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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Television Française 1 v. The Fork 1

Case No. D2000-0747

 

1. The Parties

The Complainant is TELEVISION FRANÇAISE 1, 33 rue Vaugelas 75015 Paris, FRANCE (RCS 326 300 159) ("the Complainant").

The Respondent is THE FORK 1, PO Box 180, Alofi, Niue, NU ("the Respondent").

 

2. The Domain Name and Registrar

The domain name at issue is "tf1.com" ("the Domain Name"), registered with Network Solutions, Inc., Herndon, Virginia, USA ("NSI" or "the Registrar").

 

3. Procedural History

A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("the Policy") and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("the Rules") was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("the WIPO Center") on July 6, 2000, by e-mail and was received on July 7, 2000 in hardcopy.

On July 26, 2000, the Registrar, NSI, confirmed with its Verification Response that it had received the complaint, that the disputed domain name was registered with NSI, and that the Respondent was the current registrant. In addition, the Registrar forwarded the WHOIS details, confirming that its Service Agreement 5.0 was in effect, and stating that the Domain Name was on "active" status.

The WIPO Center verified that the complaint satisfies the formal requirements in accordance with: paragraph 3 of the Rules, paragraph 4(a) and paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"). Payment of the required amount to the Center has been made by the Complainant.

On July 31, 2000, the WIPO Center in accordance with paragraph 2(a) of the Rules, notified the Respondent of the Complaint and Commencement of Administrative Proceeding, this communication settled a deadline of August 19, 2000, by which the Respondent could file a Response to the Complaint. Copies were sent also to the Complainant, ICANN and the Registrar.

On August 21, 2000, the WIPO Center received the Response and confirmed its receipt with an Acknowledgment of Receipt (Response) on August 23, 2000.

Having received the Statement of Acceptance and the Declaration of Impartiality and Independence from the panelist on August 29, 2000, the WIPO Center transmitted to the parties on August 31, 2000, a Notification of Appointment of Administrative Panel and Projected Decision Date, in which the Administrative Panel was formally and properly appointed as a sole Panelist in accordance with the Policy, the Rules and the Supplemental Rules. The projected decision date was September 14, 2000.

The Complainant submitted a further petition on August 31, 2000, which was sent to an incorrect e-mail address.

 

4. Factual Background

Complainant is the owner of the following trademarks:

- French Trademark No. 182 133 word-mark "TF1" registered November 29, 1974 covering classes 1 to 42;

- French Trademark No. 298 675 device-mark "TF1" registered October 13, 1978 for classes 1 to 42;

- French trademark No. 95 598 872 word-mark "TF1.com" filed November 23, 1995 for classes 6, 16, 28, 35, 38, 41, 42.

According to the sheet provided by the Complainant in Annex D the Complainant is inter alia proprietor of:

- an International trademark IR 556 537 ""TF1 (logo)" registered July 30, 1990, designating Algeria, Andorra, Austria, Benelux, Bosnia-Herzegovina, Bulgaria, Egypt, Germany, Hungary, Italy, Liechtenstein, Morocco, Monaco, Portugal, Rumania, Russian Federation, Spain, Switzerland, Yugoslavia for the classes 9,16, 25, 28, 35, 38, 41; and

- an International Trademark IR 642 242 "TF1 INTERACTIF" registered September 9, 1995, designating Austria, Benelux, Czech Republic, Germany, Italy, Morocco, Monaco, Poland, Portugal, Romania, Switzerland for the classes 9, 16, 25, 26, 28, 35, 38, 41, 42;

- French trademark No. 95 562 714 "TF1 INTERACTIF" registered March 14, 1995, for classes 9, 16, 25, 26, 28, 35, 38, 41, 42;

- Canadian trademark No. 676 067 "TF1 (logo)" registered April 22, 1994, for class 35;

etc.

The Complainant asserts and the Respondent does not deny that the Complainant has been doing business for more than 40 years under the fanciful name "TF1".

The Complainant is a major player in the European broadcasting business and inter alia operates a website under the domain name www.TF1.fr offering a widespread spectrum of information and services. Due to the impact on the European market and marketing/public relation efforts the Complainant is also known in the entertainment and broadcasting field outside Europe.

According to the NSI WHOIS database, the domain name in question was registered on April 2, 1998. Until the date of this decision the Domain Name "tf1.com" does not take the user to an active website. The Respondent's company name as outlined in the NSI WHOIS database printout is THE FORK 1. The Respondent holds no trademarks in relation to the goods or services provided.

The Complainant asserts and the Respondent does not deny that the Respondent is currently not acting under the (firm) name "THE FORK 1" or "TF1".

According to Annex H of the Complaint and Annexes C to Q, S and T of the Response the following communications via e-mail between the parties, their representatives, respectively, have been made:

April 8, 1998: e-mail Mr. Schal (Inlex Conseil) to Mr. Parkers (Respondent) asking for purchasing Domain Name;

April 19, 1998: e-mail Mr. Schal to Mr. Parkers: reminder;

May 13, 1998: e-mail Mr. Schal to Mr. Parkers: reminder;

May 15, 1998: e-mail Mr. Soutoul (Inlex Conseil) to Mr. Parkers: reminder;

May 24, 1998: e-mail Mr. Parkers to Inlex Conseil stating that he is evaluating to sell the Domain Name if an interesting offer is forwarded by Inlex Conseil; offers from France and the UK have been made;

May 25, 1998: e-mail Mr. Soutoul to Mr. Parkers requesting for a purchase price evaluation by Mr. Parkers ;

June 23, 1998: e-mail Mr. Soutoul to Mr. Parkers: reminder;

July 20, 1998: e-mail Mr. Soutoul to Mr. Parkers: offering US$5,000;

July 22, 1998: e-mail Mr. Soutoul to Mr. Parkers: reply to an e-mail of Mr. Parkers, offering US$5,000;

July 24, 1998: e-mail Mr. Parkers to Mr. Soutoul: "okay...if you can go to 27,000USD you have a deal";

October 21, 1998: e-mail Mr. Schal to Mr. Parkers: disclosing that Inlex Conseil is acting on behalf of Television Français 1 and asking for the (quick) settlement of the assignment;

October 26, 1998: e-mail Mr. Schal to Mr. Parkers: reminder;

November 16, 1998: e-mail Mr. Schal to Mr. Parkers: reminder;

January 1, 1999: e-mail Mr. Soutoul to Mr. Parkers: reminder;

January 15, 1999: e-mail Mr. Soutoul to Mr. Parkers: reminder;

February 21, 1999: e-mail Mr. Parkers to Mr. Soutoul stating that he was hospitalized the last four months, Mr. Nourri, the Respondent's European correspondent will contact Mr. Soutoul;

February 23, 1999: e-mail Mr. Nourri to Mr. Soutoul outlining that due to the fact short domain names have become rare Mr. Parkers demands no less than US$100,000 for the assignment of the Domain Name; the construction of the project "Wed" will be finalized soon, the Domain Name is on sale until April 30, 1999;

October 8, 1999 e-mail Mr. Nourri to Mr. Metzer (TF1 Interactif); this e-mail being a reply to an e-mail of Mr. Metzer of uncertain date;

December 13, 1999 e-mail Mr. Schal to Mr. Parkers; requesting if the Respondent is still interested to sell the Domain Name;

 

5. Parties’ Contentions

A. Complainant

Complainant inter alia contends as follows:

The Respondent registered the Domain Name for the purpose of taking advantage of the Complainant's well known reputation and for the purpose of selling it to the Complainant.

The Domain Name is identical to the trademarks of the Complainant. The Respondent purely and simply reproduced, in a strictly identical way, the "TF1" trademarks without carrying out any prior availability search whatsoever.

The Respondent has no rights or legitimate interests in respect of the domain name and the domain name was registered and is being used in bad faith, which results from the following elements:

(i) Complainant's well known trademarks:

The "TF1" trademark enjoys a great reputation in France and all over the world.

"TF1" has acquired sufficient distinctiveness for the French and European average consumers. It is established that Complainant is the most powerful private television network in Europe (see Annex F) and to enforce its position on the web, the Complainant's group expects to invest 150 million French francs this year. It is demonstrated that the Complainant provides a large geographical covering and its reputation is consequently widely established.

Regarding the fame of the Complainant's trademark and service mark, the Complainant is the only legitimate party who should be entitled use the Domain Name "tf1.com".

The above described circumstances, such as the reputation of the trade mark, its effective use in various countries and the passive holding of the domain name with no related web site, show the Respondent's bad faith use.

(ii) No activity of the Respondent under the name "TF1":

To the Complainant's knowledge the Respondent is not using the "TF1" symbol, and has no "TF1" trademark registered under its name, in particular not in France; thus, the Respondent has no right or legitimate interest in respect to the Domain Name. The Respondent is domiciled at a small island of New Zealand (Alofi is the capital of Niue (1700 inhabitants), which may be qualified as a factor of bad faith by the Respondent.

(iii) No exploitation of the Domain Name on a website by the Respondent

The Domain Name provides no active website, whereas the registration of the domain name was made in 1998. This occupation is very prejudicial for the Complainant. The Respondent prevents the Complainant from being present in an international level under the .com.

The Respondent has therefore no right nor legitimate interest in respect to the Domain name. Therefore this registration is against the Complainant's legitimate interest.

Even if any of such right existed, the Respondent should have registered as domain name all characters of its name and not the sole characters "TF1". It is surprising that the Respondent has to use as domain name the sole sign "TF1", identically reproducing the Complainant's trademarks.

The Respondent appears to have registered the Domain Name on purpose and without any bona fide, reproducing the Complainant's trademarks in identical fashion.

(iv) Agreement of Respondent to sell the Domain Name:

After many negotiations the Complainant agreed to sell the Domain Name for US$27,000. The Complainant accepted this proposal but the Respondent never replied, thus the transfer of the ownership could not be organized. If the Respondent had a real legitimate interest in registering the Domain Name, he would never had accepted to sell it.

(v) Financial speculation of Respondent:

It derived from the different communications between the parties that the sole solution proposed by the Respondent is the sale of the domain name to the Complainant company for the amount of US$100,000, which is more than three times the price of the initial accepted amount.

It is therefore obvious that Mr. John PARKER has been speculating on the sale of the domain name TF1.COM since the beginning of the negotiations.

B. Respondent

Respondent replied in the structure of the Complaint and inter alia contends as follows:

(i) Complainant's well known trademarks:

The Complainant did not have any commercial projects and no trademarks in the American continent at the date of registration of the Domain Name. A company as important as the Complainant should have registered its trademark in USA as its pretends to be known worldwide since several decades.

The Complainant broadcasts French-speaking programs in France and other bordering French-speaking countries and the website is displayed in French which perfectly fits to the .fr termination.

The Respondent has never heard about the Complainant's TV channel before INLEX CONSEIL informed him.

(ii) No activity of Respondent under the name of "TF1":

The Domain Name is formed by the initials of "THE FORK 1" which is the name of a gate site actually under construction. This website is totally free and aims at becoming the virtual crossroads of culinary habits of nations and people worldwide. This site has a different goal and does not compete with the Complainant's field of conduct in any aspects.

(iii) No exploitation of the Domain Name on a website by the Respondent:

This domain name has not been connected to a website yet as it is currently under construction. The Respondent alleges that it will be ready and on-line "very soon".

(iv) Agreement of Respondent to sell the Domain Name:

The Domain Name has never been offered to sell. The Respondent has never been in touch with anybody offering the Domain Name and it has not been registered for speculative aims. However, the Respondent has received several offers due to the fact that short domain names are very easy to remember and the rarity of domain names composed by two letters and one number.

Mr. Eric Schahl from INLEX CONSEIL contacted the Respondent asking if he intended to sell the Domain Name, without stating for whom he was acting for. The Respondent told him that he was not intending to sell except for a very interesting offer; a website requires an important budget for creation and launching. The selling of the Domain Name could have partly financed the Respondent's website.

INLEX CONSEIL addressed to the Respondent a US$5,000 offer on July 20, 1998 (annex K), on October 21, 1998, they communicated a US$27,000 offer (see annex M).

The Respondent decided to refuse these offers based on several reasons, inter alia - due to the design of the website "THE FORK 1" was already launched and advanced, was quite attractive and successful and the Respondent did not want to restart the design process with another domain name, due to the sudden rarity, since 1999, of domain names composed of two letters and one number.

The Respondent only owns one domain name and has never replied positively to the offers for selling of the Domain Name.

(v) Financial speculation of respondent:

The Respondent stresses that short domain names have become so rare that proposals for selling them are very common. A domain composed of three letters, e.g. MTV.com has been negotiated up to US$100,000 in 1997.

Further the Respondent asserts:

The non-exploitation of the Domain Name under a website and the non-selling of the Domain Name proves the Respondent's honesty. The initials of the parties names are the same but the full names are different and make no sense; the business fields are different and do not compete; the geographical broadcasting areas are different; the language used is different. The Complainant owns at least 54 domain names.

 

6. Discussion and Findings

According to the Notification of Complaint and Commencement of Administrative Proceeding the deadline for submitting a response to the complaint has ended on August 19, 2000. According to the Acknowledgment of Receipt the response was received by the WIPO Center on August 21, 2000 - thus, not within the 20 days' period set forth in the Rules, paragraph 5 (a). In addition, the response was not submitted to the WIPO Center and the panelist in hard copy (Rules, paragraph 5 (b)). Though the panel is not required to consider a late, respectively unduly-filed response, the panel accepts and considers the response.

The additional submission of the Complainant received by the WIPO Center on August 31, 2000, shall not be considered in order to treat the parties on an equal basis.

According to the Policy, paragraph 4(a) the Complainant shall 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 legitimate interest in respect of the Domain Name; and,

(iii) that the Domain Name has been registered and used in bad faith.

Identical or confusingly Similarity:

The Domain Name is identical to the Complainant's trademark "TF1.com", and virtually identical to the Complainant's trademark "TF1", which is sufficient for the purposes of the Policy.

The Respondent tries to assert that considering the different business fields of the parties there would be no confusion, however, this it is not true. Contrary to the trademark context, within the scope of the Policy, confusing similarity and identity shall not be measured by reference to the categories/classes of goods or services in relation to which they are used. In selecting the ".com" domain one puts himself firmly into the international commercial sphere (Reuters Limited v. Ghee Khaan Tan, Case No. D2000-0670) and the panel finds that a domain name being identical to a trademark is not a matter of similarity of goods or services covered by the respective trademark nor existence of a likelihood of confusion due to the similarity of goods or services covered by the trademark.

Illegitimacy

Whilst the overall burden of proof is on the Complainant, the introductory paragraph of the Policy, paragraph 4(c) advises the Respondent how to demonstrate its rights and legitimate interests in the Domain Name in responding to a complaint. In this non-exhaustive list of circumstances which, if the Respondent can prove any of them to the satisfaction of the panel, will establish the relevant rights and/or legitimate interests of the Respondent, the Respondent relies on the circumstances specified in paragraph 4(c)(i):

"before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparation to use, the Domain Name or a Domain corresponding to the Domain Name in connection with a bona fida offering of goods or services;"

The Respondent does not have to prove being proprietor of any related trademark rights.

The Complainant has clearly outlined, that the Respondent is neither acting under a (firm) name "TF1" nor has registered any trademark "TF1". A general legitimate interest for using the initials of a firm name as a Domain Name cannot be derived from the Policy, the Rules or the Supplemental Rules, neither from the relevant principles of law. Such legitimate interest may only be demonstrated within the scope of the Policy, paragraph 4(c).

In this respect the Respondent was not able to demonstrate and prove to the panel any use of or demonstrable preparation to use of the Domain Name or a web site corresponding to the Domain Name in connection with bona fide offering of goods or services. A website under the Domain Name is not accessible and the Respondent did not submit any evidence proving the contended construction of the website.

In the awareness of K2r Produkte v. Jeremie Trigano, Case No. D 2000-0622, the panel finds the Respondent has and has had no legitimate right and/or interest in the Domain Name. As the Domain Name at issue the domain name in the above mentioned case was "not used" as per the date of the decision of the Administrative Panel. Contrary to the mentioned case the Respondent has not been able to convince the Panel that the Respondent's website is currently being drafted or under construction and will be disclosed to the public under the Domain Name soon (as the Respondent argues in the response). The Respondent has not submitted any evidence proving the drafting of a website. He therefore is not able to demonstrate to the Panel its rights according to the Policy, paragraph 4(c)(i).

In the communication of Mr. Nourri to Mr. Soutoul of February 23, 1999, the representative of the Respondent indicated that the website-project will be finalized soon and the Domain Name is saleable until April 30, 1999. Even though there is a nearly 1 1/2 year period between this date and the date of this decision, there is no indication for the Respondent's website being on air.

In addition, there is no indication - except the WHOIS database - that the Respondent is or has been using the firm name "THE FORK 1" at all.

Bad faith:

Bad faith in respect to the registration and use of the Domain Name has to be proven by the Complainant according to the Policy, paragraph 4(a)(iii).

In its contentions the Complainant basically relied on the Policy, paragraph 4(b)(i) ("registration for the purpose of selling the Domain Name"), paragraph 4(b)(ii) ("The Respondent prevents the Complainant for being present in an international level with the .com") and paragraph 4(b)(iv) ("purpose of taking advantage of the Complainants well known reputation").

(i) As far as the Complainant relies on the Policy, paragraph 4(b)(ii) the Panel cannot follow its contentions as the Respondent has not been engaged in a pattern of cybersquatting conduct. No such circumstances or evidence have been brought before the Panel.

(ii) As the Domain Name has not been used until the date of this decision, the circumstances outlined by the Policy, paragraph 4(b)(iv) are not applicable as no website or other online location is delegated to the Domain Name.

(iii) Based on the evidence attached to the submission of the parties, in particular the extensive e-mail communication, the Panel finds that the Complainant has met its burden of proof that the Domain Name has been registered primarily for the purpose of selling, renting or otherwise transferring the Domain Name registration to the Complainant or a competitor of the Complainant for valuable consideration in excess of the out-of-pocket costs directly related to the Domain Name registration; US$27,000, and US$100,000, clearly exceed such costs.

The following circumstances indicate the malice intent of the Respondent:

- Though the Respondent avers that he is (currently) designing a website, he was willing to sell the Domain Name for US$27,000, (e-mail of Mr. Parkers to Mr. Soutoul of July 24, 1998). The Panel finds that the contention of the Respondent - that the website is currently under construction - is to be characterized as an exculpatory statement designed to improve the position of the Respondent in the negotiations for selling the Domain Name. Accordingly, the Respondent demanded US$100,000 for the Domain Name on February 23, 1999

The argument of the Respondent – short domain names have become rare, therefore the Domain Name is worth US$100,000 – fails. It is the purpose of the Policy to prevent the exploitation of the cyber space by the means of cybersquatting practices.

- The fact that as per the date of this decision no website has been posted under the Domain Name shows that, in fact, no website in under construction and indicates bad faith of the current Domain Name registration.

- Basically the Panel finds that an assignment agreement of a Domain Name does not automatically indicate bad faith; the Complainant has to prove that the Domain Name was registered for the purpose of selling the Domain Name. Though the Panel acknowledges that the Complainant has contacted the Respondent sending a number of request e-mails and reminders, it is demonstrated to the Panel, that the Respondent has speculated to sell the Domain Name for US$100,000. In addition, this sum was demanded first by the Respondent, when it became aware of who was the counter-party (the Complainant). The malice intent of the Respondent is clearly indicated by the (history of the) communications mentioned above (see 4. Factual Background). Such intent cannot arise ad hoc, but must have been present at the time of registration of the Domain Name.

- It is clearly demonstrated to the Panel, that the Respondent did not conduct any research before having the Domain Name registered. The Panel has conducted a simple research at www.altavista.com for "TF 1" and the primary results has led to the Complainant (this search was conducted based on the contentions of the statements of the parties and according to the Panel's opinion is comprised by the Rules, paragraph 15(a)).

 

7. Decision

In the light of the foregoing reasons the Panel decides (i) that the Domain Name registered by the Respondent is identical to (inter alia) FR 182133 and FR 95/598872 in which the Complainant has rights, (ii) that the Respondent has no rights or legitimate interest in respect of the Domain Name, and (iii) that the Respondent's Domain Name has been registered in bad faith.

Accordingly, pursuant to the Policy, paragraph 4(i) the Panel requires that the registration of the Domain Name "tf1.com" be transferred to the Complainant.

 

 


 

Christian Gassauer-Fleissner
Sole Panelist

September 18, 2000

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0747.html

 

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