WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Prisma Media v. Ogier Rossignol
Case No. D2015-0726
1. The Parties
The Complainant is Prisma Media of Gennevilliers Cedex, France, represented by Fidal, France.
The Respondent is Ogier Rossignol of Alençon, France.
2. The Domain Name and Registrar
The disputed domain name <tvloisirs.com> is registered with GoDaddy.com, LLC. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2015. On April 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 2015, 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 May 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2015.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on June 8, 2015. 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 press publishing and digital media group in France, which was founded in 1978, and which launched in 1986 “Télé-Loisirs”, a magazine blending TV programs and leisure content. In addition, it launched 2003 with great success two television magazines “Télé 2 semaines” and “TV Grandes Chaines”.
As of the end of 2013, the Complainant had annual sales of over EUR 450 million, had more than 1,000 employees, and sold yearly 185 million magazines.
The Complainant is the owner of several trademark registrations, such as, inter alia, TV LOISIRS, registered in France under No. 1303842 since March 27, 1985 (“the Mark”).
The Complainant is also the registrant of many domain names, including inter alia <tele-loisirs.com>, <teleloisirs.fr>, <tele-loisirs.fr>, <tele-loisir.fr> and <programme-tv.net>.
The disputed domain name <tvloisirs.com> was created on July 30, 2014.
5. Parties’ Contentions
(i) The Complainant contends that the disputed domain name reproduces the Mark in which the Complainant has rights, and is confusingly similar to the Mark insofar as the disputed domain name, <tvloisirs.com>, is identical to the Mark.
(ii) The Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that the Respondent is not currently and was never known under the name TV LOISIRS, and that it never authorized the Respondent to register or use the Mark as a domain name.
(iii) The Complainant submits that by registering the disputed domain name, the Respondent sought to misleadingly divert Internet users for commercial gain, and that it used the disputed domain name with the fraudulent intent to lure Internet users into the belief that the Respondent is, or is acquainted with, the Complainant, and to steal information from the Complainant’s customers.
(iv) The Complainant thus submits that the Respondent has registered and used the disputed domain name in bad faith.
(v) The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Procedural Aspects
(i) Language of the Proceeding
Paragraph 11(a) of the Rules provides that “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Registrar confirmed that the language of the Registration Agreement of the disputed domain name is English. The Panel determines that pursuant to paragraph 11(a) of the Rules, the language of the proceeding is English.
(ii) Failure to respond
The Respondent is formally in default pursuant to paragraphs 5(e) and 14(a) of the Rules and paragraph 8(c) of the Supplemental Rules, because no Response was received from the Respondent within the time limit set by the Policy and the Rules.
Under the Rules, paragraphs 5(e) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.
B. Requirements of paragraph 4(a) of the Policy
(i) Identical or Confusingly Similar
In comparing the disputed domain name <tvloisirs.com> with the Mark, the Panel finds that the Mark is replicated entirely in the disputed domain name.
It is also well established that the generic Top-Level Domain such as “.com” does not generally affect the assessment of the domain name for the purpose of determining identity or confusingly similarity.
Consequently, the Panel finds that the similarity between the disputed domain name and the Mark is such as to create confusion for Internet users.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
(ii) Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy, this could result in the often impossible task of proving a negative proposition, requiring information that is primarily, if not exclusively, within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of a right or legitimate interest in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
As previously noted, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or a corresponding name or uses a corresponding name in a business.
The website associated with the disputed domain resolved to a website which was imitating the Complainant’s website to which its own <programme-tv.net> domain name resolves.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
On the contrary, the Complainant has argued that the Respondent: (i) has no rights or legitimate interests in the disputed domain name and (ii) has not been permitted in any way by the Complainant to register or use the Mark as a domain name.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.
(iii) Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name confusingly similar to the Mark.
It is established in prior UDRP decisions that the registration of a domain name confusingly similar to a trademark by any entity that has no relationship to that trademark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; and Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.
In this case, the Panel notes that it is close to impossible that the Respondent chose to register the disputed domain name randomly with no knowledge of the Mark. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
Where the Respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may also suggest bad faith. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
In addition, the Panel notes that many UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact that its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.
Furthermore, the Complainant has also argued that the disputed domain name was fraudulently used to divert Internet users for commercial gain.
In particular, the Complainant has claimed that the use of the disputed domain name consists of a phishing scam, by using the house dress of the Complainant's website, to which its own <programme-tv.net> domain name resolves, in order to deceive the Complainant’s customers and misguide them into divulging private information.
“Phishing” is a form of Internet fraud that aims to obtain valuable information of clients, such as credit cards, social security numbers, user IDs, passwords, etc. A fake website is created that is similar to that of a legitimate organization, and unsuspecting customers will typically log in to the fake website and divulge sensitive personal information, which will then be used for identity theft.
As decided in The Royal Bank of Scotland Group Plc v. Domain Consults, WIPO Case No. D2014-1765, the Panel believes that the use of the disputed domain name for “phishing” activities is another indication of bad faith, since such practice could seriously harm the Complainant’s customers and also damage the Complainant’s reputation.
Finally, some UDRP panels have held that in certain circumstances, registrants of domain names have an affirmative duty to abstain from registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others, and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
The Panel finds that the evidence submitted supports a finding of bad faith under paragraph 4(b)(iv) of the Policy.
The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
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 name <tvloisirs.com> be transferred to the Complainant.
Date: June 22, 2015