WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pink TV v. Marc Lucas

Case No. D2019-0381

1. The Parties

The Complainant is Pink TV of Paris, France, represented by Cabinet Promark, France.

The Respondent is Marc Lucas of Rutland, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <pinktv.online> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2019. On February 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 19, 2019, 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 February 21, 2019, 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 February 21, 2019.

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 February 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2019.

The Center appointed William R. Towns as the sole panelist in this matter on April 2, 2019. 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 providing television broadcasting, pay-TV channels, video on demand (VOD), and online forums, news, and other media content for the lesbian, gay, bisexual, transsexual, and LGBT community. The Complainant is the owner of the following European Union and French trademark registrations for PINK, PINK TV, and PINK T.V. (collectively the “Complainant’s Marks”), in use by the Complainant since as early as 2004:

JURISDICTION

MARK

REG. No.

REG. DATE

CLASS

European Union

PINK

EU No.5153358

January 28, 2003

9, 38, 42

European Union

PINK T.V.

EU No. 2648475

July 22, 2003

9, 38, 41

European Union

PINK

EU No. 9595869

February 8, 2017

9, 35, 38, 42

France

PINK TV

No. 3271664

January 30, 2004

35, 38, 41

The Complainant also has registered the domain name <pinktv.fr> for use with the Complainant’s website.

The Respondent registered the disputed domain name <pinktv.online>on October 30, 2018. The disputed domain name resolves to a website prominently displaying the Complainant’s PINK TV logo, on which the Respondent has posted childhood pictures identified as his son. The Respondent’s website also includes a video news show – evidently a skit – produced by the Respondent with the assistance of family members. The Respondent’s video also prominently displays the Complainant’s PINK TV logo.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name <pinktv.online> is identical or confusingly similar to the Complainant’s PINK, PINK T.V., and PINK TV marks. According to the Complainant, the incorporation of its trademarks in the disputed domain name is sufficient to establish that the domain name is identical or confusingly similar to the Complainant’s Marks. The Complainant further observes that generic Top‑Level Domains (“gTLDs”) typically may be considered irrelevant in assessing identity or confusing similarity. The Complaint thus concludes that the new gTLD “.online” does not avoid the confusion between the disputed domain name and the Complainant’s Marks. The Complainant also asserts that punctuation (i.e., the dots after the “T” and “V” in the Complainant’s PINK T.V. mark) is irrelevant when assessing of confusing similarity of the disputed domain name to the Complainant’s Marks.

The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent has not been commonly known by the disputed domain name, has no connection with the Complainant, and has not been licensed or otherwise authorized to use the Complainant’s Marks. The Complainant further submits that the Respondent is not using the disputed domain name in connection with a bona fide offering of good or services, and that the Respondent is not making a legitimate noncommercial or other fair use of the disputed domain name. The Complainant contends that the Respondent for his own personal gain is using the disputed domain name to divert Internet users to the Respondent’s website, and enhancing the likelihood of confusion thereby created by reproducing the Complainant’s trademark logotype on the website.

The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent’s bad faith registration and use of the disputed domain name in bad faith is confirmed by the Respondent’s intentional reproduction of the Complainant’s trademark logotype on his website. The Complainant emphasizes that the Respondent is using the disputed domain to attract Internet users to the Respondents website, by creating a likelihood of confusion with the Complainant’s mark as to source, affiliation, or endorsement of the Respondent’s website.

B. Respondent

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

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the 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 with respect to the domain name; and

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

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name <pinktv.online> is identical to the Complainant’s PINK TV mark and confusingly similar to the Complainant’s PINK and PINK T.V. marks. In considering this issue, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.

In this case, the Complainant’s Marks are clearly recognizable in the disputed domain name.2 The Panel notes gTLDs are generally disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD. 3 In this instance the disputed domain name is identical to the Complainant’s PINK TV mark when disregarding the gTLD “.online” See, e.g., De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-1465 (<debeers.feedback> is identical to complainant’s DE BEERS mark).

Further, while the content of the website associated with a disputed domain name is typically disregarded by UDRP panels when assessing confusing similarity under the first element, the Panel notes, given the Respondent’s prominent display of the Complainant’s distinctive PINK TV logo on his website, that the disputed domain name appears calculated to play off the Complainant’s Marks, indicating targeting by the Respondent.4

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to register or use the Complainant’s Marks. The Respondent notwithstanding has registered the disputed domain name, which is identical and confusingly similar to the Complainant’s Marks. And as noted earlier, the Respondent is using the disputed domain name in a manner consistent with the targeting of the Complainant’s marks, reproducing on the Complainant’s distinctive PINK TV logo on his website.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it 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 has been commonly known by the domain name, even if it 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.

The Respondent has not come forward with any evidence of rights or legitimate interests in the disputed domain name. It is undisputed that the Respondent has not been authorized to use the Complainant’s marks, and in addition there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In the absence of any explanation from the Respondent, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. The Panel further finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy.

An assessment of a claim of fair use under paragraph 4(c)(iii) of the Policy entails consideration of the nature of the domain name, as well as circumstances beyond the domain name itself, and in some cases issues of commercial activity. The correlation between a disputed domain name and the complainant’s mark often is a central inquiry; the respondent’s use of a domain name is not “fair” in circumstances where the domain name falsely suggests affiliation with the trademark owner; nor can a use be “fair” if it is pretextual. Eli Lilly and Company and Novartis Tiergesundheit AG v. Manny Ghumman / Mr. NYOB / Jesse Padilla, WIPO Case No. D2016‑1698. The domain name must not be used as a pretext for commercial gain or other purposes inuring to the respondent’s benefit. See WIPO Overview 3.0, section 2.5 and cases cited therein.

After careful review of the attendant facts and circumstances in the record, the Panel finds no meritorious basis on which the Respondent could claim to be making a legitimate noncommercial or fair use of the disputed domain name. The Respondent plainly was aware of the Complainant’s Marks registering the disputed domain name. The Panel considers that the Respondent has targeted the Complainant’s Marks, and has used the disputed domain name to divert Internet users to the Respondent’s website through the creation of Internet user confusion. Internet visitors upon arriving at the Respondent’s website will immediately encounter the Complainant’s prominently displayed PINK TV logo, and easily could be confused whether the website they have arrived at is affiliated with, sponsored or endorsed by the Complainant.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel considers that the Respondent was aware of and had the Complainant’s Marks in mind when registering the disputed domain name. The Respondent in all likelihood has sought to exploit and profit from the Complainant’s Marks, using the disputed domain name to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent’s registration and use of the disputed domain name in the circumstances of this case constitutes bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <pinktv.online> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: April 10, 2019

1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions , Third Edition (“WIPO Overview 3.0”), section 1.7 .

2 When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.

3 The meaning of a particular gTLD, however, may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. See WIPO Overview 3.0, section 1.11 and cases cited therein. See also WIPO Overview 3.0, section 1.8. In this instance, for example, the gTLD “.online” could be a relevant even though disregarded for purposes of paragraph 4(a)(i) of the Policy.

4 See WIPO Overview 3.0, section 1.15.