Television Francaise 1 v IGOR SISIMISI

WIPO Case No. D2024-4088

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

TELEVISION FRANCAISE 1 v. IGOR SISIMISI

Case No. D2024-4088

1. The Parties

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

The Respondent is IGOR SISIMISI, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <tf1fr.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2024. connection with the disputed domain name. On October 8, 2024, 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 October 15, 2024. In accordance with the Rules, paragraph
5, the due date for Response was November 4, 2024. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on November 9, 2024.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on November 15, 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.

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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.

Since the Respondent’s mailing address is stated to be in Ukraine, which is subject to an international conflict at the date of this Decision that may impact case notification, it is appropriate for the Panel to consider, in accordance with its discretion under paragraph 10 of the Rules, whether the proceeding should continue.

Having considered all the circumstances of the case, the Panel is of the view that it should. The Panel notes that the Center successfully sent the Written Notice of the Complaint to the Respondent’s physical address in Ukraine, however the same could not be delivered; the Panel notes that according to a Google Maps search the street provided does not exist in the listed city. The Panel also notes that the Center sent the Notification of Complaint by email to the Respondent at its email address as registered with the Registrar and to a

postmaster email address as specified by the Rules. The records indicate that the notification email was not
successfully sent to the Respondent due to the problem with the Respondent’s mailbox.

However, it is noted that, for the reasons which are set out later in this Decision, the Panel has no serious doubt (albeit in the absence of any Response) that the Respondent registered and has used the disputed domain name in bad faith and with the intention of unfairly targeting the Complainant’s goodwill in its

trademark.

The Panel concludes that the Parties have been given a fair opportunity to present their 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 is a French company founded in 1974, operating the first television channel in France, known as TF1. The Complainant’s official website is available at <tf1.fr>, in addition to other domain names held by the Complainant, such as <tf1.com>, registered on April 2, 1998.

The Complainant is the owner of the following, amongst other, trademark registrations (Annexes F1 to F4 to the Complaint):

- International trademark registration No. 556537, for the word and device mark TF1, registered on July 30,
1990, successively renewed, in classes 9, 16, 25, 28, 35, 38, and 41;
- International trademark registration No. 1452572, for the word and device mark TF1 SÉRIES FILMS,
registered on July 13, 2018, in classes 9, 16, 25, 28, 35, 38, and 41;
- French trademark registration No. (84)1290436, for the word mark TF1, registered on November 22, 1984,
successively renewed, in classes 1 to 42; and
- French trademark registration No. (88)1489724, for the word and device mark TF1, registered on
November 30, 1988, successively renewed, in classes 1 to 45.

The Complainant sent a Cease-and-Desist letter to the contact details disclosed both at the WhoIs record as well as at the webpage that resolved from the disputed domain name at the filing of the procedure which was returned due to the incorrect nature of the addresses mentioned on that website and on the WhoIs record

(Annex E2 to E5 to the Complaint).

The disputed domain name was registered on August 29, 2024, and presently resolves to an active webpage
– albeit a seemingly generic or template version – in Polish displaying information on investments; it also
refers to a “Nowak” individual which name does not correspond to that of the purported Respondent.

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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 asserts to be known as TF1, having become the leading European company in the TV programs production and broadcasting, remaining the TF1 channel the most watched television channel in Europe and having the TF1 trademark become well as already recognized by previous UDRP Panels

(Télévision Française 1 v. Stanley TAMODARIN, ITBS, WIPO Case No. D2021-3956; Television Francaise

1 v. Host Master, Transure Enterprise Ltd, WIPO Case No. D2022-1121).

The Complainant contends that the disputed domain name is confusingly similar to the Complainant's prior
TF1 trademark, as well as prior domain names <tf1.fr>, <tf1.com>, and <tf1.eu>.

Under the Complainant’s view, the disputed domain name consists solely of the Complainant's famous mark taken in its entirety, with the mere addition of the letters “fr” which are widely understood as the geographical code for France, thus increasing the likelihood of confusion with the Complainant, located in that country.

Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that:

i)         the Respondent is not currently and has never been known by the disputed domain name;

ii) at the time of the filing of the procedure, the disputed domain name resolved to a webpage referring to a Belgium company named “Orphic”, with no reference to “TF1FR”;

iii) the Respondent is not in any way related to the Complainant’s business, nor is it one of its distributors, also not carrying out any activity for or having any business with it;

iv) the Complainant has never licensed, authorized, or otherwise permitted the Respondent to register a domain name incorporating its trademarks, nor to make any use of its trademarks in order to distinguish its own business.

As to the registration of the disputed domain name in bad faith, the Complainant asserts that it is highly unlikely that the Respondent ignored the existence of the Complainant and its notorious trademark when registering the disputed domain name, being highly unlikely that the Respondent chose the disputed domain name without prior knowledge of the Complainant’s activities and trademark. Furthermore, the disputed domain name has never been used legitimately by the Respondent as it referred to a website about a fake company with no relation with the denomination “TF1FR”. Apparent non-use of the disputed domain name is further indicative of the Respondent’s bad faith conduct.

B. Respondent

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

7. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:

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

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(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.

The Complainant must prove in this administrative proceeding that each of the aforementioned three element
is present in order to obtain the transfer of the disputed domain name. In accordance with paragraph 14(a)
of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances,

the Panel shall decide the dispute based upon the Complaint.

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.

WIPO Overview 3.0, section 1.8.

Although the addition of other terms “fr” may bear on assessment of the second and third elements, the domain name and the mark for the purposes of the Policy.

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.

In that sense, and according to the evidence submitted, the Complainant has made a prima facie case against the Respondent who has not been commonly known by the disputed domain name and is neither licensed or authorized by the Complainant to use the Complainant’s trademarks, also not having been allowed to register or to use the disputed domain name by the Complainant. Also, the lack of evidence as to any trademarks registered by the Respondent corresponding to the disputed domain name, corroborates the indication of an absence of rights or legitimate interests in the disputed domain name.

Under these circumstances and absent evidence to the contrary, the Panel finds that second element of the
Policy has been established.

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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.

The Complainant registered its TF1 trademarks many years before the Respondent’s registration of the disputed domain name. The Panel is of the view that – in particular in combination with the “fr” designation which corresponds exactly to the location of the famous Complainant – the Respondent knew of the Complainant’s well-known TF1 trademarks when registering the disputed domain name.

Having reviewed the available record, the Panel concludes that the disputed domain name was registered and used in bad faith given: (a) the reputation of the Complainant’s trademark; (b) the composition of the disputed domain name; and, (c) the indication of what appears to be false or incomplete contact details.

For the reasons above, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith pursuant to paragraph 4(b)(iv) of 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 <tf1fr.com> be transferred to the Complainant.

/Wilson Pinheiro Jabur/
Wilson Pinheiro Jabur
Sole Panelist
Date: November 29, 2024