Television Francaise 1 v Bernard Admin

WIPO Case No. D2024-4387

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

TELEVISION FRANCAISE 1 v. Bernard Admin

Case No. D2024-4387

1. The Parties

The Complainant is TELEVISION FRANCAISE 1, France, represented by AARPI Scan Avocats, France.

The Respondent is Bernard Admin, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <tf1-programmefran.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 25, 2024.

On October 25, 2024, the Center transmitted by email to the Registrar a request for registrar verification in

connection with the disputed domain name. On October 25, 2024, 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 (REDACTED FOR PRIVACY, Privacy service provided by

Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication

to the Complainant on October 28, 2024, 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 30, 2024.

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 November 6, 2024. In accordance with the Rules,

paragraph 5, the due date for Response was November 26, 2024. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on December 4, 2024.

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The Center appointed Philippe Gilliéron as the sole panelist in this matter on December 12, 2024. 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. Further Procedural Considerations

Under paragraph 10 of the Rules, the Panel is required to ensure that the Parties are treated with equality

and that each Party is given a fair opportunity to present its case, and also that the administrative proceeding

takes place with due expedition.

The location of the Respondent as disclosed by the Registrar is stated to be in Ukraine, which is subject to

an international conflict on the date of this Decision that may impact case notification. It is therefore

appropriate for the Panel to consider, in accordance with its discretion under paragraph 10 of the Rules,

whether the proceeding should continue.

The Panel notes that the record shows that the Written Notice could not be delivered to the address

disclosed by the Registrar in its verification. However, it appears that the Notification of Complaint’s emails

were delivered to the Respondent’s email address, as provided by the Registrar. Therefore, there is no

evidence that the case notification was not successfully received by the Respondent. In addition, the Panel

also notes that the disputed domain name was recently registered on August 8, 2024.

The Panel concludes that the Respondent has been given a fair opportunity to present its case, and so that

the administrative proceeding takes place with due expedition, the Panel will proceed to a Decision

accordingly.

5. Factual Background

The Complainant, which was founded in 1974, known as TF1, is one of the European leading companies in

the field of production and broadcasting TV programs.

In 1987, the Complainant integrated the TF1 Group, which includes several generalist and thematic

television channels, including TF1, as well as production and distribution companies for the film and

television industries. Since then, it has continuously expanded, both in France and internationally. It is today

the most watched television channel in France.

The Complainant has further been developing for several years its digital services on its online platforms,

notably “Mytf1”, allowing access to replays as well as video-on-demand services. The Complainant carries

out its online activities through its official websites, notably located at domain name <tf1.fr>, registered on

December 3, 1995, and <groupe-tf1.fr>, registered on March 24, 2010. The Complainant further owns

<tf1.com> since April 2, 1998, as well as <tf1.eu> since March 9, 2006.

The Complainant owns numerous trademarks consisting in all or in part of the acronym TF1, both in France

and internationally, such as:

- International Reg. no. 556537 in classes 9, 16, 25, 28, 35, 38, and 41, registered on July 30, 1990;

- French trademark no. 1290436 in all classes, registered on November 22, 1984;

- French trademark no. 1489724 in all classes, registered on November 30, 1988.

On August 8, 2024, the Respondent registered the disputed domain name. The disputed domain name

directs to a website which reproduces a mark that is purportedly owned by a French competitor of the

Complainant in the audiovisual sector, contains purportedly fake press articles written in French, and

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incorporating a picture of a TV news broadcast by the Complainant as well as purportedly fake posts on a

third-party social network allegedly published by public figures in which they allegedly promote financial

investment solutions.

The website connected to the disputed domain name further contains a form inviting users to provide their

personal data. After having completed the form, users are redirected to a third-party website and called back

by an advisor to offer a subscription to financial services.

On October 8, 2024, the Complainant sent both a takedown notice to the hosting provider and a cease-and-

desist letter to the Respondent. A reminder was sent by the Complainant to the hosting provider on

October 24, 2024, to no avail.

6. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer

of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is confusingly similar to its TF1

trademark as it entirely incorporates such trademark and that the mere addition of descriptive terms such as

“programme” and “fran”, which will be understood as referring to France, where the Complainant is seated

and carries out its activities, does not exclude the resulting likelihood of confusion.

The Complainant further is of the view that the Respondent does not have any rights or legitimate interests in

the disputed domain name. The Respondent is not known under that name and the Complainant has never

authorized the Respondent to use its trademark as a basis for a domain name. The website operated under

the disputed domain name, which is clearly used for fraudulent and malicious purposes, cannot be

considered a bona fide offering of goods or services.

The Complainant finally considers that the disputed domain name was registered and is being used in bad

faith. Taking into account the Complainant’s strong reputation, the choice of the disputed domain name

cannot be the result of a coincidence. The use made of the disputed domain name as described above,

which directs users to a website inviting them to subscribe to dubious financial services, is a clear use in bad

faith.

B. Respondent

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

7. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “[…] 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”.

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to

obtain an order that the disputed domain name should be cancelled or transferred:

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

the Complainant has rights;

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

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

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily 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 disputed domain name. WIPO Overview of WIPO Panel Views on

Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain

name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The

addition of the terms “programme”, and “fran”, which will be understood by users as referring to France

where the Complainant is based and carries out its activities, do not prevent a finding of confusing similarity

between the disputed domain name and the Complainant’s trademark.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate

rights or legitimate interests in a disputed domain name.

Although 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 difficult 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 a prima facie case 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 (although the burden of

proof always remains on the complainant). If the respondent fails to come forward with such relevant

evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section

2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case

that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has

not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence

demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the

Policy or otherwise.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy

establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall

be evidence of the registration and use of a domain name in bad faith.

Several panels have acknowledged the well-known character of the TF1 trademark (Télévision Française 1

contre Stanley TAMODARIN, ITBS, WIPO Case No. D2021-3956; Télévision Française 1 v. Host Master,

Transure Enterprise Ltd, WIPO Case No. D2022-1121). As a result, it is inconceivable that the Respondent

would not have been aware of the TF1 trademark when it chose to register the disputed domain name

incorporating the said trademark with related descriptive terms.

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Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain

name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a

respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have held that the use of a domain name for illegitimate activity, such as in the present case the

capture of personal data to invite users to potentially fraudulent financial services, which likely amounts to a

scam, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds

the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

8. 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 <tf1-programmefran.com> be transferred to the Complainant.

/Philippe Gilliéron/

Philippe Gilliéron

Sole Panelist

Date: December 20, 2024