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Teleshopping v. Bendeler [2004] GENDND 1485 (17 November 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Teleshopping v. Bendeler

Case No. D2004-0776

1. The Parties

The Complainant is Teleshopping of Boulogne Billancourt, France, represented by Inlex Conseil of Paris, France.

The Respondent is Bendeler of Rotterdam, Netherlands.

2. The Domain Name and Registrar

The disputed domain name <teleshopping.com> is registered with Melbourne IT trading as Internet Name Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2004. On September 27, 2004, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On September 28, 2004, Melbourne IT trading as Internet Name Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 29, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 28, 2004.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on November 4, 2004. 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. On November 17, 2004, the Panel forwarded the decision draft to the Center for the formal check. On December 1, 2004, the Panel, after being informed by the Center that due to an exceptional circumstance the Center had not yet been able to proceed with the formal check, empowered by the rules extended the time for a decision and requested the Center to notify the parties accordingly. On December 2, 2004, the Center notified the requested extension to the parties.

The language of the proceeding is English.

4. Factual Background

The French Company Teleshopping is a subsidiary of the TF1 Group, which is a private European television network. Teleshopping is the name of the company in charge of selling products through television channels. It is also a television program concerning promotion and sales of said products. It is mainly broadcast on channel TF1, but also rebroadcast on other channels such as CNBC Europe by cable or satellite.

Complainant’s TELESHOPPING trademarks registered in France include:

Trademark No. 1691588 filed on September 22, 1986, covering classes 8, 9, 11, 14, 16, 20, 21, 25, 28, 29, 30, 35, 38, 39, 41.

Trademark No. 94536050 filed on September 14, 1994, covering classes 8, 9, 11, 14, 16, 20, 21, 25, 28, 29, 35, 38, 39, 41.

Complainant’s International TELESHOPPING Trademarks designating Benelux include:

Trademark No. 625321 dated September 1, 1994, covering classes 8, 9, 11, 14, 16, 20, 21, 25, 28, 29,30, 35, 38, 39, 41.

Trademark No. 632859 dated March 10, 1995, covering classes 8, 9, 11, 14, 16, 20, 21, 25, 28, 29, 35, 38, 39, 41.

The Respondent registered the domain name <teleshopping.com> on June 25, 1997.

Complainant’s registered trademark TELESHOPPING pre-dates Respondent’s registration of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant submits that:

The French company, Teleshopping, is a subsidiary of the very well known TF1 Group, which is the best known and most powerful private European television network. Teleshopping is the name of the company in charge of selling products through television channels. It is also the best television program concerning promotion and sales of said products.

The extension indicating the gTLD “.com” is irrelevant in determining the similarity of the domain name with a trademark and to avoid confusion.

The domain name is identical to the numerous TELESHOPPING Trademarks duly registered since 1986, and to the name of the Complainant.

TELESHOPPING’s trademarks are well-known, their wide use and the promotional effort prove their great notoriety in France and Europe.

The TELESHOPPING program is broadcast in Benelux through various ways:

- by hertzian waves on channel TF1;

- by cable and satellite on TF1 and other channels such as CNBC Europe.

The TF1 channel on its own represents 16 % of the market share in the Belgian television industry.

The people in the Benelux countries cannot ignore the existence of the company and trademark.

Many articles have been published concerning the TELESHOPPING channel. The web site “www.teleshopping.fr” is available everywhere in the world. A part of the web site is dedicated to Belgian people and makes it possible for them to purchase products on this web site.

The Complainant should have known of the existence of the trademarks when it registered the domain name.

Respondent is not known under the TELESHOPPING mark as it has no registered TELESHOPPING trademark nor any use or filings of a trademark logo. The Respondent’s name has nothing to do with the term ‘teleshopping’ and there is no web site attached to the domain name.

The Complainant has not licensed or otherwise authorized the Respondent to use the TELESHOPPING trademark and there is no relationship between the Complainant and Respondent, Bendeler.

To the Complainant’s knowledge from the registration of the domain name (June 1997), no web site has been attached to it. If the Respondent had any rights or legitimate interests in the domain name, it would have created a web site during this length of time.

The registration of the domain name was made without any rights in a trademark or corresponding name and without any intention to build a web site which could be considered as a bona fide offering of goods or services.

As regards the fact that the domain name was registered and is being used in bad faith, Complainant alleges that:

The TELESHOPPING trademark and web site enjoy a great notoriety in Europe.

The International TELESHOPPING trademarks owned by the Complainant have been registered since 1994, and designate Benelux as claimed countries. A simple search on the Internet for ‘teleshopping’ would have revealed the existence and the notoriety of TELESHOPPING.

As a Benelux company or individual, the Respondent could not have been unaware of the existence of the TELESHOPPING trademark.

The notoriety of the trademark TELESHOPPING clearly shows that the Respondent registered the domain name <teleshopping.com> knowingly and without carrying out any prior availability search.

Respondent provided false information when registering the domain name, thus the Respondent violated the UDRP and the Registrar Domain Name Registration Agreement. Providing false contact information violates the Policy. See UDRP Section 2 (“you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate”). Point 21 of the Registrar Domain Name Registration Agreement repeats this obligation and sets out the following requirement: “Registrant undertakes to promptly correct and update information during the registration period.”

The Respondent did not respect its obligations and this is evidence of bad faith.

Since the registration date in 1997, to the Complainant’s knowledge no real web site has been attached to the domain name. The disputed domain name is being used in bad faith under the principle of inaction amounting to bad faith registration and use. The passive holding of the domain name corresponding to the Complainant’s Benelux trademarks during seven years constitutes bad faith registration and use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. Thus, Respondent has failed to submit any statement. It has not contested the allegations in the Complaint and the Panel shall decide on the basis of Complainant’s submissions, and shall draw such inferences from the Respondent’s default as it considers appropriate (paragraph 14(b) of the Rules).

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 deems applicable.”

Paragraph 4(a) of the Policy lists three elements that a complainant must prove to merit a finding that a domain name registered by a respondent be transferred to the complainant:

1) the domain name is identical or confusingly similar to a trademark or service mark (“mark”) in which the complainant has rights; and

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.

A. Identical or Confusingly Similar

The Panel finds the disputed domain name to be confusingly similar to the trademarks owned by the Complainant. As indicated by the Complainant and in accordance with many decisions rendered under the UDRP (Uniform Domain Name Dispute Resolution Policy) the addition of the extension indicating the gTLD “.com” is irrelevant in determining the similarity of the domain name to a trademark and to avoid confusion. This is particularly so on the Internet given the widespread use of “.com” as an indication of the commercial nature of the domain name: see, for example, BIC Deutschland GmbH & Co KG v. Paul Tweed, WIPO Case No. 2000-0418.

The Complainant has thus succeeded in providing evidence of the confusing similarity between its registered trademark TELESHOPPING and the domain name <teleshopping.com>.

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. The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

a) that before any notice to the respondent of the dispute, he or she used or made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

b) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or

c) that the respondent intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

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 trademark. Respondent does not appear to make any legitimate use of the domain name for his own commercial or non-commercial activities, in fact, the domain name’s web site is not active and leads to a practically empty page showing the sole word “test.” Respondent has not been known under this domain name. Respondent has not filed any Response to the Complaint and has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name. Therefore, the Panel concludes that the absence of any legitimate use and the Respondent’s failure to justify the use of the disputed domain name, constitutes prima facie evidence of a lack of rights to or legitimate interests in the domain name.

Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

i) circumstances indicating that the holder has registered or has acquired the domain name 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 or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s web site or location or of a product or service on the holder’s web site or location.

Accordingly, for a complainant to succeed, the Panel must be satisfied that the domain name has been registered and is being used in bad faith.

Provision of incorrect data

The Uniform Domain Name Dispute Resolution Policy section 2 requests that the registrant “By applying to register a domain name, or by asking to maintain or renew a domain name registration, hereby represents and warrants that (a) the statements that he made in his Registration Agreement are complete and accurate.”

Point 21 of the Registrar Domain Name Registration Agreement repeats this obligation and sets out the following requirement : “Registrant undertakes to promptly correct and update information during the registration period.”

It appears from the case file that a registered letter sent by Complainant’s representative to Respondent’s address was returned to the Complainant with the word “gone” written on it. In addition, the Notification of Complaint the Center sent to the Respondent’s address by DHL was returned to the shipper because “recipient was not home.” In addition, Complainant affirmed in the Complaint that it had entrusted a local counsel to make a search concerning the Respondent and found that “there was no particular [sic] nor company at this (respondent’s) address in the Netherlands.” Complainant then affirmed that “Bendeler does not live at the address mentioned in the whois database and has probably never lived there.”

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.

Same field of activity- Actual Knowledge

It is not possible for the Panel to know for certain whether the Respondent had in mind to start a commercial (or non commercial) activity under the name ‘teleshopping’ with or without having in mind Complainant’s trademark. As a matter of fact, it is not the Panel’s duty to represent in the proceeding a Respondent who has not filed a response to a complaint or to better argue a complainant’s allegation. The Policy requires in fact that (a) A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

Nevertheless, the Panel is not prevented from conducting its own research provided that the parties are treated with equality.

In this case, the Panel notes that the web site “www.teleshopping.com” which actually contains the single word “test” was, as of March 2000, publishing the phrase “Welcome to the teleshopping web site.”

Given the generic use of the words ‘tele’ and ’shopping’ it might be 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. The Panel has therefore looked at the entire case file without finding any inferences to support this theory. Particularly, the seven years of inactivity, the provision of incorrect data and the absence of any allegation given in this sense by the Respondent, led the Panel to dismiss this hypothesis.

On the contrary, the fact that Respondent allegedly registered the disputed domain name with the intention to use it for a “teleshopping web site” supports Complainant’s allegation that Respondent had actual knowledge of Complainant’s trademark and activity when the registration occurred. It is in fact common and very reasonable that a person or a company that intends to start a commercial activity in a particular field of a market would check if there was already someone else doing identical business in the same market under an identical name. In this case, Complainant has shown that it has registered the trademark TELESHOPPING in the BENELUX and that the TELESHOPPING program is broadcast in the Benelux through various ways: hertzian waves on channel TF1; by cable and satellite on TF1 and other channels such as CNBC Europe.

There being no evidence to the contrary, the Panel finds that, given the widespread use and fame of the Complainant’s TELESHOPPING trademark in the related field, Respondent (who allegedly intended to operate in the same market/field) had actual knowledge of Complainant’s trademark when he registered the domain name. The Panel, in accordance with previous decisions issued under the UDRP, is of the opinion that actual knowledge of Complainant’s trademark and activities at the time of the registration of the disputed domain name is to be considered an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

Passive holding

As regards the non-use of the domain name by Respondent, the Panel agrees with Complainant’s allegation, that in this case the “passive holding” (namely detaining the domain name without using it for about seven years), infers bad faith. As established in a number of prior cases, the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding. In the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Panel concluded that inaction does not preclude a finding of “bad faith use” since what is relevant:

“…is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith…”

“.. the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept.”

The Panel in that case found for the complainant because complainant’s trademark was well known, while respondent was neither using the domain name, nor had shown any good faith use or intent to use the corresponding web site and it was not possible to find any legitimate use of the domain name by the respondent.

This interpretation of “bad faith use” as including a non-justified holding of a domain name without either any activity on the corresponding web site or any legitimate right in the name has since been approved by a number of Panels (e.g., Kentucky Fried Chicken International Holdings, Inc. v. Kimbeomsung, WIPO Case No. DRO2002-0004).

Respondent’s default

The Panel wishes to note that even if Respondent is not obliged by the Policy to reply to a complaint it is undoubted that renouncing to defend its own positions and rights leaves Complainant’s allegations uncontested.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <teleshopping.com> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist

Dated: December 15, 2004