Télévision Française 1 v Serhii, Dev

WIPO Case No. D2025-0213

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Télévision Française 1 v. Serhii, Dev

Case No. D2025-0213

1. The Parties

The Complainant is Télévision Française 1, France, represented by AARPI Scan Avocats, France.

The Respondent is Serhii Dev, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <tf1new.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 January 20, 2025. On January 21, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 21, 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) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 22, 2025, 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 January 23, 2025.

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 January 28, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 17, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 19, 2025.

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The Center appointed Mireille Buydens as the sole panelist in this matter on February 24, 2025. 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, founded in 1974 and known as TF1, is a French leading company in the field of production and broadcasting TV programs. The Complainant has been developing for several years its digital services on its online platforms, notably “MYTF1”, allowing access to replay as well as video-on-demand services.

The Complainant is the owner of a large number of trademarks consisting of, or including, the wording TF1

(“the Trademark”), including notably:

- International semi-figurative trademark No. 556537, registered on July 30,1990

- International semi-figurative trademark No. 1452572, registered on July 13, 2018.

- The French trademark No.1290436 TF1 (word mark), registered on November 22, 1984.

The Complainant, active under the Trademark since many years, has received media awards as well as considerable media attention in France and abroad during the last years.

Through its official websites, notably located at <tf1.fr> and <groupe-tf1.fr>, the Complainant has used the
Trademark to promote its activities for many years. The Complainant also owns the following domain
names: <tf1.com> (registered on April 2, 1998), <tf1.fr> (registered on December 3, 1995), and <tf1.eu>

(registered on March 9, 2006).

The disputed domain name was registered on November 8, 2024.

According to the Complaint, the disputed domain name first resolved to a website that promoted fake financial services using the trademark of a Complainant’s French competitor “France 24”. When the Complaint was filed, it resolved to a website reproducing the “BOURSORAMA” and “BOURSOBANK” trademarks (BoursoBank is formerly known as Boursorama Bank, an Internet banking company and the French leader in online information about the stock market), containing a press article regarding financial services initially published by the AFP (Agence France-Presse, a French international news agency), and displaying a connection section enabling, according to the Complainant, personal data to be fraudulently collected for phishing and swindling purposes.

The Complainant sent a takedown notice to the hosting provider and a formal notice email to the Respondent on November 22, 2024. Complainant received no answer.

5. 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 the Trademark as it incorporates the Complainant’s Trademark in its entirety, with the mere addition of the generic term “new”. The term “new” is an English word which relates to the television news broadcast, which is the core of the Complainant’s business. The TF1 Trademark remains highly visible within the disputed domain name

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as it is the first term of the disputed domain name. The addition of the term “new” to the Trademark merely
increases the likelihood of confusion among consumers as these terms directly refer to the Complainant’s
business. The gTLD “.com” is not of distinguishing effect and must be removed from confusing similarity

analysis.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the
disputed domain name. The Complainant asserts that the Respondent is not in any way related to its
business and is not one of its distributors. The Complainant has never licensed, authorized, or otherwise
permitted the Respondent to register a domain name incorporating its Trademark, nor to make any use of
the Trademark in order to distinguish its own business. The Complainant further explains that, to the best of
its knowledge, the Respondent is not currently and has never been known under the disputed domain name.
The Complainant asserts that the website operated under the disputed domain name is used for fraudulent
and malicious purposes (collecting personal data which will then be used for phishing attempts). Such use of
the disputed domain name cannot constitute a bona fide offering of goods and services since its aim is to
use the positive, reputed image of the Complainant's Trademark to confuse and rip off consumers.

Third, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. Complainant and its Trademark when he registered the disputed domain name for inter alia the following reasons: (1) the Complainant has registered and used the Trademark, which is not a common word in any language, for many years before the registration of the disputed domain name, and the Trademark is a well- known trademark; (2) A simple search via Google or any other search engine using the keywords “TF1” or “TF1 new” demonstrates that all results relate to the Complainant’s websites or business; (3) The disputed domain name is confusingly similar to the Complainant’s Trademarks as it wholly incorporates the Trademark while the term “new” directly refers to the Complainant’s TV news broadcast activity. The Complainant further submits that the Respondent is using the disputed domain name in bad faith, inter alia because it resolves to a website reproducing the “Boursorama” and “BoursoBank” trademarks in the page's title and bottom tag, containing an article from the Agence France Press and a registration form enabling personal data to be fraudulently collected for phishing and swindling purposes. As a result, the Respondent instills confidence among Internet users (by using well-known trademarks in the disputed domain name and on the webpages) in order to convince them to give personal information, which will then be used for fraudulent activities.

As a result, the Complainant is asking that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

6.1. Procedural considerations – Respondent’s location

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, disclosed by the Registrar, appears to be in Ukraine, which is subject to an international conflict at 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 Respondent’s postal address is reported to be in Ukraine, which is subject to a conflict that may affect delivery of the written notice by postal mail, in terms of paragraph 2(a)(i) of the UDRP. The Respondent’s email address is however reported to be a .Gmail address.. The Panel notes that the record shows that the

written notice could not be delivered to the postal address disclosed by the Registrar in its verification.

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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 delivered to the disclosed Respondent’s email address.

6.2. Procedure on the merits

Dealing with the Respondent’s failure to file a Response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission, as it considers appropriate.

Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:

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

(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

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.

Based on the available records, 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 Panel finds the entirety of the TF1 Trademark is reproduced within the disputed domain name. The only the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the Trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

difference between the Trademark and the disputed domain name is the addition of the term “new”.

Further, the generic Top-Level Domain “.com” is a standard registration requirement and does not prevent the disputed domain name from being confusingly similar to the Trademark.

Accordingly, the disputed domain name is confusingly similar to the Trademark 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

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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 Respondent is not licensed by, nor affiliated with, the Complainant in any way. There is no evidence
that the Respondent is commonly known by the disputed domain name. On the contrary, it appears from the
evidence provided by the Complainant that the Respondent is active on the market as a web developer
under another name. There is no evidence of use or demonstrable preparations to use the disputed domain
name for a bona fide offering of goods or services. There is no evidence of legitimate noncommercial or fair
use of the disputed domain name, either. On the contrary, the Panel notes that the composition of disputed
domain name carries a risk of implied affiliation with the Complainant (see WIPO Overview 3.0, section
2.5.1). The disputed domain name indeed consists of the TF1 Trademark with the mere addition of the term
“new” which can be understood as the misspelling of the English word “news”, this word describing one of
the core businesses of the Complainant (which provides media and news services).

The Panel further notes that the disputed domain name resolved to a website reproducing the trademark and logos of French online banks (Boursorama and Boursobank), or other news services (France 24), as well as financial press articles (including a suspicious article promising to every French citizen a monthly revenue of EUR 30,000/month). The use of such well-known trademarks and articles is such as to inspire confidence in Internet users. The Panel notes that the website also contained a tab for entering personal data (a tab on

the right side of the website entitled “Mes listes”, “my lists” in English, which shows that one could get
personalized information by entering personal data). It therefore appears that the Respondent used the
disputed domain name to instill confidence among Internet users and gather personal information, which
could be used for fraudulent activities. Panels have held that the use of a domain name for illegitimate
activity, here, illicit gathering of personal data, can never confer rights or legitimate interests on a

respondent. WIPO Overview 3.0, section 2.13.1.

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.

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 notes that the Respondent has composed the disputed domain name by combining the Complainant’s well-known TF1 Trademark with the term “new”, which can be read as a misspelling of the term “news”, descriptive for one of the Complainant’s core businesses (providing television news services). A quick search for the term “TF1” online would have revealed to the Respondent the existence of the Complainant and its Trademark. As a result, the Panel finds that the Respondent was more likely than not aware of the Complainant’s Trademark at the time of the registration of the disputed domain name. WIPO Overview 3.0 section 3.2.2.

Moreover, panels have held that the use of a domain name for illegitimate activity, here illicit gathering of personal data, constitutes bad faith. In the present case, as pointed out above, the disputed domain name resolved to a website displaying financial information, including a suspicious article promising easy money to the Internet users, and showed the trademarks and logos of well-known financial institutions and news

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services (Boursorama, Boursobank, France24). The Respondent used the Complainant’s well-known confidence among Internet users and convince them to enter their personal data, which could be used for fraudulent purposes. This website does not contain any information allowing Internet users to identify the company operating the website. In light of this, it seems inconceivable that the Respondent would have registered and used the disputed domain name for a reason other than seeking to unduly benefit from the Complainant, its well-known TF1 Trademark, and associated goodwill.

The Panel finds that the Complainant has established the third 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 <tf1new.com> be transferred to the Complainant.

/Mireille Buydens/
Mireille Buydens
Sole Panelist
Date: March 4, 2025