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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TELEVISION FRANCAISE 1 v. Julienne (Technologies Futures 1)
Case No. D2000-1589
1. The Parties
The Complainant is Tйlйvision Française 1, a French liability company, registered Siren 326 300 159, 1 Quai du Point du Jour, 92656 BOULOGNE BILLANCOURT CEDEX, France. The Complainant’s representative is E- LEX CONSEIL, 68 rue Pierre Charron, 75008 Paris, France. The counsel in charge of the file is Mr. Eric SCHAHL.
The Respondent, current owner of the domain name at issue, according to a Wwhois search dated December 20, 2000, is Julienne (Technologies Futures 1), 19 rue de la Harpe, 27000 EVREUX France, whose administrative, Technical and Billing contact is Mr. Sylvain JULIENNE. No representative has acted on behalf of the Respondent in this administrative proceeding. The Respondent has taken no part in the proceeding, nor a lawyer or other agent represents him.
2. The Domain Name and Registrar
The dispute concerns the domain name <tf1.net>. The Registrar with which the domain name is registered is Network Solutions Inc, 505 Huntmar Drive - HERDON, VIRGINIA 20170, UNITED STATES OF AMERICA.
3. Procedural History
A Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on November 17 and 21, 2000, respectively in electronic format and in hardcopy.
On November 17, 2000, the acknowledgement of receipt of the Complaint and a request for Registrar verification were sent. The answer to that request was received from Network solutions Inc, on November 21, 2000.
On November 21, 2000, the notification of the Complaint took place and the administrative proceeding began. The compliance with the formal requirements of the Policy, Rules and Supplemental Rules has been checked. The Complainant has made the payment in the required amount to the Center.
The Respondent should have sent his response before December 10, 2000 but the Center did not receive any response within this time limit.
On December 11, 2000, the notification of Respondent Default was sent by e-mail.
The sole Panelist accepted his appointment on December 12, 2000, and submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
On December 13, 2000, the sole Panelist received from the Center the hard copy of the file.
This dispute is within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute. The registration agreement pursuant to which the domain name was registered incorporates the Policy. The domain name was registered on November 20, 1998.
As the language of the domain name registration agreement is the English language and as the Complainant has filed its complaint in English, the proceeding will be conducted in English, pursuant to paragraph 11 (a) of the Rules.
The decision is issued within the time limit fixed by December 25, 2000.
4. Factual Background
The following facts have not been contested:
a) The Complainant has rights on several trademarks and namely on the following one:
- Word trademark " TF1" n° 182 133 dated 29 November 1974, covering classes 1 to 42;
- Device trademark "TF1" n° 970 083 dated 30 November 1988 covering classes 1 to 42;
- Word trademark "TF1.COM" n° 95/598 872 dated November 23, 1995 covering classes 9, 16, 28, 35, 38, 41 and 42;
The goods and services distinguished by the trademarks above are mainly "Communication services" as well as "telecommunication services" (class 38) and related goods and services such as "TV networks", "news agencies, TV broadcasting, communications by telegrams or by phone, message sending, telegrams sending, teleprinting" (class 38), "prospectuses" (class 16) or "advertisement and commercial management" (class 35).
Besides, the Complainant is the holder of the domain names: "tf1.fr" and "tf1.com".
(b) The Respondent registered on November 20, 1998, the domain name: "tf1.net".
5. Parties’ Contentions
Complainant states in its own words:
The contested domain name is identical to the trademarks of the complainant.
Therefore, their reproduction for identical services such as services of class 38 (communications services) constitutes an infringement of the prior marks of the Complainant to its detriment, in the sense of articles L.716-1, L. 713-2 and L. 713-3 of the French Intellectual Property Code.
The Complainant points out that the trademark " tf1", which is also the commercial name or tradename of the Complainant, is a well-known mark in various fields: news, sports, shopping, TV network, movie and also on the Website TF1.fr to take a look of the widespread panel of services and activities launched by TF1, not only in France but internationally.
Moreover, complainant points out also that the TF1 network exists and has been known for more than 40 years. It is a terrestrial network broadcasting free-access programs nationwide 24 hours a day. TF1 is built into a diversified media group with annual revenues of 2 billion of USD. TF1’s 35 % audience share means it’s the most popular channel in France.
Finally, the Complainant says that TF1 is one of the most powerful private television network in Europe and TF1 website (www.tf1.fr) which can be checked all around the world, has average 18 million hits a month this year; To enforce its position on the web, the group TF1 International expects to invest for 150 million of French francs this year.
Thus, the Respondent could not ignore that he registered a domain name which is the identical reproduction of the Complainant’ trademark and of its trademarks as the Respondent is a French citizen; and the use of the trademark "TF1" for other services, according to article L.713-5 of the French Intellectual Property Code, engages the civil liability of the Respondent.
The Respondent has no rights on the domain name, nor interest to this domain name as it does not correspond to its corporate name and the Respondent does not own a corresponding trademark, at least to the knowledge of the Complainant.
The domain name has been registered in bad faith. The Complainant initiates proceedings against the Respondent, in order to prevent the Respondent from damaging TF1 rights and notoriety.
The complainant states that when it noticed the existence of the domain name at issue, by registered letter, dated July 30, 1999, with acknowledgement of receipt, to warn him that his registration of the domain name "TF1.net" constituted an infringement of the marks of the Complainant and to ask Mr. JULIENNE to transfer the ownership of the contested domain name to the Complainant. Mr. JULIENNE informed the Complainant that he refused to transfer the domain name concerned.
Mr. JULIENNE did not react any more and kept silent.
Finally, the Complainant decided to bring an action against Mr. JULIENNE on August 27, 1999 for trademark infringement and unfair competition. The French Court, in a judgment dated on November 30, 1999, said that the Respondent could not ignore the existence of the trademark TF1 because of its notoriety and that the Respondent acted in bad faith.
As from this judgment, the respondent knew the trademark TF1 belonging to the Respondent and acted with bad faith.
In the light of administrative panel Decisions of the Center, D2000-0003 and 0055, the passive holding in relation to a domain registration can, in certain circumstances, constitute a domain name used in bad faith.
The Respondent did not file any Response to the Complaint and was notified of its default on December 11, 2000 without any later reaction.
6. Discussion and Findings
Paragraph 15 (a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
"A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it seems applicable".
Paragraph 4(a) of the Policy states that, for a complaint to be granted, the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
(ii) that the respondent has no rights or no legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and used in bad faith.
The Complainant has not been licensed, contracted or otherwise permitted by the Respondent in any way to use the "TF1" mark or to apply for any domain name incorporating the "TF1" mark, nor has the Complainant acquiesced in any way to such use or application of the "TF1" mark by the Respondent.
Indeed, at no time did the Respondent have authorization to register the domain name "TF1.comTf1.net" or any of the other "TF1" domain names listed above.
There is no evidence that the Respondent’s use, or demonstrable preparations to use, the domain name "TF1.comTf1.net" is in connection with a bona fide offering of goods or services.
Since the registration of the domain name on November 20, 1998, it seems that no website has been or is accessible by using the domain name "TF1.comTf1.net", nor does the Respondent appear to have any other online location with respect to this domain name.
There is no evidence to show the Respondent, as either an individual, business, or other organization, has been or is commonly known by the domain name "TF1.comTf1.net" or has acquired any trademark or service mark rights in the domain name.
There is no evidence to show the Respondent is making a legitimate non-commercial or fair use of the domain name "TF1.comTf1.net", without intent for commercial gain misleadingly to divert consumers or to tarnish the marks at issue so as to create an impression of association with the Complainant.
1. Identity or similarity
The prior trademarks of the Complainant "TF1" are identical to the domain name "TF1.net" registered by the Respondent.
In addition, the trademarks of the Complainant have been filed to protect at least services in classes 38 and 42 and it cannot be contested that domain names are intended for communication activities.
On that ground the registration of the domain name at issue could be considered as an infringement of the above French trademarks n° 182 133, n° 970 083, n° 95/598 872. Moreover, the Complainant has been using the "TF1" mark for several years and filed the first mark "TF1" on November 29,1974, in the area of communication, advertising, printing, editing and is using the name "TF1" through its website.
Finally, it can be said that "TF1" is a well-known mark, which could be protected according to article L. 713-5 of the French Intellectual Property Code.
Thus, the domain name "TF1.net" generates confusion with the marks of the Complainant.
2. Rights or legitimate interests of the Respondent in respect of the domain name.
The registrant of the domain name at issue has not filed any Response to the Complaint and then has not alleged any facts or elements to justify prior rights or legitimate interest in the said domain name.
Nevertheless, before the beginning of the present administrative proceeding, Mr. JULIENNE duly informed by the complainant, refused to transfer the domain name "TF1.net", because he assets that this domain name has been registered regularly and in good faith.
Moreover since the judgement date, for more than one year, Mr. JULIENNE did not transfer the domain name "TF1.net" to the complainant.
The Panel finds that Mr. JULIENNE attitude reveals and recognizes clearly that Mr. JULIENNE was quite aware that he was not entitled to register the said domain name. Thus the Panel concludes that the Respondent had no rights or legitimate interests, within the meaning of paragraph 4(a)(ii) and (c)(i-iii) of the Policy to register a domain name consisting of the well known trademark of a third party.
3. Registration and use in bad faith
The Policy (paragraph 4(b)), indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith. Among these circumstances are (1) that the domain name has been registered or acquired by a respondent "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark (…) for valuable consideration in excess of (respondent’s) documented out-of-pocket costs directly related to the domain name"; (2) that a respondent has registered the domain name "in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that (the respondent has) engaged in a pattern of such conduct (…).
The Complainant informed Mr. JULIENNE by registered letter of August 29, 1999 of its trademark infringement.
Mr. JULIENNE refused to transfer the domain name "TF1.net", afterwards the Respondent kept silent.
Despite of the Judgement of the French Civil first Instance Court of November 30, 1999, it seems that the Respondent did not react any more.
Thus the Panel concludes that the domain name was registered in bad faith.
The Panel agrees with the submissions of the Complainant articulated above.
The Panel determines that the domain name "TF1.comTf1.net" is identical to the Complainant’s trademark "TF1". Accordingly, the Panel considers that a reader of the domain name would be confused into thinking that the domain name is associated with the Complainant, namely because the notoriety of the said name.
The Panel determines that the Respondent has no right or legitimate interest in respect of the domain name for the following reasons:
(a) The domain name bears no relationship to any business or other activity of the Respondent.
(b) The mark "TF1" is not one that the Respondent would legitimately choose in the context of provision of goods, services or information via a website unless seeking to create an impression of an association with the Complainant.
The Panel further determines that, in accordance with paragraph 4(b)(ii) of the ICANN Policy, the Respondent has registered and is using the domain name in bad faith.
The Complainant’s trademark "TF1" is long-established and widely known. In the absence of evidence or even an assertion by the Respondent to the contrary, knowledge of the Complainant’s rights in the trademark can be imputed to the Respondent at the time of its registration of the domain name. When this imputed knowledge is combined with the fact that the Respondent has no right or legitimate interest in the domain name, the fact that the Respondent has engaged in conduct of the type described in paragraph 4(b)(ii) of the Uniform Policy, and the fact that the Respondent provided no evidence or even an assertion of a good faith use which it could make of the domain name and because it seems that the Respondent did not conform to the judgement of the French Court of November 30, 1999, so for more than one year, there are sufficient grounds to persuade the Panel that the domain name "TF1.comTf1.net" was registered and is being used by the Respondent in bad faith.
Moreover, besides, the Panel considers, according to previous Decisions of he Center, that the notion of "use in bad faith" must not be limited to positive actions and that the passive holding in relation to a domain name registration can, in certain circumstances, constitute also another ground of use of a domain name in bad faith (see D2000-0003, D2000-0055, D2000-0098).
Although there is no active website corresponding to the domain name at issue, the Panel finds that the Respondent’ s silence and attitude constitute the use in bad faith of the said domain name.
For the above reasons, the Panel decides as follows:
The Panel decides based on its finding that the Respondent in default has engaged in abusive registration of the domain name "TF1.net", for the foregoing reasons:
(a) that the domain name registered by the Respondent is identical to the trademark in which the Complainant has rights;
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) that the Respondent’s domain name has been registered in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the domain name "tf1.net" be transferred to the Complainant TELEVISION FRANCAISE 1.
Dated: December 21, 2000