The Complainant is Canal + France of Issy-les-Moulineaux Cedex, France, represented internally.
The Respondents are Moniker Privacy Services and Janice Liburd, Porchester Partners Inc. of Pompano Beach, Florida, United States of America and of Panama, Panama, respectively.
The disputed domain name <canalplusafrique.com> is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2010. On November 25, 2010, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On November 29, 2010, Moniker Online Services, LLC. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 29, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 3, 2010.
The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on December 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2010. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 28, 2010.
The Center appointed Luca Barbero as the sole panelist in this matter on January 6, 2011. 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 is Canal + France, a French company providing paid television services belonging to Canal + Group.
The Complainant and its parent company Canal + Group are the owners of several trademark registrations for CANAL PLUS and CANAL+. Complainant is the co-owner of the International trademark CANAL PLUS No. 619540, filed on May 30, 1994, in classes 9, 16, 25, 28, 35, 38 and 41, and of the French Trademark CANAL PLUS, No. 3692088, filed on November 18, 2009, in classes 9, 16, 35, 38, 41 and 42.
The Complainant and its Group are the registrant of a number of domain names consisting of or including the sign CANAL PLUS, including the following: <canalplus-afrique.com>, registered on September 21, 2009; <canalplus-afrique.fr>, registered on September 21, 2009; <canalplus-africa.fr>, registered on September 21, 2009; <canalplus-africa.com>, registered on September 21, 2009; <canalplus.info>, registered on July 30, 2001; <canalplus.biz>, registered on March 27, 2002; <canalplus.com>, registered on May 20, 2006; <canalplus.fr>, registered on September 25, 2008; <canalplus.mobi>, registered on June 12, 2006; <canalplus.net>, registered on January 12, 2003; <canalplus.org>, registered on August 22, 2000; <canal-plus.info>, registered on July 30, 2001; <canal-plus.biz>, registered on November 19, 2001; <canal-plus.com>, registered on March 28, 1996; <canal-plus.fr>, registered on January 1, 1995; <canal-plus.mobi>, registered on June 12, 2006; <canal-plus.net>, registered on December 25, 2006, and <canal-plus.org>, registered on August 30, 2001.
The disputed domain name <canalplusafrique.com> has been registered by the Respondents on March 12, 2010, and it has been used for a web site that consists of a holding page with pay-per-click advertising for a variety of goods and services, including satellite television.
The Complainant points out that Canal + France is well known for its production of premium and specialized television channels, counting 12.5 million subscriptions. The Complainant highlights that its associated company Canal + Overseas edits the Canal + channel specifically for the African continent and ensures the broadcasting of more than 300 channels by satellite in 40 African countries, presumably through its subsidiary Canal + Afrique.
The Complainant contends that the disputed domain name is confusingly similar to trademarks and domain names in which the Complainant has rights as it reproduces the well-known trademark CANAL PLUS in its entirety.
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant highlights its exclusive rights in the mark CANAL PLUS and states that the “www.canalplusafrique.com” web site does not offer any goods or commercial services sponsored by the Complainant.
The Complainant underlines that the web site under the disputed domain name displays various commercial links leading to pornographic and satellite television web sites, thereby tarnishing the Complainant’s marks and diversion of the Internet users to third parties’ web sites.
With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondents registered the disputed domain name, confusingly similar to the Complainant’s well-known mark, primarily for the purpose of disrupting the Complainant’s business. The Complainant informs the Panel that it offers satellite television services and adult programs on its web site under <canalsat.fr>. The Complainant also states that the Respondents are intentionally attempting to attract, for commercial gain, Internet users to the website under the disputed domain name by creating a likelihood of confusion as to the sponsorship, affiliation or endorsement of the website by the Complainant.
The Respondents did not reply to the Complainant’s contentions.
According to paragraph 15(a) of the Rules: “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”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondents is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Complainant has provided evidence of ownership of valid trademark registrations for CANAL PLUS.
Pursuant to a number of prior decisions rendered under the Policy, the addition of a geographical suffix to a trademark, such as the addition of “afrique” to CANAL PLUS, is a common way of indicating subdivisions of global enterprises, or the geographical area where goods and services are offered under a trademark. The Complainant, itself, has evidenced that it uses the domain name <canalplus-afrique.com> in connection with the offering of its services in Africa. Therefore, in the Panel’s opinion, Internet users are likely to assume that the Complainant is the sponsor of, or is associated with, the web site identified by the disputed domain name. See along these lines, inter alia, Honda Motor Company Limited v. LOKITA Enterprises, WIPO Case No. D2003-0507 (<hondaindia.com>) and Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768 (<playboyturkey.com>).
Also, the addition of the suffix “.com” is non-distinctive since it is required for the registration of a domain name (see, i.a., RX America, LLC. v. Mattew Smith, WIPO Case No. D2005-0540).
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Complainant must show that the Respondents have no rights or legitimate interests in respect of the disputed domain name. The Respondents may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondents’ rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with UDRP precedent, it is sufficient that the Complainant show a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain name, in order to shift the burden of evidence on the Respondents. If the Respondents fail to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection c/o Domain Admin, NAF Claim No. FA852581).
In the case at hand, by not submitting a Response, the Respondents have not rebutted the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
Moreover, it has been repeatedly stated that when a respondent does not avail himself of his right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondents and the Complainant. The Respondents are not licensees of the Complainant, nor have the Respondents otherwise obtained an authorization to use the Complainant’s trademarks.
Furthermore, there is no indication before the Panel that the Respondents are commonly known by the disputed domain name, have made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that they intend to make a legitimate, non-commercial or fair use of the disputed domain name.
The Panel notes that the disputed domain name is pointing to a sponsored pay-per-click web site mainly aimed at directing visitors to competing third party commercial web sites.
The Panel finds that under the circumstances the use of the disputed domain name merely for a pay-per-click page which directs visitors to various third party commercial web sites, including sites providing television services, does not constitute a legitimate, non-commercial use of the disputed domain name under the Policy, as found in Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044.
Along the same lines were the decisions Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 and Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787, where the panel found that the respondent’s use of the domain name to resolve to a directory of commercial web sites was not a bona fide offering of goods and services because “(a) the disputed domain name is fairly unique and specific to the Complainant; (b) there is no apparent connection between the disputed domain name and the Respondent’s website directory [...]; and (c) there is no other apparent legitimate justification for the Respondent’s registration and use of the disputed domain name for its website”. Similarly, in Bilfinger Berger AG v. eService Finance Dept., WIPO Case No. D2003-0827, the panel stated that “[…] although services are offered in the form of a directory, the services do not correspond to a bona fide offering by the Respondent. [The Domain Name <bilfinger.com>] is only used as a link to a generic directory [...]. There is no indication that the links contained on the website are related to the Respondent or to the BILFINGER name”.
See also, inter alia, Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146, where the panel stated: “the evidence in the Complaint indicates that the website at the disputed domain name is commercial in the sense that it appears to provide links to other sites being competitors of the Complainant, and of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit. Such use does not constitute a legitimate non-commercial or fair use of the disputed domain name by the Respondent within the meaning of Paragraph 4(c)(iii) of the Policy”.
Thus, in light of the above, the Panel finds that the Respondents have no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.
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 disputed 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 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 holder’s website or location or of a product or service on the holder’s website or location.
As to bad faith at the time of the registration, the Panel notes that, in light of the widely known character of the Complainant’s earlier trademark CANAL PLUS and of the several prior domain name registrations corresponding to CANAL PLUS owned by the Complainant, including the domain name <canalplus-afrique.com>, the Respondent was likely aware of the Complainant’s trademark when registered the disputed domain name.
The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks, as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868 “[i]t is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
The Panel finds that, in light of the contents of the web page linked to the disputed domain name, where several sponsored links advertising television services are published, Internet users may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s web site. Moreover, in all likelihood, the Respondent profits by earning pay per click revenues (see, inter alia, Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044, Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286).
The Panel, therefore, finds paragraph 4(b)(iv) of the Policy to be applicable in this case, since the Respondent has attempted to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s services.
As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response and in this case, as stated in Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146, “it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.
Along the same lines is the decision Renegade LLC v. Kenneth Gibert, WIPO Case No. D2008-0646, in which the panel stated: “[t]he Complainant argues that the Domain Names were registered and used in bad faith to divert Internet users to the Respondent’s website for commercial gain based on confusion with the Complainant’s mark. Again, the Respondent has not denied these allegations or provided any evidence to support a finding that it registered and used the Domain Names in good faith”.
In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith.
For all 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 <canalplusafrique.com> be transferred to the Complainant.
Luca Barbero
Sole Panelist
Dated: February 1, 2011