WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Channel Four Television Corporation v. Perfect Privacy, LLC / Nathan Synne
Case No. D2020-0564
1. The Parties
The Complainant is Channel Four Television Corporation, United Kingdom, represented by Stobbs IP Limited, United Kingdom.
The Respondent is Perfect Privacy, LLC, United States of America / Nathan Synne, United States of America.
2. The Domain Name and Registrar
The disputed domain name <film4production.com> is registered with Register.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2020. On March 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 9, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 14, 2020.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2020.
The Center appointed Torsten Bettinger as the sole panelist in this matter on April 24, 2020. 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.
On April 24, 2020, in response to the Notification of Panel Appointment, the Center received a communication from the email address “[…]@film4production.com” stating: “I did not get this for free man, And i also gt my reasons. I need you help then you can help me raise the funds needed so i can comply. Please note this is request i asked of you , I will submit the domain if you can help me with this 2000usd. Do let me know.”
4. Factual Background
The Complainant is a British public-service television network and the owner and operator of the FILM4 and CHANNEL 4 brands and trademarks.
Film4 is the Complainant’s feature film division, contributing to the development and co-financing of films.
The Complainant provided evidence of the following trademarks for “FILM4” and “CHANNEL 4”:
- European Union Trade Mark Registration No. 7034978 FILM4, registered on September 10, 2012;
- United Kingdom Trade Mark Registration No. 2427528 (series mark) FILM4, registered on July 19, 2006;
- European Union Trade Mark Registration No. 7034945 CHANNEL 4, registered on May 4, 2009.
The disputed domain name was registered on October 12, 2019.
The Respondent used the disputed domain name to send phishing emails using the address “…@film4production.com” misrepresenting himself as the Complainant.
5. Parties’ Contentions
The Complainant submits that its branding has been focused on the numeral “4” since the conception of Channel 4 in 1982 and the launch of its Film4 channel in 2010 and that the Complainant has accrued significant goodwill in the CHANNEL 4 and FILM4 brands.
The Complainant operates several websites, including “www.channel4.com”, “www.4music.com”, which regularly provides new entertainment, music and videos to its substantial audience.
The Complainant provided evidence that it has won International Awards in relation to its television channels, broadcasting, films, documentaries and all-round service.
With regard to the requirement of identity or confusing similarity between the trademark and the disputed domain name pursuant to paragraph 4(a)(i) of the Policy, the Complainant asserts that its trademark FILM4 is widely known and that the term “production” is merely descriptive and does nothing to distinguish the disputed domain from the Complainant’s trademark, but reinforces a false connection with the Complainant, as Film4 Productions is a film production company owned by the Complainant which utilizes the domain name <film4productions.com>.
With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submitted that:
- the Respondent is not known by the name “Film4”, and has no trademark registrations or rights in this name.
- the Respondent is not using the disputed domain name in connection with a bona fide or legitimate offering of goods / services
- a simple check on Google for FILM4 would have revealed the Complainant and that it is therefore impossible that the Respondent was not aware of the Complainant at the time the disputed domain was registered.
Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that:
- in view of its substantial registered and unregistered rights in the FILM4 trademarks and brand, as well as its significant Internet presence and repute within the media and entertainment industry, there can be no good faith reason for the registration of a domain name that wholly contains the FILM4 trade mark;
- the Respondent is using the disputed domain name to facilitate the dissemination of communication under the email handle “@film4production.com” that target individuals responding to Channel 4 job applications online, by requesting personal information as well as high value items, as part of the job application process;
- despite the Registrar’s suspension of the disputed domain name on January 31, 2020, following the Complainant’s Notice and Takedown Request, the Respondent sent e-mail communication from the email “…@film4production.com”, to a third party, informing the individual that they had been appointed a position at the Complainant’s Film4 division.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered trademarks FILM4 in the United Kingdom, the European Union and many other countries prior to the registration of the disputed domain name on October 12, 2019.
It is well established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the trademark is used or other marketing and use factors usually considered in trademark infringement cases. (See section 1.1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In this case, the disputed domain names only differs from the Complainant’s trademark FILM4 by the addition of the descriptive term “production”.
The addition of merely descriptive wording to a trademark in a domain name does not prevent a finding of confusing similarity under the first element of the UDRP. (See, for instance, Facebook, Inc. v. Sleek Names, SL Names, VSAUDHA, WIPO Case No. D2015-0547 (<bestfacebookstatus.com> et al.) (“The disputed domain names contain as a first and/or dominant element the Complainant’s famous trademark FACEBOOK, combined with a variety of descriptive terms, for example, “account”, “password”, “hacker”, “analytics”, “survey” et cetera. The addition of these terms do not serve to distinguish the disputed domain names in any material way.”); see also, for instance, Dropbox, Inc. v. Mohd Shariq, Techinspire, WIPO Case No. D2016-1194 (<dropbox-support.com> et al.) (“The domain name <dropbox-support-number.com> consists of the Complainant’s registered mark DROPBOX plus the generic words ‘support’ and ‘number’ separated by hyphens. The addition of these generic words and hyphens do not serve to distinguish the domain names from the Complainant’s DROPBOX marks and the Panel finds that the domain names are confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.”); see also section 1.8 of WIPO Overview 3.0).
If anything confusing similarity is reinforced by the addition of the term “production” as this term is strongly related to the Complainant and its activities by the fact that Film4 Productions is a film production company owned by the Complainant which utilizes the domain name <film4productions.com>.
Finally, it has been long established under UDRP decisions that the specific generic Top-Level Domain (“gTLD”) designation such as “.com”, “.net” “.org” is typically not to be taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable gTLD suffix may itself form part of the relevant trademark (see section 1.11 of WIPO Overview 3.0).
For the foregoing reasons the Panel concludes that the disputed domain name <film4production.com> is confusingly similar to the Complainant’s trademark FILM4 in which the Complainant has exclusive rights.
B. Rights or Legitimate Interests
A respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [the Respondent] are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Complainant asserted that the Complainant has not authorized the Respondent to use its trademarks FILM4 or the disputed domain name, and provided evidence that the disputed domain name was used to sent email communication from the email “…@film4production.com”, to a third party, informing the individual that they had been appointed a position at the Complainant’s Film4 division.
These assertions and evidence are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
The Respondent chose not to contest the Complainant’s allegations and has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests. The Panel therefore accepts these allegations as undisputed facts and concludes that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to the second element of the Policy set forth by paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Complainant holds trademark registrations for FILM4 the United Kingdom, the European Union and many other countries since at least 2006.
The Complainant’s trademark FILM4 is distinctive and widely known in connection with the Complainant’s Film4 feature film division.
This and the fact Film4 Productions is a film production company owned by the Complainant which utilizes the domain name <film4productions.com> makes it inconceivable that the Respondent coincidentally selected the disputed domain name without any knowledge of the Complainant and its trademark FILM4.
The Panel therefore concludes that the Respondent registered the disputed domain name in bad faith.
Based on the record in this proceeding there is also strong evidence that the Respondent used the disputed domain name <film4production.com> to send phishing emails using the address “…@film4production.com” misrepresenting himself as the Complainant.
Prior panels deciding under the Policy have consistently held that use of a domain name for phishing related activities is inherently in bad faith. (See Yahoo Holdings, Inc. v. Registration Private, Domains By Proxy, LLC / Technonics Solutions, WIPO Case No. D2017-1336 (<yahoodomainsupport.com>) (“Phishing is bad faith use under the Policy. The examples listed in paragraph 4(b) of the Policy are ‘without limitation’. “‘Phishing’ is a form of Internet fraud that aims to steal valuable information such as credit cards, social security numbers, user ids, passwords, etc.”); see also Confédération Nationale du Crédit Mutuel v. Daniel Delcore, WIPO Case No. DLC2009-0001. The use of a disputed domain name in a phishing scheme “is in itself evidence that the disputed domain name was registered and is being used in bad faith.” BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364.).
The Panel therefore concludes that the Respondent has also used the disputed domain name in bad faith.
For the above, the Panel finds that the Respondent’s registration and use is a clear-cut case of cybersquatting and that therefore the Complainant has also satisfied its burden under paragraph 4(a)(iii) of the Policy.
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 <film4production.com> be transferred to the Complainant.
Date: May 11, 2020