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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PATHE MARQUES v. Domain Administrator, Fundacion Privacy Services LTD

Case No. D2021-1066

1. The Parties

The Complainant is PATHE MARQUES, France, represented by Cabinet Desbarres & Staeffen, France.

The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.

2. The Domain Name and Registrar

The disputed domain name <pathewebmail.com> is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2021. On April 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2021, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2021.

The Center appointed Charles Gielen as the sole panelist in this matter on May 25, 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

The Complainant is a company incorporated under the laws of France since 1999. It belongs to the Pathé Group, which is a major film production and distribution company, owning a number of cinema chains through its subsidiary “Les Cinémas Pathé Gaumont” and television networks across Europe. Today the Pathé Group is France’s number one film studio and the leading cinema network in continental Europe, with 133 cinemas and 1339 screens in 2019. The Pathé Group has a revenue of 946 million Euros, with 4,896 employees in 5 countries in 2019. The Complainant owns a European Union trade mark PATHE with registration No. 008463391 registered on June 28, 2010 for goods in classes 9, 16, 25 and 28 and services in classes 35, 38, 41, 42, and 43.

Furthermore, the Complainant holds the domain name <pathe.com>.

The disputed domain name <pathewebmail.com> was created on March 15, 2021 and directs to a website showing a parking page containing various commercial or sponsored links to third party websites.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the trade mark PATHE is widely used and is well known, at least in France.

The Complainant argues that the disputed domain name contains the Complainant’s registered trade mark PATHE in combination with the descriptive term “webmail” which means that the word “pathe” is the dominant element of the disputed domain name. Therefore, the disputed domain name is confusingly similar to the Complainant’s trade mark.

Furthermore, the Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant gives the following reasons for this. First, the Complainant has not granted any authorization to anyone, which includes the Respondent, to register domain names containing the Complainant’s trade mark or otherwise make use of its mark. Second, there is no indication that the Respondent is commonly known by the disputed domain name. Third, it appears that the Respondent is not using nor preparing to use the disputed domain name in connection with a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the disputed domain name. Fourth, the disputed domain name directs to a parking page containing various headings, related to cinema and movies. The Respondent likely earns pay-per-click revenue in relation to the links on the parking page. Such activity clearly does not provide a legitimate interest in the disputed domain name. Fifth, the Complainant argues that the registration and use of its trade mark PATHE precede by many years the Respondent’s registration of the disputed domain name.

Finally, the Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. There are several reasons for this. First, the disputed domain name is registered through a privacy protection service that masks the identity of the Respondent. Second, the Complainant contends that the close proximity between the disputed domain name <pathewebmail.com> and <pathe.com> necessarily leads to a very high risk of confusion between them by the consumer. Moreover, as the website <pathe.com> attracts a lot of Internet users, the website using the disputed domain name is likely to divert a large number of them, which represents a real prejudice for the Complainant. Third, the Respondent uses the disputed domain name in connection with a website displaying links to services in the field of cinema and movies. By clicking on the headings on this website, Internet users are directed to websites of companies offering services which are competing with the services offered by the Complainant. The Complainant argues that the disputed domain name in connection with a parking page with links relating to the Complainant’s industry has thus been used with the view of attracting Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark. Fourth, with respect to the registration of the disputed domain name, the Complainant contends that the Respondent must have been aware of the Complainant’s well known trade mark when he registered the disputed domain name.

B. Respondent

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

6. Discussion and Findings

The Panel is of the opinion that the Complainant’s contentions are reasoned and that the disputed domain name should be transferred to the Complainant pursuant to the Policy.

A. Identical or Confusingly Similar

The Complainant proves that it has rights in the trade mark PATHE. The term “pathe” in the disputed domain name is identical to this trade mark. The fact that the disputed domain name contains the term “webmail” does not alter the conclusion that the disputed domain name is confusingly similar to the trade mark PATHE. Clearly the term “pathe” in the disputed domain name is the first word and therefore the dominant element. The added suffix “.com” does not change the finding that the disputed domain name is confusingly similar to the trade mark, since the “.com” is understood to be a technical requirement. In making the comparison between the trade mark and the disputed domain name, the generic Top-Level Domain (“gTLD”) “.com” is therefore disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain name is confusingly similar to the Complainant’s trade mark.

Therefore, the requirement under paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. First, the Respondent did not show that it owns any rights to the name “pathe” nor that is has any licence from the Complainant to use its trade mark. Second, the Respondent did not argue that it is known, or that it has ever been known under the name “pathe”. Third, there is no bona fide offering of goods or services attached to the disputed domain name by the Respondent. On the contrary and as described by the Complainant, the website to which the disputed domain name resolves is a parking page containing various headings, related to cinema and movies. The Respondent likely earns pay-per-click revenue in relation to the links on the parking page. Such activity clearly does not provide a legitimate interest in the disputed domain name. The Panel is convinced that the Respondent has deliberately used the trade mark PATHE to create an impression of association with the Complainant. Finally, the Respondent has not come forward with evidence of any rights or legitimate interests and the Panel does not find any in the present record.

In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The Panel is of the opinion that the disputed domain name was registered and is being used in bad faith. With respect to the registration, the Panel finds that it is plausible that the Respondent must have been aware of the Complainant’s earlier trade mark when he registered the disputed domain name. In the cinema business, the trade mark PATHE is a well known trade mark and as the Complainant argues, it is in use for a long time. Furthermore, the Panel is of the opinion that the Respondent, by using the disputed domain name that is confusingly similar to the Complainant’s trade mark PATHE, will attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trade mark and its business. In addition, the parking page, to which the disputed domain name directs, contains pay-per-click headings that all direct to websites of businesses offering services in the cinema industry. The Panel moreover notes that the addition of “webmail” to the Complainant’s mark creates the clear potential for fraud. The conclusion therefore is that the disputed domain name has been registered and is being used in bad faith.

The Panel therefore considers the requirement of paragraph 4(a)(iii) of the Policy to be met.

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 disputed domain name <pathewebmail.com> be transferred to the Complainant.

Charles Gielen
Sole Panelist
Date: June 8, 2021

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