Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Hachette Filipacchi Presse, FRANCE ("Complainant") represented by Corinne Allard Dornaletche. The Respondent is Raffledata, Encino, CA, USA ("Respondent") represented by Richard Cardrick, of Cardrick Consulting Limited.

The domain name at issue is "premiere.tv", registered with dotTV Corporation.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on January 19, 2001; the Forum received a hard copy of the Complaint on January 29, 2001.

On January 23, 2001, dotTV Corporation confirmed by e-mail to the Forum that the domain name "premiere.tv" is registered with dotTV Corporation and that the 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 February 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 26, 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@premiere.tv by e-mail.

A timely response was received and determined to be complete on February 26, 2001. Respondent submitted an additional response that was received and determined to be complete on February 27, 2001.

On March 2, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed the Hon. James A. Carmody as Panelist. The Panelist has considered the Complaint, the Response and the additional submissions by both parties.

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

Complainant, the owner of the registered trademark "PREMIERE", which it has used in connection with a multinational magazine of the same name since 1977, complains of Respondent’s registration and use of the domain name at issue, premiere.tv, alleging that it is identical or confusingly similar to Complainant’s trademark. Further, Complainant claims that Respondent has no rights or legitimate interests with respect to the domain name at issue and that Respondent has registered and is using the website associated with the premiere.tv domain in bad faith.

B. Respondent

Respondent does not seriously dispute that the domain name at issue is identical or confusingly similar to Complainant’s registered trademark. Rather, Respondent argues that premiere.tv "…is a domain name which is identical to the unregistered trademark in which the Respondent has an interest…." Further, Respondent claims rights and legitimate interests in the domain name at issue by virtue of common law use of the marks "PREMIER" and "PREMIERE" with the fashion and modeling business since 1981. Accordingly, Respondent says, its registration and use of the domain name at issue is justified and not in bad faith.

Complainant is the owner in France, Europe generally, the United States and elsewhere in the world, of a large number of trademark registrations and applications for "PREMIERE", designating use in international classes 16, 38 and 41. The trademark has acquired an incontestable status by virtue of its long and intensive use in connection with the Cinema Magazine PREMIERE. Among these registrations and applications are the following:

This trademark is intensively used in France, Europe and the United States, notably to designate the well-known magazine PREMIERE, which deals with cinema and entertainment. This magazine, created in 1977, is published in France, the United States, South Korea, Japan, Portugal, the Czech Republic and in Russia.

Complainant uses its trademark worldwide through its web-magazines found at www.premiere.fr (French version) and www.premiere.com (US version).

Complainant intends to use its trademark "PREMIERE" (in classes 38 and 41) in relation with audiovisual entertainment services and TV channels.

Respondent claims common law use of the marks "PREMIER" and "PREMIERE", commencing in 1981, four years after Complainant’s initial use, in connection with a company called "Premier Model Management Limited". No proof of this junior use by Respondent is provided. Respondent’s first use of the domain name at issue after registration on June 26, 2000 was as a link to another of Respondent’s commercial sites, street.tv. Respondent offers only allegations and no proof that it (or those whom it purports to represent) has ever been known by the marks "PREMIER" or "PREMIERE". By virtue of the spelling chosen by Respondent for the domain name at issue (which does not even correspond to its claimed 1981 company) and the fact that the associated website was not initially developed and has been used to divert web surfers to Respondent’s street.tv commercial site, the intent to capitalize on the famous name and trademark of the Complainant and its magazine appear clear.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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."

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Complainant holds many service mark registrations for PREMIERE as well as the domain names premiere.com and premiere.fr. Respondent’s domain name, premiere.tv, is identical to Complainant’s registered trademark. See Hollywood Network, Inc, v. Video Citizen Network, FA 95897 (Nat. Arb. Forum Dec. 20, 2000) (finding that the domain name <hollywoodnetwork.tv> is identical and confusingly similar to complainant’s HOLLYWOOD NETWORK mark because the "inclusion of the entirety of complainant’s mark in the domain name at issue makes it confusingly similar").

Respondent is not commonly known by the domain name in question and is known by the domain name street.tv. Policy ¶ 4(c)(ii). Respondent is using the domain name in question to link Internet users to its street.tv website. This is not a bona fide or fair use of the domain name. Policy ¶ 4(c)(i), (iii). See America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark "as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate"); MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using the Complainant’s mark by redirecting Internet traffic to its own website.)

By linking the domain name at issue to its street.tv commercial website, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site. Policy ¶ 4(b)(iv). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the respondent attracted users to a website sponsored by the respondent and created confusion with the complainant’s mark as to the source, sponsorship, or affiliation of that website); World Wrestling Fed’n Entertainment, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (finding bad faith where respondent uses <wwfauction.com> to resolve to its retail website and the "potential for confusion is not alleviated (as Respondent claims) by respondent’s use of its mark RINGSIDE COLLECTIBLES"); MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where respondent linked <drmath.com>, which contains complainant’s Dr. Math mark, to a website run by the respondent, creating confusion for Internet users regarding the endorsement, sponsorship, of affiliation of the website). Respondent registered and is using the domain name at issue in bad faith.

It is the Decision of this Panelist that the domain name, premiere.tv, be transferred from Respondent to Complainant.