalSat, the leading multichannel offering in France with 300 channels and services, among which 55 exclusive channels.

The CANALSAT trademark has been registered in France since at least 2001.

The Complainant is the holder of numerous trademarks and notably:

- French word trademark CANALSAT registered on October 24, 2001 under n° 01 3 127 720 for products in classes 9, 16, 35, 38, 41 and 42;

- Community Trademark word mark CANALSAT registered on April 24, 2002 under n°002666907 for products in classes 9, 16, 35, 38, 41 and 42.

All the CANALSAT trademarks were initially registered in the name of GROUPE CANAL+ and subsequently assigned to the Complainant, which is the exclusive current holder of such trademarks.

Services offered by the Complainant are detailed on the Internet at “www.canalsat.fr”. The Complainant also owns the following domain names:

<canalsat.com>

<canal-sat.tv>

which forward to the Complainant’s corporate website.

The disputed domain name was registered on February 13, 2006. The domain name is used to redirect Internet users to a pornographic website.

5. Parties’ Contentions

A. Complainant

On the basis of the above cited trademark rights, the Complainant contends that:

The CANALSAT trademark is well-known among the French public, as a leading provider of pay TV services.

The disputed domain name fully incorporates the trademark CANALSAT, creating a severe confusion and high association with the CANALSAT trademark. Therefore the disputed domain name is identical or at least confusingly similar to the trademark CANALSAT.

The Respondent has no rights of legitimate interests in respect of the disputed domain name. The Respondent does not hold any registered or common law rights with respect to CANALSAT or any similar locution, and cannot show legitimate interests on the domain name which points to a pornographic website called PORNOTUBE.

Lastly, the Respondent registered and is using the disputed domain name in bad faith. The registration of a domain name identical to a famous trademark by anyone having no relationship with the trademark holder is showing bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:

(i) The disputed 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 disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.

Having consideration to the parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above mentioned elements are the following.

A. Identical or Confusingly Similar

The Complainant shows substantial evidence of its trademark rights on CANALSAT.

The disputed domain name is clearly identical to the prior trademarks held by the Complainant. As claimed by the Complainant, the incorporation of a trademark in its entirety is often sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s trademark. Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505.

Even if the suffix “.tv” is to be disregarded for comparison purposes and the Panel has to determine whether the disputed domain name is identical or confusingly similar to the trademarks CANALSAT without regard to the extension, it is however pointed out that in the present case the suffix “.tv” underlines the confusion between the disputed domain name and a trademark having a strong reputation in the field of television and broadcasting.

Therefore the Panel is satisfied that the Complainant holds rights in the CANALSAT trademarks, and finds that the disputed domain name is identical to the Complainant’s trademarks in the terms of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.

This finding is based on the following unchallenged circumstances brought forward by the Complainant:

- There is no indication in the file that the Respondent is commonly known under the disputed domain name;

- The Respondent does not hold any trademark right on CANALSAT or any similar wording;

- The Respondent is using the domain name to tarnish the Complainant’s trademark when directing the disputed domain name to PORNOTUBE, a pornographic website. ENDEMOL Entertainment UK Plc v. Guido SCHERPENHUYZEN, WIPO Case No. DTV2001-0023.

Furthermore, the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interests in the domain name.

Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph (4)(a)(ii) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

The Complainant has to demonstrate both that the disputed domain name has been registered and is being used in bad faith.

Having consideration to the reputation of the Complainant’s trademark in France, it is highly unlikely that the Respondent based in France may have registered the disputed domain name by chance.

The Panel further considers it more likely than not that the Respondent was well aware of the Complainant and the CANALSAT mark at the time of registering the disputed domain name.

The linking of the domain name <canalsat.tv> to a pornographic website, while the Complainant reminds it is offering itself adult Pay TV channels and services, illustrates conclusively the Respondent’s disreputable intentions with the disputed domain name.

The Panel, therefore, concludes that there is sufficient evidence that the Respondent’s registration and use of the domain name <canalsat.tv> have been made in bad faith.

7. Decision

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 <canalsat.tv> be transferred to the Complainant.

Alexandre Nappey
Sole Panelist
Dated: November 12, 2010

 

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