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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pink TV v. Manish Sahni

Case No. D2021-1661

1. The Parties

The Complainant is Pink TV, France, represented by PROMARK, France.

The Respondent is Manish Sahni, India.

2. The Domain Name and Registrar

The disputed domain name <pinkx.online> is registered with Hostinger, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2021. On May 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 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.

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 of the Complaint, and the proceedings commenced on June 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2021.

The Center appointed Alistair Payne as the sole panelist in this matter on July 5, 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.

4. Factual Background

The Complainant is a French company offering a TV channel, VOD services, a website with online forums and homosexual male pornographic content under the trade mark PINKX. The Complainant owns various trade mark registrations including French trade mark registration 3526838 filed and registered on September 24, 2007. It also owns the domain names <pinkx.fr> and <pinkx.eu> which resolve to its main website which has been in use since 2007.

The disputed domain name was registered on October 16, 2020 and formerly resolved to a pornographic website. At the time of this decision, it resolves to an inactive webpage.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns the registered trade marks as set out above and that the disputed domain name wholly incorporates the Complainant’s PINKX trade mark and is therefore confusingly similar to its registered trade mark. It says the addition of the generic Top Level Domain (“gTLD”) “.online” does not detract from this level of confusion.

The Complainant says that there is no evidence that the disputed domain name is in any manner connected to the Respondent or is a name that is commonly used by the Respondent. Moreover, the Respondent has no connection with the Complainant and has no licence or authorisation by the Complainant, to use the Complainant’s trade mark or the Complainant’s trade and corporate names “PinkX”. It also says that the Respondent did not register the disputed domain name in connection with a bona fide intent as the Respondent has no licence from the Complainant to use its trade mark and also had no right to register the disputed domain name. In addition, says the Complainant, the Respondent is not commonly known by the disputed domain name. Finally, under this head it says that the Respondent is reproducing the Complainant’s trade mark in the disputed domain name and is using it on his website in the same colour as the Complainant’s mark in order to benefit from the Complainant’s investment and reputation and to divert users of the Complainant’s website to the Respondent’s website. This says the Complainant is not a legitimate noncommercial or fair use of the disputed domain name and as a result the Respondent does not have rights or legitimate interests in the disputed domain name.

As far as bad faith is concerned, the Complainant says that firstly the Respondent reproduces the Complainant’s trade mark logotype on the website relating to the disputed domain name which is indicative of bad faith. Secondly, alleges the Complainant, as already mentioned above, the Respondent clearly attempts to attract Internet users by confusing them as to the affiliation of the two websites and finally, the fact that the Respondent’s identity is hidden on his website only strengthens the resulting presumption of bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns French trade mark registration 3526838 filed and registered on September 24, 2007 for PINKX. The disputed domain name wholly incorporates the Complainant’s PINKX trade mark and is therefore confusingly similar to it. The Panel finds that the addition of the gTLD “.online” does not detract from its finding of confusing similarity.

As a result, the Complaint succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that there is no evidence that the disputed domain name is in any manner connected to the Respondent and that the Respondent is not commonly known by the disputed domain name and that it is not a name that is commonly used by the Respondent. Further, the Complainant has submitted that the Respondent has no connection with the Complainant and has no licence or authorisation to use the Complainant’s trade mark or the Complainant’s trade and corporate names “PinkX”.

It has also submitted that the Respondent did not register the disputed domain name with a bona fide intent as it never licensed the Respondent to use its trade mark and the Respondent had no right to register the disputed domain name in the first place. In addition, says the Complainant, the Respondent is not commonly known by the disputed domain name.

The Complainant has also alleged that the Respondent is reproducing the Complainant’s trade mark in the disputed domain name and is using it on his website in order to benefit from the Complainant’s investment and reputation in its mark and to divert users of the Complainant’s website to the Respondent’s own website. The Complainant has asserted that this not a legitimate noncommercial or fair use of the disputed domain name and as a result that the Respondent does not have rights or legitimate interests in the disputed domain name.

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name which case has not been rebutted by the Respondent. As a consequence, the Panel finds that the Complaint also succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was registered on October 16, 2020, many years after the registration in 2007 of the Complainant’s French trade mark 3526838 and after its commencement of its business in the same year and of its main website to which its <pinkx.fr> and <pinkx.eu> domain names resolve. The Complainant’s PINKX mark is a reasonably distinctive trade mark for the Complainant’s media business which appears to be targeted at English and French speaking gay men. Although the Panel does not agree with the Complainant’s submission that its trade mark logotype is reproduced on the Respondent’s website and although the Respondent is based in India, it seems to the Panel most likely that the Respondent did not independently conjure up the disputed domain name and that its registration only occurred after the Respondent became aware of the Complainant’s PINKX mark and business, most likely as a result of the Complainant’s online presence or advertising.

Under paragraph 4(b)(iv) of the Policy the use of the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of a web site or location or of a product or service on the web site amounts to evidence of registration and use in bad faith.

The Respondent appears to have used the Complainant’s PINKX mark in the disputed domain name for his own commercial purposes in order to confuse and divert Internet users looking for the Complainant’s website. Although the Respondent is based in India the disputed domain name has a gTLD aimed at an international audience and the website at the disputed domain name is in English. There is no indication on the Respondent’s website screenshots filed in evidence by the Complainant that the website at the disputed domain name was aimed at any particular geographical region. The Complainant’s website is in both English and French and is also aimed at an international audience. It is likely that people seeing the disputed domain name may have incorrectly assumed that it would lead them to the Complainant’s website or to a website associated with the Complainant’s business. Accordingly, the Panel finds that the circumstances of this case fulfil the requirements of paragraph 4(b)(iv) of the Policy.

The Panel notes that at the date of this decision the Respondent’s website appears no longer to be active. Had the Respondent wished to challenge the Complainant’s allegations of registration and use of the disputed domain name in bad faith he had every opportunity to do so. The fact that instead of seeking to respond to the Complaint, the Respondent instead chose to take down his website only further reinforces the Panel’s view of the Respondent’s registration and use of the disputed domain name in bad faith. As a result, the Complaint also succeeds under this element of the Policy.

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 <pinkx.online> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: July 19, 2021

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