WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tele-Shopping v. NETSCO SAS, NETSCO LLC

Case No. DEU2021-0018

1. The Parties

The Complainant is Tele-Shopping, France, represented by Inlex IP Expertise, France.

The Respondent is NETSCO SAS, NETSCO LLC, France.

2. The Domain Name, Registry and Registrar

The Registry of the disputed domain name <teleachat.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2021. On May 12, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On May 17, 2021, the Registry 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 .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).

In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 20, 2021. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was June 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2021.

The Center appointed Isabelle Leroux as the sole panelist in this matter on July 7, 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 ADR Rules, Paragraph B(5).

4. Factual Background

The Complainant is a French audiovisual producer, subsidiary of the French media group TF1, which produces the famous TV program “Teleshopping”, broadcasted on TF1 channel since 1987. It is now a leader in this type of television program.

The Complainant is the owner of numerous trademark rights containing the terms “tele shopping” in particular the following:

- The French word trademark “TELESHOPPING” No. 1691588, filed on September 6, 1991, designating classes 8, 9, 11, 14, 16, 20, 21, 25, 28, 29, 30, 35, 38, 41;
- The International combined trademark “ logo ” (TELE SHOPPING), No. 632859, aim at Switzerland, Monaco and Benelux, registered on March 10, 1995, designating classes 8, 9, 11, 14, 16, 20, 21, 25, 28, 29, 35, 38, 39, 41;
- The French combined trademark “ logo ” (TELESHOPPING) No. 194585030, registered on September 26, 2019, designating classes 9, 16, 35, 38, 39, 41; and
- The French combined trademark “ logo ” (TELESHOP) No. 19457225, registered on July 31, 2019, designating classes 9, 16, 35, 38, 39, 41.

The Complainant also owns the following registered domain names which contain “tele shopping”:

- <teleshopping.fr> registered on September 9th, 1997;
- <teleshopping.com> registered on June 25th, 1997;

According to the information disclosed by the EURid upon verification request of the Center, the Respondent is the company NETSCO LLC whose name is NETSCO SAS and whose address is in Paris, France. However, based on the evidence provided by the Complainant about the search result in the French Corporate Registry “Infogreffe”, there is no company incorporated under the name of the Respondent in France.

The disputed domain name was registered on July 20, 2020 and redirects to an online marketplace of the same name “Télé achat”, on which are offered for sale various types of consumer products. The website’s logo is “ logo ” containing a slogan “Produits comme vus à la tété”, which means “products as seen on television”.

In addition, on the website associated with the disputed domain name, it appears that the website is operated by a third party company called ECOM CORPORATE LTD, whose address is 272 Bath Street, G24JR, Glasgow, United Kingdom.

5. Parties’ Contentions

A. Complainant

(i) The Complainant considers that the disputed domain name is confusingly similar to its TELESHOPPING trademarks as the disputed domain name reproduces the term “tele” following by the term “achat” meaning “shopping” in French. The disputed domain name corresponds therefore to the exact French translation of the Complainant’s prior trademarks TELESHOPPING.

(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Respondent is not affiliated in any way to the Complainant. The Respondent is not commonly known under the name “Tele achat” nor does it have any rights including trademark rights on such name.

The Complainant further contends that the Respondent does not have any rights or legitimate interests to hold or use this domain name, in particular because it has voluntarily chosen to hide its identity by providing false information about its company name and address, and it uses, on the website to which the disputed domain name redirects, a logo “ logo ” imitating the Complainant’s “teleshopping” logo that has been using by the Complainant since 1990 under the following signs “ logo ”, “ logo ”, “ logo ” notably by using the same colors (blue, white and red) and replicating the same presentation. These circumstances suggest that the disputed domain name is neither used in connection with a bona fide offering of goods or/and services nor a legitimate noncommercial fair use.

(iii) The Complainant contends that the Respondent’s bad faith should be established due to the following reasons: 1) the Complainant’s company name is TELE-SHOPPING which is well known and its program of the same name has been broadcasting in France since 1987, 2) the Respondent’s identity information are false and misleading; 3) the disputed domain name is used to reproduce logos/trademarks from French famous channels including that of Complainant’s broadcast channel of TF1, without any authorization. According to the Complainant, the sole purpose of the registration is to take undue advantage of the reputation of the Complainant.

Further, the Complainant contends that the use of the disputed domain name will disrupt the Complainant’s business as the Internet users may believe that the associated website is operated by the Complainant, which creates a risk that the Respondent may be engaged in a phishing scheme aiming to deceive Internet users and make them believe that they are dealing with the Complainant regarding its online activities.

(iv) The Complainant therefore requests that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required under Paragraph B(11)(d)(1) of the ADR Rules to demonstrate the following:

A. that the disputed domain name is identical or confusingly similar to the name or names in respect of which a right or rights are recognized or established by national and/or Community law; and either
B. that the disputed domain name has been registered by its holder without rights or legitimate interests in respect of the domain name that is the subject of the Complaint; or
C. that the disputed domain name should be considered as having been registered or being used in bad faith.

A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union law Paragraph B(11)(d)(1)(i) of the ADR Rules requires that the disputed domain name be “identical or confusingly similar to a name in respect of which a right is recognized or established by national law of a member State and/or European Union law”.

The Complainant holds trademark rights in “teleshopping”.

As the addition of the extension indicating the Top Level Domain “.eu” is irrelevant in determining the similarity of the domain name to a trademark and to avoid confusion, the relevant part of the disputed domain name is therefore “teleachat”.

While the Complainant's TELESHOPPING trademark is not fully reproduced in the disputed domain name, the “tele” element of the Complainant's mark is clearly recognizable, and is combined with the term "achat", which means “purchase” in French.

Although the term “tele” is a term designating “television” in French, which may be viewed in the broader context of the Complainant’s TELESHOPPING marks, the combination of the terms “tele” and “achat” may be understood as the French translation of the term “teleshopping”.

The Complainant has further provided evidence that the disputed domain name resolves to a website whose logo “ logo ” imitates obviously the Complainant’s “TELESHOPPING” logos, i.e. “ logo ”, “ logo ”, “ logo ”, 2 squares, first one blue, second red and white rectangular below (one of which is also protected by the combined trademark “ logo ”) and that the website displays the logo of the channel TF1 on which the Complainant’s “TELESHOPPING” program is broadcaste.

Although the content of the website associated with the domain name is usually disregarded by panels when assessing confusing similarity under the first element, in some instances, panels may take note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name (see, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraphs 1.15 and 1.7 ).

Therefore, under this broader context, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s TELESHOPPING trademarks for purposes of the first element of the ADR Rules.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is sufficient that the Complainant makes a prima facie demonstration that the Respondent lacks rights or legitimate interests in the disputed domain name. The respondent in a proceeding under the ADR Rules does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating e.g., the following:

(1) prior to any notice of the dispute, the Respondent has used the domain name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparation to do so;
(2) the Respondent, being an undertaking, organization or natural person, has been commonly known by the domain name, even in the absence of a right recognised or established by national and/or European Union law;
(3) the Respondent is making a legitimate and non-commercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognised or established by national law and/or European Union law.

In this case, the Respondent has not filed any Response.

In the absence of any Response, the Panel notes that the Respondent is not known under the disputed domain name and it has not acquired any trademark rights thereon. The Panel further notes that, according to the Complainant, the Respondent does not appear to have any connection or affiliation with the Complainant, which has not licensed or otherwise authorized Respondent to use or apply for any domain name incorporating the TELESHOPPING trademarks.

The Panel also notes that the disputed domain name is being used, according to the evidence provided by the Complainant, in connection to a website allegedly selling various consumer products under a logo imitating the Complainant’s TELESHOPPING trademarks and logos and following by a slogan “Produits comme vus à la télé” (“Products as seen on television”), and that the website makes use of the sign of “TF1”, the channel on which the Complainant’s program “TELESHOPPING” is broadcasted.

A core factor in assessing potential fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5.1, WIPO Overview 3.0. In the present case, based on the evidence provided by the Complainant, the disputed domain name suggests to Internet users that the website to which it resolves may be affiliated with, sponsored, or endorsed by the Complainant and its activity, in particular, in connection with the Complainant’s “Teleshopping” television program on TF1.

The Panel thus considers that there is a clear risk of implied affiliation, which is an indication of the Respondent’s intention of misleading Internet users for commercial and financial gain.

It is further remarkable the Respondent has not replied to the Complaint, not providing any explanation connected to any of the above-mentioned circumstances or any other circumstance that may be considered as a right or legitimate interest in the disputed domain name.

All the above-mentioned circumstances lead the Panel to conclude that the Complainant has established evidence of the lack of rights or legitimate interests of the Respondent in the disputed domain name, and the second required element has been established.

C. Registered or Used in Bad Faith

The burden being on the Complainant, nevertheless the Panel may be prepared to draw certain inferences in light of the particular facts and circumstances of the case.

In this case, the Panel notes that the website “www.teleachat.eu” is an online marketplace offering for sale various types of consumer goods.

Given the generic use of the words in French “tele” and “achat”, it might be argued that the original intention of the Respondent when registering the disputed domain name, was to start a commercial activity linked to the selling of products through the television media without the idea of taking advantage of Complainant’s trademark.

However, in the absence of any Response and after having looked at the entire case file, the Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name:

- Firstly, the provision of incorrect data has been considered as previous panels as an indication of bad faith registration (Teleshopping v. Bendeler, WIPO Case No. D2004-0776). It appears from the case file that the information provided by the Respondent for the registration in terms of its company name and contact address seem to be incorrect and contrary to the company information indicated on the website associated with the disputed domain, namely “ECOM CORPORATE LTD”.

There being no inference to the contrary, the Panel is of the opinion that Respondent’s failure to provide correct data and/or to maintain it updated, is an inference of bad faith registration.

- Secondly, given the well-known character of the Complainant’s TELESHOPPING trademarks and the clear similarities between the logo of the Respondent’s website and those of the Complainant, the Respondent could not ignore the Complainant’s trademark and activity when the registration occurred.

Further, the fact that the logo of the Respondent’s website associated with the disputed domain name contains a slogan “Produits comme vus à la télé” (“Products as seen on television”) further suggests that the Respondent must know or have known the Complainant’s prior rights in the TELESHOPPING sign. Such knowledge constitutes therefore another indication of bad faith registration.

- Thirdly, the use of the sign of “TF1” channel on the associated website, without authorization, creates a false impression as to the existence of any commercial relations, affiliations and associations between the Respondent and the Complainant, as the latter is an affiliate of the TF1 group and broadcasts its “TELESHOPPING” program on the “TF1” channel. Such use would also create a risk of deceiving Internet users and making them believe that they are dealing with the Complainant.

- Finally, the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint.

Therefore, on the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the disputed domain name was very likely registered targeting the Complainant and its trademark with the intention of obtaining a free ride on their established reputation, seeking to mislead and attract Internet users to the Respondent’s website, which constitutes bad faith.

Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent both registered, and also is using the disputed domain name in bad faith under the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name <teleachat.eu> be transferred to the Complainant.

Isabelle Leroux
Sole Panelist
Date: July 19, 2021