WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Television Francaise 1 v. Privacy Service LTD c/o Dynadot / Heng Zhong

Case No. D2020-3483

1. The Parties

Complainant is Television Francaise 1, France, represented by AARPI Scan Avocats, France.

Respondent is Privacy Service LTD c/o Dynadot, United States of America (“United States”)/ Heng Zhong, United States.

2. The Domain Name and Registrar

The disputed domain name <tf1replay.net> (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2020. On December 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 28, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 29, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 4, 2021.

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 Respondent of the Complaint, and the proceedings commenced on January 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 3, 2021.

The Center appointed Clive L. Elliott Q.C, as the sole panelist in this matter on February 17, 2021. 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

Complainant (known as TF1) is a French limited partnership having its head office in Boulogne, Billancourt, France. It is a leading European company in the field of production and broadcasting TV programs. It was founded in 1974 and operates the first and oldest television channel in France.

In 1987 Complainant integrated the TF1 Group, which includes several generalist and thematic television channels, including TF1, as well as production and distribution companies for the film and television industries.

Since then, it has expanded in France and internationally, in particular by producing and broadcasting original TV programs in the fields of entertainment, current affairs and fiction. Today, TF1 is the most watched television channel in Europe.

TF1 has also been developing its digital services on its online platforms, notably “MYTF1”, allowing access to replays as well as video-on-demand services.

Complainant is the owner of a number of trade mark registrations for the TF1 word and device marks across multiple jurisdictions, including, inter alia:

(“Complainant’s Marks”).

Complainant also owns the following domain names:

1. <tf1.com>, registered April 2, 1998;
2. <tf1.fr>, registered December 3, 1995;
3. <fg1.eu>, registered March 9, 2006; and
4. <tf1replay.fr>, registered September 8, 2016

Its main website at “www.tf1.fr”, allows Internet users to access a wide range of content in replay.

Respondent is an individual based in the United States. According to the publicly available WhoIs, the Domain Name was registered on September 26, 2020. The Domain Name currently redirects to a parking page containing links directly related to Complainant’s core business with use of its trade marks, such as “REPLAY MYTFI”, “TF1 REPLAY” or “REGARDER FILM”.

5. Parties’ Contentions

A. Complainant

Complainant asserts that the Domain Name is confusingly similar to Complainant’s Marks and domain names. Complainant argues that the Domain Name incorporates the TF1 trade mark in its entirety, with the addition of the term “replay”, which is descriptive of the replay services provided by Complainant through its online websites. Complainant claims that the addition of the term “replay” increases the likelihood of confusion with Complainant’s Marks since it is directly related to its core business in the field of audiovisual content broadcasting.

Further, Complainant claims that Respondent has no rights or legitimate interests in respect of the Domain Name, and advises that there is no link or authorization given by Complainant to Respondent. Further, Complainant states that Respondent is not related to Complainant’s business, is not one of its distributors and does not carry out any activity for or have any business with it.

Complainant contends that Respondent has registered the Domain Name in bad faith as it is unlikely that Respondent was unaware of existence of Complainant and its trade marks. Several of Complainant’s Marks were registered many years before registration of the Domain Name. Complainant has been actively using Complainant’s Marks in France and abroad since the 1980s and has enjoyed a worldwide reputation for its services. Further, Complainant points out that the term “TF1” is not a common word in any language, and they are the initials of Complainant’s name.

Complainant suggests that the Domain Name has been registered for the purpose of taking advantage of Complainant’s reputation and Complainant’s Marks for fraudulent purposes, by attracting Internet users to its website to obtain profits via sponsored links.

Complainant notes that the whilst the Domain Name currently resolves to a parking page containing sponsored links directly related to Complainant’s activity, Respondent has also put the Domain Name on sale for USD 737.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant claims that TF1 is the most watched television channel in Europe and that not only is this Complainant developing a range of digital services on its online platforms, but one of its services “MYTF1”, allows customers access to replays as well as video-on-demand services. Complainant’s Marks, which have been both registered and used in the course of trade, contain as a dominant and distinctive element the letters/numeral “TF1 ”. The Domain Name wholly incorporates the letters/numeral “TF1” along with the dictionary word “replay”. The “TF1” element of Complainant’s Mark is clearly recognizable in the Domain Name. The addition of a dictionary word, particularly one so apt for use in relation to digital services comprising replays, does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on elected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

The Domain Name is confusingly similar to Complainant’s Mark. Accordingly, the first ground under the Policy is made out.

B. Rights or Legitimate Interests

Complainant asserts that the Domain Name currently redirects to a parking page containing links directly related to Complainant’s core business with use of its trade marks, using texts such as “REPLAY MYTFI”, “TF1 REPLAY” or “REGARDER FILM”. That suggests that Respondent is benefiting, either directly or indirectly, from click through monetization/sponsored links. Accordingly, Complainant has put forward a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.

Further, Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name, and that there is no link or authorization given by Complainant to Respondent. In addition, Complainant alleges that Respondent is not related to Complainant’s business, is not one of its distributors and does not carry out any activity for or have any business with it.

In the absence of any attempt to challenge or refute these allegations, the Panel concludes that the Domain Name was not registered and has not been used for any legitimate or fair purpose. Accordingly, the second ground under the Policy is made out.

C. Registered and Used in Bad Faith

In terms of bad faith, Complainant contends that Respondent has registered the Domain Name in bad faith, given Complainant’s significant worldwide reputation and the fact that term “TF1” is not a common word in any language, apart from being the initials of Complainant’s name, and that Respondent either knew or must have known this.

Further, Complainant argues that the Domain Name was registered for the purpose of taking advantage of Complainant’s reputation and Complainant’s Mark for fraudulent purposes, by attracting Internet users to its website to obtain profits via sponsored links.

Both of these arguments have merit and are accepted. Complainant has therefore clearly established the third ground under the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <tf1replay.net>, be transferred to the Complainant.

Clive L. Elliott Q.C.
Sole Panelist
Date: March 4, 2021