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Société Nationale de Télévision France 2 v. Richard J. aka Richard Jones [2005] GENDND 1969 (3 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Nationale de Télévision France 2 v. Richard J. aka Richard Jones

Case No. D2005-0864

1. The Parties

The Complainant is Société Nationale de Télévision France 2, Paris, France, represented by Cabinet Dreyfus & Associés, Paris, France.

The Respondent is Richard J. aka Richard Jones, United States of America.

2. The Domain Name and Registrar

The disputed domain name <telematinfrance2.com> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2005. On August 16, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On August 17, 2005, eNom transmitted by email to the Center a partial verification response confirming that the language of the proceedings is English and that the domain name would remain under Registrar Lock throughout the proceeding. In addition to eNom’s partial response, the Center made a WHOIS printout, which showed that the disputed Domain Name was registered with eNom, and that Respondent was the current registrant of the disputed Domain Name. 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 1, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2005.

The Center appointed Gunnar Wilhelm Gösta Karnell as the sole panelist in this matter on October 28, 2005. 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.

4. Factual Background

The domain name <telematinfrance2.com> was registered on December 2, 2004.

The Complainant has tried to reach the Respondent by registered mail, requesting the amiable transfer of the domain name. Also other means of communication have been tried; all without success. After a first letter, in February 2005, the Complainant noted that the domain name was active, directing Internet users in the French language to a search engine with sponsored links in its own field of television.

The Complainant now requests that the domain name <telematinfrance2.com> be transferred to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant, known as France 2, is the second French public service broadcasting station. In 2004, its sales figures amounted to 1,116 M€. It employed 1,598 employees. Its share of audience in 2004 was equally distributed between various segments of the population. It has 10 foreign offices in the major capitals of the world. Its programs are retransmitted by a great number of foreign stations.

Télématin is a well-known television show, broadcast since 1985, by the Complainant, but also broadcast on channel TV5. In 2004, around 43.1 % of television viewers looked at the show as broadcast in France Monday to Friday mornings.

FRANCE 2 and TELEMATIN are trademarks owned by the Complainant. FRANCE 2 is a well known trademark protected by a number of registrations worldwide, in particular for television broadcasting. Among trademarks registered in later years, there is the Community trademark FRANCE 2, No. 000684704, filed on October 30, 2000, covering products and services in classes 9, 16, 38 and 41. TELEMATIN was registered as a French trademark, filed on April 7, 1987, renewed and covering products and services in classes 35, 38 and 41. As both trademarks are broadcast, they are well known worldwide; they are also well known at common law.

The domain name <telematinfrance2.com> reproduces entirely the marks TELEMATIN and FRANCE 2 and it was registered a considerable time after the registration of the trademarks and after the first broadcast of the show Télématin on channel France 2. Apart from the gTLD “.com”, of no significance in present respects, the domain name is a mere combination of both marks. Hence, the domain name in dispute reproduces in its entirety these two trademarks in which the Complainant has rights.

The domain name is identical or at least similar to trademarks belonging to the Complainant. It implies a high risk of confusion, because consumers may believe that the domain name directly refers to the Complainant’s official website for its television program, Télématin.

The Respondent has no rights or legitimate interests in respect of the domain name, being in no way affiliated with the Complainant and having no rights related to the Complainant’s trademarks. The trademark rights of the Complainant were established well before the registration of the domain name. The domain name <telematin.france2.fr> is used by the Complainant to stay connected with viewers. The Respondent is not making any legitimate non-commercial or fair use of the domain name <telematinfrance2.com>. Its use, as mentioned above, cannot be seen as a bona fide offering of services under paragraph 4(c)(i) of the Policy. It dilutes the reputation of the Complainant’s trademarks and mirrors an intention to misleadingly divert Internet users to Respondent’s website. Since the domain name is so identical to the famous trademarks of the Complainant, the Respondent cannot reasonably pretend an intention to develop a legitimate activity. The lack of legitimate interests on the part of the Respondent is also shown by its neglect to respond to the contentions of the Complainant. This conduct also confirms the bad faith of the Respondent.

The domain name was registered and is being used in bad faith. The Respondent must have known of the relevant trademarks at the time it registered the domain name. The combination of its elements confirms that the Respondent had the Complainant in mind when registering the domain name, doing this with the intent to disrupt the Complainant’s business, by use of the domain name with sponsored links to products and services related to the same field of activities as those of the Complainant. The Respondent intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s marks. The attempt to profit from the reputation and goodwill of the Complainant by increasing traffic on Respondent’s website by the mere reproduction of the Complainant’s trademarks obviously constitutes a bad faith use of the domain name. A presumption of bad faith is also generated by the website posting of pop-up ads in connection with click-through fees for the diversion of Internet users to the advertisers. Users will believe that the domain name in dispute, together with its links written in French, is related to the official television program on the FRANCE 2 website, especially because it must be known that France 2 provides information on the program Télématin from the sub-domain <telematin.france2.fr>.

Furthermore, the Respondent was involved in cybersquatting activities regarding domain names of another client of the Complainant’s representative in the present case, namely <formule1hotels.com> and <formule1hotel.com>, which ended in an agreement on the part of the Respondent to transfer the names immediately to the client. In Credit Industriel et Commercial S.A. v. Richard J.,WIPO Case No. D2005-0569, decided July 11, 2005, against the same non-contesting Respondent, two domain names, <cicfilbanque.com> and <filibanquecic.com>, each combining ─ as in the present case ─ two trademarks, were ordered to be transferred to the complainant of that case.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns rights in the word marks FRANCE 2 and TELEMATIN. Even though more relevant under the second and third elements of the Policy, the Panel notices that the trademark registrations predate the registration of the disputed domain name. The domain name combines the trademarks. As established in earlier UDRP case decisions, most recently in the one just referred to under 5 A., domain names that consist of a mere combination of two trademarks must be considered as confusingly similar to such trademarks.

The Panel, consequently, finds that the domain name in issue is confusingly similar to the trademarks owned by the Complainant.

B. Rights or Legitimate Interests

The Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name. The Respondent has not responded to the contentions of the Complainant. Nothing in the case-file suggests that there would be any rights to or legitimate interests in the disputed domain name on the part of the Respondent.

The Panel is convinced of the absence of such rights and interests.

C. Registered and Used in Bad Faith

The Panel finds no reason to doubt that the Respondent has acted knowingly about the Complainant’s trademarks, their legal protection and use, when combining them in its domain name. The Respondent’s use of the domain name, as amply evidenced by the Complainant, shows that the domain name has been registered and that it is used in bad faith for the Respondent’s commercial gain and to the detriment of legitimate interests of the Complainant.

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 <telematinfrance2.com> be transferred to the Complainant.

Gunnar Karnell
Sole Panelist

Date: November 3, 2005