DECISION

Hachette Filipacchi Presse v. Bensadoun Fabien

Claim Number: FA0105000097131

PARTIES

Complainant is Hachette Filipacchi Presse, Paris, FR (“Complainant”) represented by Eric Dupont, of Markplus International.  Respondent is Bensadoun Fabien, FR (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <tele7jours.tv> registered with dotTV Corporation.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 2, 2001; the Forum received a hard copy of the Complaint on May 3, 2001.

On May 9, 2001, dotTV Corporation confirmed by e-mail to the Forum that the domain name <tele7jours.tv> is registered with dotTV Corporation and that Respondent is the current registrant of the name.  dotTV Corporation has verified that Respondent is bound by the dotTV Corporation registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On May 10, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 30, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@tele7jours.tv by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On June 4, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant urges that:

The <tele7jours.tv> is confusingly similar to Complainant’s registered trademarks; that Respondent has no rights or legitimate interests in the <tele7jours.tv> domain name; and that Respondent registered and used the <tele7jours.tv> domain name in bad faith.

B. Respondent did not file a response in this matter.

FINDINGS

Since 1960, Complainant has used its TELE 7 JOURS mark in connection with a periodical related to the television industry.  Complainant is the owner of numerous TELE 7 JOURS trademarks and service marks in France and throughout the world, the earliest of which was registered on August 12, 1987 as French Trademark Registration N°1.434.345.

Complainant’s magazine, in France, is the most popular press magazine and the best seller of its category and is distributed in numerous countries throughout the world.  In the period between 1990 and 2001, Complainant spent between FF 5.100.000 and FF 5.900.000 each year for the promotion of its TELE 7 JOURS magazine.

Since 1995, Complainant has also used its TELE 7 JOURS mark in connection with its online magazine located at <tele7hours.com>.  In January, 2001 the <tele7jours.com> website registered 1,263,017 visits, and Complainant spent FF 500.000 for the promotion of its website in 1999 alone.

Respondent registered the <tele7jours.tv> domain name on September 17, 2000.  The contact information for the disputed domain name indicates that Respondent also resides in France.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “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 deems applicable.”

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical to and/or Confusingly Similar

The <tele7jours.tv> domain name is identical to Complainant’s famous TELE 7 JOURS registered family of marks.  Neither the lack of space between the words within the domain name, nor the addition of the “.tv” is relevant for purposes of finding that the disputed domain name is identical to the Complainant’s registered mark.  See Am. Golf Corp. v. Perfect Web Corp., D2000-0908 (WIPO Oct. 23, 2000) (finding that the domain name <americangolf.net> is identical and confusingly similar to Complainant’s AMERICAN GOLF marks); see also Football Ass’n Ltd. v. UKIP, D2000-1359 (WIPO Dec. 15, 2000) (finding that domain name <facup.com> is clearly identical to the FA CUP trademark belonging to Complainant). 

The <tele7jours.tv> domain name is therefore identical to the Complainant’s TELE 7 JOURS family of marks, and the showing necessary under Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Respondent has failed to come forward to demonstrate any rights or legitimate interests in the <tele7jours.tv> domain name.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (stating that “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent any evidence of preparation to use the domain name for any legitimate purpose, the burden of proof lies with the Respondent to demonstrate that he has rights or legitimate interests). 

Furthermore, there is a presumption that Respondent has no rights or legitimate interests with respect to the domain name in dispute where Respondent fails to submit a response.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that “Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names”).

Respondent’s registration and passive holding of the <tele7jours.tv> domain name fails to demonstrate any use in connection with a bona fide offering of goods or services pursuant to Policy 4(c)(i).  See Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“…merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).

No evidence in the record shows, and Respondent has not come forward to establish, that Respondent is commonly known by the <tele7jours.tv> domain name as is required under Policy ¶ 4(c)(ii).  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Furthermore, there is no evidence that demonstrates Respondent is making a legitimate noncommercial or fair use of the <tele7jours.tv> domain name.  Under the definitions of  Policy ¶ 4(c)(iii), Respondent is engaged in passive holding of the domain name. 

The Panel therefore concludes that Respondent does not have any rights to or legitimate interests in the <tele7jours.tv> domain name.  Complainant has met the requirements of Policy ¶ 4(a)(ii) of showing that Complainant has rights to and legitimate interests in the mark contained within the domain name registered by Respondent and that Respondent has no such rights or interests.  See Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names).

Registration and Use in Bad Faith

Respondent’s passive holding of the disputed domain name is evidence of bad faith.  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

Furthermore, bad faith is evidenced by the obvious connection the <tele7jours.tv> domain name has with the Complainant’s enterprise.  Based on the totality of the circumstances, Respondent’s registration and passive holding of the disputed domain name supports a finding of bad faith.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact “that the Respondent chose to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).

The Panel finds that Respondent registered and used the domain name in issue in bad faith. Policy ¶ 4(a)(iii).

DECISION

Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

Accordingly, it is Ordered that the <tele7jours.tv> domain name be transferred from Respondent to Complainant.

Honorable Carolyn Marks Johnson (Ret), Panelist

Dated: June 13, 2001.

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2001/1141.html