WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Télévision Française 1 v. Kenechi Anene

Case No. D2019-1578

1. The Parties

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

The Respondent is Kenechi Anene, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <tf1-fr.com> is registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2019. On July 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 2019 and July 30, 2019, the Registrar transmitted by email to the Center its verifications 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 July 30, 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 the same day.

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 August 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2019.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on August 28, 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, also known as TF1, is a French company operating in the field of production and broadcasting TV programs. Established in 1974, the Complainant is the first and oldest television channel in France. The Complainant’s official website is at “www.tf1.fr”.

The Complainant has submitted evidence that it is the owner of a number of trademark registrations, including the following:

TF1 international semi-figurative trademark registered on July 30, 1990, and registered under No. 556537 in classes 9, 16, 25, 28, 35, 38, and 41.

TF1.FR WWW.TF1.FR CLIQUEZ. VOUS SAVEZ TOUT. French semi-figurative trademark registered on November 30, 1999, and registered under No. 99826408 in classes 9, 16, 28, 35, 38, 40, 41, 42, 43, and 45.

TF1 French word trademark registered on November 22, 1984, and registered under No. 1290436 in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, and 42.

The disputed domain name <tf1-fr.com> was registered on June 3, 2019 and does not resolve to an active website. The disputed domain name was used for fraudulent email scheme purposes.

5. Parties’ Contentions

A. Complainant

The Complainant is Télévision Française 1, known as TF1, a European leading company in the field of production and broadcasting TV programs. The Complainant was founded in 1974 and operates the first and oldest television channel in France. In 1987 the Complainant was integrated in the TF1 Group. The Complainant has continuously expanded in France and internationally notably by producing and broadcasting original TV programs in the fields of entertainment, current affairs and fiction. TF1 is the most watched television channel in Europe today. The Complainant is the registered owner of a large number of trademarks since the early 1980s consisting of or including the wording “tf1” in France and other countries.

These rights have continuously been used in commerce since their registration.

In addition to the Complainant’s own advertising efforts, the TF1 trademarks have been the subject of several articles in the media, including national and international prints. Moreover, the TF1 Group has received numerous awards, including the “Grand Prix des Medias CB News” in 2018. Furthermore, the TF1 trademarks are used on the Complainant’s websites, on its business documents and on its commercial buildings.

The Complainant argues that the disputed domain name <tf1-fr.com> is confusingly similar to the Complainant’s registered trademark TF1. The disputed domain name incorporates the TF1 trademark in its entirety. The disputed domain name only differs from the Complainant’s trademark by the addition of the geographical indication “fr”, which should be understood as a reference to France. The addition of the common, descriptive and non-distinctive element and geographic abbreviation “fr”, linked with a hyphen to the trademark, is insufficient to avoid a finding of confusing similarity.

The Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. To the best of the Complainant’s knowledge, the Respondent is not currently and has never been known under the disputed domain name. The Respondent is not in any way related to the Complainant’s business, is not one of its distributors and does not carry out any activity for or has any business with the Complainant. 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 the trademarks in order to distinguish its own business.

In summary, the Respondent, who appears to be based in Nigeria, has no relationship with the Complainant. The website operated under the disputed domain name <tf1-fr.com> currently redirects towards an unreachable page. The disputed the domain name is used in a phishing and impersonation campaign under the email address [...]@tf1-fr.com. The email address has been used to impersonate a Complainant’s employee in order to fraudulently receive payment from a third party. The impersonation campaign lasted for several weeks, during which the victim of these illegal acts legitimately thought he was corresponding with the Complainant. The Complainant’s official domain name used for websites and email is <tf1.fr>. In addition to impersonating an employee of the Complainant, the Respondent most likely hacked into the email address of the Complainant’s employee in order to be able to continue the discussion with the victim without the latter noticing. Unfortunately, the Respondent’s fraudulent actions have borne fruit since the recipient of these messages paid a large sum of money to the Respondent, thinking that he was dealing with the Complainant.

The Respondent used the disputed domain name to send fraudulent emails by impersonating the Complainant in order to obtain the payment of a sum of money. In this regard, previous UDRP panels have considered that the use of a domain name reproducing a complainant’s trademark to send fraudulent emails does not constitute a bona fide offering of goods or services.

The Complainant maintains that the Respondent has registered and is using the disputed domain name in bad faith. The term “tf1” is not a common word in any language. It is highly unlikely, in view of the strong distinctive nature of the TF1 brand, that the Respondent’s choice to register a domain name confusingly similar to the Complainant’s trademarks was purely coincidental, given the addition of the letters “fr” that directly refers to the Complainant’s activity in France. It is clear that the disputed domain name has been registered for the purpose of disrupting the business of the Complainant and illegally obtain payment by impersonating the Complainant. Therefore, registering a domain name which includes the trademark TF1, with the addition of the descriptive letters “fr”, cannot be considered accidental. On the contrary, it appears that the Respondent registered the disputed domain name primarily to use it for fraudulent purposes, which is evidence of bad faith. The disputed domain name is used to impersonate at least one of the Complainant’s employees by sending fraudulent emails to the Complainant’s partner to obtain payment. As a result of these fraudulent schemes, the Respondent succeeded in extracting illegally a sum of money from the recipient of these messages, who legitimately believed he was dealing with the Complainant.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

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

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

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

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of a number of registered TF1 trademarks.

It is standard practice to disregard the generic Top-Level Domain (“gTLD”) under the confusing similarity test, which in this case is “.com”. The disputed domain name <tf1-fr.com> incorporates the Complainant’s trademark TF1 in its entirety with the addition of a hyphen and the geographical abbreviation “fr”, commonly referring to France. The addition of geographical abbreviation, such as “fr”, does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

Having the above in mind, the Panel concludes that the disputed domain name <tf1-fr.com> is confusingly similar to the Complainant’s trademark TF1 and that the Complainant has proven the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) that the Respondent uses or has made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute; or

(ii) that the Respondent is commonly known by the disputed domain name, even if the Respondent has not acquired any trademark rights; or

(iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Complainant’s trademark registrations for TF1 predate the Respondent’s registration of the disputed domain name <tf1-fr.com> which is confusingly similar to the Complainant’s trademarks. The Complainant has not licensed, approved or in any way consented to the Respondent’s use of the trademarks in connection with the disputed domain name.

There is no evidence in the case indicating that the Respondent has made any preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute. On the contrary, the submitted evidence indicates that the Respondent has been using the disputed domain name for a phishing and impersonation campaign in order to fraudulently lure a third party into making a payment to the Respondent. Due to the advanced impersonation activities of the Respondent, the third party falsely believed that the Complainant was the recipient of the payment. The Respondent’s use of the disputed domain name for fraudulent purposes such as impersonation and phishing cannot be held to constitute a bona fide use of the disputed domain name.

Although given the opportunity, the Respondent has not rebutted the Complainant’s prima facie case. It has not submitted any evidence indicating that the Respondent is the owner of any trademark or that the Respondent is commonly known by the disputed domain name. Furthermore, there is no evidence indicating that the Respondent intends to make a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proven the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:

(i) circumstances indicating the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or

(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding disputed domain name, provided there is a pattern of such conduct; or

(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.

As previously mentioned, the Complainant’s trademark registrations for TF1 predate the registration of the disputed domain name <tf1-fr.com>. The Panel notes that the Complainant’s TF1 trademarks are considered well known according to prior UDRP decisions cited by the Complainant. See for example Television Francaise 1 v. Julienne (Technologies Futures 1), WIPO Case No. D2000-1589. In the absence of any evidence to the contrary, the Panel agrees with the Complainant that the Respondent registered the disputed domain name <tf1-fr.com> with the Complainant’s trademarks and business in mind. The claim that the Respondent specifically targeted the Complainant is further demonstrated by the Respondent’s use of the disputed domain name. Although there is no evidence in the case record indicating that the disputed domain name has resolved to an active website, it is clear that the Respondent has actively been using the disputed domain name to generate an email address to impersonate an employee of the Complainant in order to lure a third party to make a financial payment to the Respondent. By using the disputed domain name in such a way, the Respondent has intentionally attempted to mislead the public by creating a confusion as to the source of the disputed domain name and the Respondent’s emails in order to illegally obtain a payment from an unsuspecting third party. Accordingly, the Panel finds that registration and use of the disputed domain name for purposes of sending fraudulent emails constitutes bad faith.

There is no evidence in the case record that refutes the Complainant’s submissions.

The Panel concludes that the Complainant has proven the requirements under paragraph 4(a)(iii) of the Policy and that the disputed domain name has been registered and used in bad faith.

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 <tf1-fr.com> be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist
Date: September 5, 2019