The Complainant is Pathe Marques, France, represented by Cabinet Desbarres & Staeffen, France.
The Respondent is Admin, Republic of Korea.
The disputed domain name <pathe.net> is registered with Gabia, Inc. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2021. On June 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 2, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On June 3, 2021, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the disputed domain name is Korean. On June 4, 2021, the Complainant requested for English to be the language of the proceeding. On June 7, 2021, the Registrar reiterated that the language of the Registration Agreement for the disputed domain name is Korean. On June 8 and 10, 2021, the Respondent requested for Korean to be the language of the proceeding.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent, in both English and Korean, of the Complaint, and the proceedings commenced on June 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 30, 2021. On June 29, 2021 and on July 3, 2021, the Respondent requested for an extension to submit a Response, and reiterated its request for Korean to be the language of the proceeding. The due date to submit a Response was extended to July 9, 2021. The Response was filed with the Center on July 8, 2021.
The Center appointed Andrew J. Park as the sole panelist in this matter on August 9, 2021. 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.
The Complainant, Pathe Marques, is a company incorporated under the laws of France since 1999. The Complainant belongs to the Pathe Group, a major film production and distribution company, owning a number of cinema chains through its subsidiary “Les Cinémas Pathé Gaumont” and television networks across Europe. It is the second oldest operating film company behind Gaumont Film Company which was established in 1895.
With a long history of involvement in cinema, the Pathe Group is today France’s number one film studio and the leading cinema network in continental Europe, with 133 cinemas and 1339 screens in 2019.
Pathé or Pathé Frères is the name of various French businesses that were founded and originally run by the Pathé Brothers of France starting in 1896. In the early 1900s, the Pathe Group became the world's largest film equipment and production company, as well as a major producer of phonograph records.
The Complainant owns a large portfolio of trademarks incorporating the term “Pathe” that are widely used, and well known, including the following:
|
Jurisdiction |
Trademark |
Registration Number |
Registration Date |
|
France |
PATHE |
1506605 / 1506606 |
January 2, 1989 |
|
France |
PATHE ! |
98760299 / 98760300 |
November 19, 1998 |
|
France |
PATHÉ ! |
99790945 |
May 7, 1999 |
|
International |
PATHÉ ! |
715871 |
May 17, 1999 |
The Complainant promotes its business at the domain name <pathe.com>, which was registered in 1997.
The disputed domain name <pathe.net> was registered on April 18, 2002, and it resolves to a website displaying various commercial links, some of which are related to cinema and movies, and offering the disputed domain name for sale.
As noted above, the Complainant, following the filing of the Complaint with the Center, requested for English to be the language of the proceeding. The Respondent requested Korean to be the language of the proceeding.
1) The Complainant, following the filing of the Complaint with the Center, requested that the language of the proceeding be in English, providing three main reasons.
(a) The English language is the language most widely used in international relations and is one of the working languages of the Center.
(b) The Complainant does not speak or understand Korean and in order to proceed in Korean, the Complainant would have to retain specialized translation services at a cost very likely to be higher than the overall cost of these proceedings.
(c) The disputed domain name is formed by words in Roman characters (ASCII) and not in Korean.
2) The Complainant contends that the disputed domain name should be transferred to the Complainant because:
(a) the disputed domain name <pathe.net> is identical to the Complainant’s trademarks in which the Complainant has rights. The Complainant argues that the Complainant’s trademark PATHE is included in the disputed domain name in its entirety. The word element “pathe” is clearly predominant in the disputed domain name and the exclamation point and the rooster which is just an accessory do not interfere with the visibility of the term. Also, the addition of the generic Top-Level Domain (“gTLD”) suffix “.net” does not change the overall impression of the designation as being connected to the trademark PATHE. The Complainant’s trademarks have been filed and registered prior to the disputed domain name which is identical to the Complainant’s trademarks.
(b) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims that the Respondent lacks any right or legitimate interest in the disputed domain name because the Complainant does not carry out any activity for, nor has any business with the Respondent. The Complainant has not licensed or granted any authorization to the Respondent to make use of its registered trademarks, or to apply for registration of the disputed domain name. The Complainant has not found any evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. There is also no indication of the Respondent’s use of the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name does not lead to a traditional website and resolves to a parking page with various headings and commercial links which are related to cinema and movies. These topics are clearly similar to the Complainant’s business activity under the trademarks.
(c) the disputed domain name was registered and is being used in bad faith. The Complainant argues that the Respondent intentionally registered the disputed domain name, which is identical to the Complainant’s famous and widely known trademarks, and is also almost identical to the Complainant’s domain name <pathe.com>. The term “Pathe” is known especially in relation with the Complainant and its cinema and movie production businesses. Given the distinctiveness of the Complainant’s trademarks and reputation, the Respondent must have registered the disputed domain name with full knowledge of the Complainant’s trademarks and used it for the purpose of misleading and diverting Internet users. Furthermore, the disputed domain name resolves to a parking page with commercial links. The Complainant contends that the Respondent attempts to attract Internet users for commercial gain to its own website using the Complainant’s trademarks whichs confirm bad faith.
1) The Respondent requested that the language of the proceeding be in Korean and requested for an extension to submit a Response for the following reasons.
(a) The Respondent who was born in Korea and speaks only Korean does not understand English. Therefore, the Respondent was not able to respond properly to the Complaint and all other supplemental documents which were all in English.
(b) According to paragraph 11 of the Rules, “unless otherwise specified in the agreement between the parties or the registration agreement, and unless otherwise decided by the panelist, the language of the dispute resolution process will be the language used in the registration terms and conditions.” According to information provided by the Registrar, the language used in the Registration Agreement regarding the disputed domain name is Korean.
(c) The Respondent also raised general difficult situations due to Covid-19.
2) The Respondent requests the Panel to deny the remedy requested by the Complainant because:
(a) The Respondent has not registered or acquired the disputed domain name for the purpose of selling, renting, or otherwise transferring to the Complainant, who is the owner of the trademark or service mark, or to the Complainant’s competitor, for a price exceeding the cost paid by the Respondent.
(b) The Respondent has not registered the disputed domain name in order to prevent the Complainant from reflecting the Complainant’s trademark in the disputed domain name. The Respondent has no competitor relationship with the Complainant at all, and the Respondent did not register the disputed domain name for the purpose of interfering with the Complainant’s business.
(c) The Respondent has not registered the disputed domain name in order to attract, for commercial gain, Internet users to its website 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 Respondent’s website or location or of a product or service on the Respondent’s website or location.
The language of the Registration Agreement for the disputed domain name is in Korean. Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, i.e., Korean, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Having considered the circumstances of the case including the Parties’ language request as summarized above, the Panel decides that English be adopted as the language of the proceeding under paragraphs 10 and 11(a) of the Rules. In coming to this decision, the Panel has taken the following into account:
1) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean;
2) The Panel is proficient in both English and Korean, capable of reviewing all the documents and materials in both languages and giving full consideration to the Parties’ respective arguments;
3) The Complainant and the Respondent use different languages, and neither of them likely understands the language of the other party. The Complainant is located in France while the Respondent is from the Republic of Korea. Therefore, English would be a fair language for both Parties;
4) The website to which the disputed domain name resolves includes links that are in English; and,
5) The disputed domain name itself is comprised of Roman letters, and it is not a Korean word.
In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English and the Respondent’s communications in Korean; (2) consider any relevant materials in Korean; and (3) issue a decision in English.
This element consists of two parts: first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.
The Panel finds that the Complainant has established registered rights in the trademark PATHE and that the disputed domain name is identical to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety, and the use of the gTLD extension “.net” may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (see Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182).
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is identical to the Complainant’s trademark.
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case.
The Panel finds that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. The Respondent has shown no actual intention to use the disputed domain name since it registered the disputed domain name in 2002. The disputed domain name resolves to a parking page which includes commercial links, some of which are related to cinema and movies, and offer to sell the disputed domain name. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name. Since the Complainant has been found to have made a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production shifts to the Respondent to prove its rights or legitimate interests in the disputed domain name. The Respondent, however, has failed to come forward with such relevant evidence, and thus, has failed to rebut the Complainant’s prima facie case.
Moreover, the nature of the disputed domain name carries a high risk of implied affiliation with the Complainant (see WIPO Overview 3.0, section 2.5.1).
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:
(i) circumstances indicating that the respondent has registered or 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 respondent’s website or location or of a product or service on the respondent’s website or location.
The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(iv) by registering the disputed domain name in order to attempt to attract, for commercial gain, Internet users to the Respondent’s website which the disputed domain name resolves to by creating a likelihood of confusion with the Complainant’s trademark.
The Panel finds the Respondent intentionally registered the disputed domain name – which is identical to the Complainant’s trademarks – in bad faith for several reasons. First, the Complainant’s commencement of its business and its use of the PATHE trademark since at least 1989 far pre-date the registration date of the disputed domain name in 2002. Second, the website to which the disputed domain name resolves contains links some of which are redirected to various other websites that concern movies and cinemas, the Complainant’s business and its products. These websites include, such as, “Free Full Movies”, “Online Ticketing Systems” and “The Best Streaming Package”, which are all related to the Complainant’s business. Third, the disputed domain name is almost identical to the Complainant’s own domain name <pathe.com>. Finally, the website is offering the disputed domain name for sale and the sale offer is located at the top of the page. These facts clearly show that the Respondent had knowledge of the Complainant’s trademark and business when it registered the disputed domain name and that it tried to show that there was a business relationship between the disputed domain name and the Complainant. Thus, it is clear that the Respondent registered the disputed domain name in bad faith with the knowledge of the Complainant’s trademarks and business.
Accordingly, the evidence shows that the Respondent likely knew of and had sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s trademarks and domain name in order to sell the disputed domain name to the Complainant or its competitors for commercial gain. The Panel further notes from the evidence of record, that the Respondent has tried to create a false association between the disputed domain name and the mark PATHE, and has tried to attract Internet users to its website for commercial gain by creating a likelihood of confusion due to such association.
As the conduct described above falls squarely within paragraphs 4(b)(i) and (iv) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <pathe.net> be transferred to the Complainant.
Andrew J. Park
Sole Panelist
Date: August 23, 2021