WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Radio Monte Carlo v. Lisa Katz, Domain Protection LLC
Case No. D2019-0206
1. The Parties
The Complainant is Radio Monte Carlo of Monte-Carlo, Monaco, represented by Cabinet Vidon – Marques & Juridique PI Dpt, France.
The Respondent is Lisa Katz, Domain Protection LLC of Dallas, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <rmcsport.com> is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2019. On January 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2019.
The Center appointed Anna Carabelli as the sole panelist in this matter on March 6, 2019. 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 owns “Radio Monte Carlo”, a radio station created in 1943, also known by the acronym RMC. With 264 frequencies RMC is a general-interest radio station programming primarily on current affairs, such as news (RMC Info) and sport (RMC Sport). The Complainant has provided evidence that in the years surrounding the registration of the domain name (2001-2004) RMC Info was amongst the five main generalist programs and that RMC is currently ranked as first French radio for men under 50 (Annex 4bis to the Complaint).
The Complainant is the owner of multiple registrations for the mark RMC, including:
- RMC SPORT French trademark No. 3101714, filed on May 22, 2001, registration effective on May 22, 2001, in classes 3, 9, 14, 16, 18, 25, 28, 35, 36, 37, 38, 39, 40, 41, 42, 43 and 44;
- RMC INFO French trademark No. 3101715, filed on May 22, 2001, registration effective on May 22, 2001, in classes 3, 9, 14, 16, 18, 25, 28, 35, 36, 37, 38, 39, 40, 41, 42, 43 and 44;
- RMC INFO European Union trademark No. 2369478, filed on September 10, 2001 and registered on March 20, 2003, in classes 35, 38 and 41 under priority of the above-mentioned French trademarks (hereinafter also referred to as the “Complainant’s Trademark”).
The Complainant operates the website available at “www.rmc.bfmtv.com”and owns the TV channels “RMC Découverte” and “RMC Sport”.
The disputed domain name, registered on October 18, 2005, resolves to a webpage featuring sponsored links to TV and radio sport broadcasting (Annex 3 to the Complaint).
On July 3, 2018 the Complainant requested the Respondent to cancel or transfer to the Complaint the disputed domain name based on its rights in the trademark RMC and RMC SPORT (Annex 11 to the Complaint); the Respondent did not respond.
5. Parties’ Contentions
The Complainant contends that:
1. The disputed domain name is identical to its registered trademark RMC SPORT and confusingly similar with RMC INFO. The addition of the generic Top-Level-Domain (“gTLD”) “.com” does not diminish the likelihood of confusion.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not been authorized by the Complainant to use the Complainant’s Trademark. The Respondent is making neither a bona fide offering of goods and services, nor a legitimate noncommercial or fair use of the domain name, by attracting Internet users to a webpage containing links relating to TV and radio sport broadcasting
3. The disputed domain name was registered and is being used in bad faith. In this connection, the Complainant submits that:
a) the Respondent knew or should have known of the Complainant’s Trademark when the disputed domain name was registered given the reputation of the Complainant and the notoriety of the Complainant’s Trademark;
b) the Respondent chose not to disclose its identity; and
c) the disputed domain name resolves to a webpage featuring links to TV and radio sport broadcasting of the Complainant’s direct competitors.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(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 domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of paragraph 4(a)(iii), shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the disputed domain names for the purpose of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Complainant has proved that it owns trademark registrations for the trademark RMC SPORT and RMC INFO (see Annexes 6 and 7 to the Complaint). The disputed domain name is identical to the first Complainant’s trademark and confusingly similar to the second one.
As recorded in section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the addition of the applicable Top-Level Domains (e.g., “.com”, “.site”, “.net”) is for registration purposes only, being a technical requirement of registration of a domain name, and may be disregarded for purposes of comparison under paragraph 4(a)(i) of the Policy.
Accordingly, the Panel finds that the Complainant has established element 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to use the Complainant’s Trademark.
The Complainant asserts that the Respondent cannot demonstrate any legitimate noncommercial or fair use of the disputed domain name, particularly because the Respondent is using it to attract Internet users to a webpage featuring links to TV and radio sport broadcasting of the Complainant’s competitors.
The Complainant has established prima facie evidence that none of the three circumstances establishing legitimate interests or rights provided for in paragraph 4(c) of the Policy applies. As stressed by many UDRP decisions, in such a case the burden of production shifts to the Respondent to rebut the evidence (see WIPO Overview 3.0, section 2.1).
In the absence of a Response to the Complaint, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other arguments supporting its rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the Complainant’s reputation, the Panel finds that in all likelihood the Respondent would have been aware of the Complainant’s Trademark at the time it registered the disputed domain name. Such fact shows that the disputed domain name was registered in bad faith (see WIPO Overview 3.0, section 3.2.2).
The evidence submitted shows that the disputed domain name is being used by the Respondent in connection with a website providing sponsored links to TV and radio sport programs, presumably on a “pay‑per-click” basis. Applying the comments of numerous other panelists (see L’Oreal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623; Deutsche Telekom AG v. Keyword Traffic, WIPO Case No. D2005-0443; Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430; Associazione Radio Maria v. Mr. Hong Hee Dong, WIPO Case No. D2005-0062; Micro Electronics Inc. v. J. Lee, WIPO Case No. D2005-0170), the Panel finds that such a use does not constitute a bona fide offering of goods or services and that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website (and hence divert Internet traffic) by creating a likelihood of confusion with the Complainant’s Trademark.
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 <rmcsport.com> be transferred to the Complainant.
Date: March 15, 2019