WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Television Francaise 1 v. Nicolas Courtier, Channelstream

Case No. D2020-2639

1. The Parties

The Complainant is Television Francaise 1, France, represented by Scan Avocats AARPI, France.

The Respondent is Nicolas Courtier, Channelstream, France.

2. The Domain Name and Registrar

The disputed domain name <telefoot-streaming.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2020. On October 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 12, 2020, the Registrar 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 October 13, 2020 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 amended Complaint on October 13, 2020.

The Center verified that the Complaint together with the amended 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 of the Complaint, and the proceedings commenced on October 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2020.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on November 12, 2020. 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 Complainant is Television Francaise 1, also known as TF1, which is one of the European leading companies in the field of production and broadcasting TV programs founded in 1974 and which operates the first and oldest television channel in France.

This channel remains today one of the most watched one in Europe. Since 1977, the Complainant has been broadcasting the first weekly television show that is entirely devoted to football and has become the reference football TV show in France, attracting several hundred thousand TV viewers, and that is known as “Telefoot”.

“Telefoot” is now available in replay directly on the website of the Complainant.

Linked to this activity, the Complainant is the registered owner of numerous trademarks since the early 1980s consisting of or including the word “telefoot”, that have been continuously used in commerce since their registration, including:

1. the French semi-figurative trademark TELEFOOT TF No. 4507949 registered on December 13, 2018 in classes 16, 38 and 41;
2. the French word trademark TELEFOOT No. 99780742 registered on March 15, 1999 in classes 9, 28 and 41;
3. the French semi-figurative trademark TELEFOOT F No. 4230665 registered on December 2, 2015 in classes 9, 16, 24, 25, 28, 35, 38, 41 and 42;
4. the French figurative trademark TF TELEFOOT LA CHAINE DU FOOT No. 4675325 registered on August 18, 2020 in classes 9, 14, 16, 18, 21, 25, 28, 35, 38 and 41;
5. the French semi-figurative trademark TELEFOOT TF 1977 No. 4507962 registered on December 13, 2018 in classes 16, 38 and 41.

The Complainant also owns several domain names including the word “telefoot”, such as:

6. <telefoot.com>, registered on March 27, 2002 and duly renewed since then;
7. <telefoot.fr>, registered on November 26, 2001 and duly renewed since then;
8. <telefoot.net>, registered on March 10, 1999 and duly renewed since then.

The disputed domain name <telefoot-streaming.com> was registered on August 28, 2020 and, at the time of the Complaint, resolved to an active website in French and used for illegal broadcasting of football videos, with illegal use of the TELEFOOT trademarks. At the time of the decision, the disputed domain name resolves to a default page.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.

First of all, the Complainant asserts the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights, since it wholly incorporates the TELEFOOT trademark, which predates the registration of the disputed domain name and is well-known and continually used.

The Complainant considers that the addition of the term “streaming” and a hyphen between TELEFOOT and “streaming” does not avoid the finding of a confusing similarity between the disputed domain name and the TELEFOOT trademarks, and on the contrary increases this likelihood of confusion since the term “streaming” directly refers to the Complainant’s activities of live broadcasting of sporting events.

Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent is not currently and has never been known under the disputed domain name and is not in any way related to the Complainant’s business, and the Complainant has never granted any license, nor any authorization to the Respondent to register a domain name incorporating the TELEFOOT trademark, nor to make any use of the TELEFOOT trademark.

The Complainant also considers that the Respondent is not making a bona fide use of the disputed domain name, since it redirected, at the time of the Complaint, to a website that reproduced the TELEFOOT trademarks and illegally broadcast football matches.

Finally, the Complainant claims that the disputed domain name was registered and is used in bad faith.

The Complainant states that it is unlikely that the Respondent ignored the existence of the TELEFOOT trademarks when registering the disputed domain name, and that it is clear that the disputed domain name was directly targeted at the Complainant’s activities for the purpose of disrupting the business of the Complainant.

The Complainant argues that the disputed domain name was, at the time of the Complaint, used in bad faith, since it resolved to a website that illegally broadcasts football events with identical reproduction of the Complainant’s trademarks, while one of the main activities of the Complainant precisely consists in the broadcasting of football competitions.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has right;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

First of all, the Panel finds that the Complainant has provided evidence that it has rights in the TELEFOOT trademarks.

Then, the Panel notices that the disputed domain name is composed of (i) the TELEFOOT trademark in its entirety, to which has been added the term “streaming”, those terms being separated by a hyphen, and (ii) the generic Top-Level Domain (“gTLD”) “.com”.

The applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.

The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the domain name. This test typically involves a side‑by‑side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).

Moreover, the Panel concurs with the opinion of several prior UDRP panels which have considered that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, whether descriptive or meaningless, would not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview 3.0).

Regarding the disputed domain name, the Panel finds that the addition of the term “streaming”, which can be considered as a reference to the Complainant’s activities, to the TELEFOOT trademark does not avoid finding of confusing similarity.

Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.

These circumstances are:

(i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).

According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Panel finds that, at the time of the Complaint, the Respondent’s use of the disputed domain name was not in connection with a bona fide offering of goods or services, since the website to which it resolved illegally broadcasts football events and reproduced the TELEFOOT trademarks and other trademarks in which the Complainant has rights.

Moreover, the Panel considers that the Respondent has not been commonly known through the disputed domain name.

Finally, the Panel finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, since no license or authorization to use the Complainant’s trademark has been established, and on the contrary, the reproduction of the Complainant’s trademarks demonstrates the intention of the Respondent to mislead Internet users.

However, the Respondent did not reply to the Complainant’s contentions.

Therefore, the Panel considers that the Complainant has established that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith.

Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s 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 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.”

According to prior UDPR decisions, particular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant’s area of activity or natural zone of expansion), (ii) the chosen top-level domain (e.g., particularly where corresponding to the complainant’s area of business activity or natural zone of expansion), (iii) the content of any website to which the domain name directs, including any changes in such content and the timing thereof (see section 3.2.1 of the WIPO Overview 3.0).

First of all, the Panel finds that it is established that the TELEFOOT trademarks were registered before the registration of the disputed domain name, which wholly incorporates the TELEFOOT trademark plus the additional dictionary term “streaming” that corresponds to the Complainant’s activities, and are used in connection with the broadcasting of the reference football TV show in France, where the Respondent seems to be based.

Thus, the Panel finds that the Respondent, who knew or should have known, at the registration stage, that the disputed domain name would be confusingly similar to the Complainant’s trademarks given their reputation, registered the disputed domain name in bad faith.

Doing so, the Panel finds that the Respondent intentionally attempted to hold the disputed domain name, by creating a likelihood of confusion with the TELEFOOT trademarks, all the more so as the Respondent added the “streaming” term to the TELEFOOT trademark in the disputed domain name, which can be considered as referring to the Complainant’s activities of broadcast of sporting events.

Furthermore, the Panel considers that the Complainant demonstrated bad faith use of the disputed domain name at the time of the Complaint, since it resolved to an active website on which football events were illegally broadcasted, and on which not only the TELEFOOT trademarks but also other trademarks in which the Complainant has rights were reproduced, notwithstanding the fact that the disputed domain name resolves to a default page at the time of this decision, such “passive holding” does not prevent any finding of bad faith.

Finally, the Panel considers that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademarks within the meaning of paragraph 4(b)(iv) of the Policy.

Consequently, in view of all the circumstances of this case, the Panel finds that the disputed domain name has been registered and is being used in bad faith according to Policy, paragraph 4(a)(iii).

7. Decision

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 <telefoot-streaming.com> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Date: November 26, 2020