TÉLÉVISION FRANÇAISE 1 (TF1) V. KHALED BITAT

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Télévision Française 1 (TF1) v. Khaled Bitat

Case No. D2007-0137

1. The Parties

The Complainant is Télévision Française 1 (TF1), France, represented by
Inlex IP Expertise, France.

The Respondent is Khaled Bitat, United States of America, represented by
Sparks Willson Borges Brandt & Johnson, PC, United States of America.

2. The Domain Name and Registrar

The disputed domain name (ushuaiavoyages.com) is registered with Go
Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center
(the “Center”) on January 31, 2007. On February 2, 2007, the Center
transmitted by email to Go Daddy Software a request for registrar
verification in connection with the domain name at issue. On February 2,
2007, Go Daddy Software transmitted by email to the Center its
verification response confirming that the Respondent is listed as the
registrant and providing the contact details for the administrative and
technical contact. The Center verified that the Complaint satisfied the
formal requirements of the Uniform Domain Name Dispute Resolution Policy
(the “Policy”), 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(a) and 4(a), the Center
formally notified the Respondent of the Complaint, and the proceedings
commenced on February 6, 2007. In accordance with the Rules, paragraph
5(a), the due date for Response was February 26, 2007. The Response was
filed with the Center on February 22, 2007.

The Center appointed Alan L. Limbury as the sole panelist in this matter
on March 7, 2007. 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 city of Ushuaia is the capital of the Argentine province of Tierra
del Fuego. It is the most southerly city in the world.

The Complainant broadcasts an international television programme under
the name USHUAIA. It hold numerous registered French and International
trademarks for the word USHUAIA and for stylized forms of that word in
respect of virtually all the goods and services in a large number of
classes, including French trademarks Nos.1525551 registered on April 21,
1989, covering, amongst many goods and services, “reservation of hotel
rooms for travellers”; 99782334 registered on March 22, 1999, covering,
amongst many goods and services, “arranging of tours” (in French
“organisation de voyages”) and 033260299, registered on December 1,
2003, covering, amongst many goods and services “transport of people or
goods; arranging of tours, cruises; escorting of travellers; air
transport; tourist offices (except hotel reservations, boarding houses)”
and “booking of seats (transport).” The Complainant’s international
trademark No. 845073, registered on June 1, 2004, in respect of numerous
goods and services including “arranging of tours, of cruises; escorting
of travelers’, comprises the stylized word USHUAIA with the letters
“shua” being placed in front of a small circle, reminiscent of a setting
sun.

The Complainant is also the registrant of several domain names
incorporating the word ushuaia, including (ushuaia.fr), (ushuaia.com),
(ushuaia.us), (ushuaiamagazine.com) and (ushuaiat.com).

The Respondent registered the disputed domain name (ushuaiavoyages.com)
on June 15, 2005. Prior to June 15, 2006, the domain name resolved to a
website in the French language, operated by ‘Ushuaia Voyages’ of Hydra,
Algeria, and which, under a depiction of a circle surrounded by curves
(implying movement) behind the first letter “U” in USHUAIA, followed by
the smaller word VOYAGES, offered holiday travel agency services to
various destinations for “ceux qui, comme nous, ont le goût du Voyage et
de l’evasion” and offered experts in different kinds of holidays,
including at the beach, at the snow or at the other end of the world (“à
l’autre bout du monde”).

In response to a cease and desist letter from the Complainant dated June
15, 2006, addressed to ‘Ushuaia Voyages’ in Algeria, that use of the
website ceased and the enterprise changed its name. In October, 2006,
the Complainant’s counsel communicated with the Respondent, seeking
transfer to the Complainant of the disputed domain name. The Respondent,
writing as CEO of Landmarksoft Corp. of Colorado Springs, and after
having taken legal advice, contended that the Complainant would not have
an easy time having a claim upheld but indicated interest in voluntarily
turning over the domain name. In response to an offer of “$500 maximum”
from the Complainant, the Respondent, on November 28, 2006, stated that
he had incurred considerable legal expenses and further expenses in
appraising the domain name and that “its value is considerably higher
than your offer. I am willing to turn over the ownership of the domain
name to your client for a sum of ten thousand Euros”.

5. Parties’ Contentions

A. Complainant

The Complainant says the disputed domain name is identical or
confusingly similar to its USHUAIA trademarks, the addition of the term
“voyages” being totally irrelevant and having no impact on the overall
impression of the dominant part USHUAIA. The extension “.com” is
likewise irrelevant.

The Respondent has no rights or legitimate interests in the disputed
domain name, since he is not known under the USHUAIA or USHUAIA VOYAGES
trademarks and has no registered marks. The Complainant has not licensed
him to use the USHUAIA marks and has no relationship with him. The
Respondent used the domain name to redirect users to the French language
website of a travel agency which displayed a counterfeit of the USHUAIA
trademark and its circle logo. This was done with knowledge that the
Complainant’s well known and internationally publicized USHUAIA
trademarks covered “tourist offices” and “arranging of tours”. The
suspension of the website after the first cease and desist letter
demonstrates that the Complainant’s action was well founded; that the
registrant has no rights; that the use was not bona fide and that the
Respondent knew of the Complainant and of its USHUAIA marks.

The Respondent registered and has used the domain name in bad faith,
since the Complainant’s distinctive marks and its websites are well
known in France and throughout the world. The Respondent could not have
ignored their existence, especially since he is a French speaking
person. Prior to the first cease and desist letter, the Respondent was
renting the disputed domain name to a fraudulent, counterfeiting website
and was therefore intentionally diverting Internet users for his own
commercial gain by creating a likelihood of confusion with respect to
the source, sponsorship, affiliation or endorsement of the website.
Accordingly the domain name was registered primarily for the purpose of
disrupting the business of the Complainant and to attract Internet users
to a competitor website.

After the second cease and desist letter the redirection of the disputed
domain name ceased and it is still inactive. To refuse transfer yet to
engage in passive use in these circumstances is cybersquatting behaviour
amounting to bad faith use: Telstra Corporation v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. It is not possible to conceive of any
plausible or contemplated active use that would not be illegitimate:
Thomas Cook UK Limited v. CHS Tech Services Limited, WIPO Case No.
D2002-0882.

The Respondent’s request for 10,000 Euros is further evidence of bad
faith: Elle Bleu, EBI v. Alfred Mitchell Inc., WIPO Case No. D2003-0811.

B. Respondent

The Respondent says the Complainant has failed to discharge its burden
of proof as to all three elements it must establish.

In a sworn affidavit, the Respondent says he is the sole owner and
President of LandmarkSoft Corp., which designs and develops websites for
clients and registers domain names for their use. On June 15, 2005, he
registered the disputed domain name following a request to do so from a
client, Mr. Benmansour of Repere Communications. He developed the
website in consultation with the client and it went live in June 2005.
At the time of registration, the Respondent was unaware of the existence
of the Complainant’s registered trademarks for USHUAIA and assumed that
his client had chosen it because it is the name of a tourist
destination. He became aware of those marks only when he received the
[second] cease and desist letter. He believes Mr. Benmansour decided to
abandon his planned business in order to avoid potentially lengthy and
costly litigation with the Complainant.

Annexed to the affidavit is the Respondent’s email correspondence with
the client, including an email dated June 26, 2006, asking, without
elaboration, that the disputed domain name be taken off-line and
re-directed to Landmarksoft as a sub-domain.

The Respondent contends that, under the law of many countries, the
Complainant’s mark is either unregistrable or limited in strength
because it is merely a geographic place name. Because of the relative
weakness of the mark, even small differences between the domain name and
the mark are relevant to the question of whether it is confusingly
similar. The addition of “voyages” is sufficient to remove it from the
realm of confusingly similar: Brisbane City Council v. Warren Bolton
Consulting Pty Ltd., WIPO Case No. D2001-0047. The font used on the
website created by the Respondent also acts as a distinguishing
characteristic and is likely to dispel any initial consumer confusion.

At the time of registration, the Respondent had a legitimate business
reason to register the disputed domain name. The present lack of use is
the result of the Complainant’s successful demands against Mr.
Benmansour, whose decision not to enter a legal battle with the
Complainant cannot now be used as evidence of the Respondent’s lack of
legitimate interest at the time of registration.

The website content is evidence of a bona fide commercial purpose at the
time the domain name was registered because the website is clearly not
designed to misdirect or mislead consumers.

As to bad faith, the Respondent says the Complainant relies on (i) its
mark being so famous that the Respondent must have heard of it; (ii) Mr.
Benmansour’s election to shut down the website; and (iii) the
Respondent’s passive holding and offers to sell.

As to (i), the Respondent says that the Complainant overstates the fame
of its mark. Its earliest registration was after the Respondent left
Algeria and became a resident of the United States of America. It is
therefore understandable that the Respondent had not heard of the
Complainant’s USHUAIA mark or any of its related programming until he
received the cease and desist letter. The Complainant is not the only
holder of a registered mark for USHUAIA nor of domain names containing
that word. The city of Ushuaia in Tierra del Fuego is a popular tourist
destination. The Respondent suggests it is more likely that the
registration of the disputed domain name was to attract consumers who
were interested in unusual tourist destinations rather than a bad faith
attempt to create confusion among consumers familiar with the
Complainant’s mark.

The Respondent refers to the various decisions regarding the application
of the Policy to geographical indications incorporated in domain names
and annexes a copy of the Report of the Second WIPO Internet Domain Name
Process of September 3, 2001.

As to (ii), the Respondent says Mr. Benmansour’s decision to shut down
the website rather than fight the Complainant is not evidence of bad
faith and that the two websites are too dissimilar for the purpose to
have been to disrupt the Complainant’s business.

As to (iii), the Respondent says that passive holding is not, in this
case, evidence of bad faith. In stating that it is not possible to
conceive of any plausible actual or contemplated active use of the
domain name by the Respondent which would not be illegitimate, the
Complainant suffers from an acute lack of imagination. The Respondent’s
client had the expectation of offering travel services and the
Respondent had the completely legitimate purpose of fulfilling its
contractual obligations with Repere Communications and Mr. Benmansour to
design and launch a website. Using the name of a popular tourist
destination is not so unusual in that context and the mere use of
Ushuaia Voyages for that purpose is not evidence of bad faith. Once Mr.
Benmansour decided to abandon his business plans in order to avoid a
costly legal battle with the Complainant, the Respondent was left owning
the domain name. His failure to turn it over to the first person to make
a demand is not evidence of bad faith.

The Respondent made an offer to sell only in response to the
Complainant’s offer to pay his costs. Not every offer to sell a disputed
domain name should be considered evidence of bad faith: The Nasdaq Stock
Market, Inc. v. Green Angel, WIPO Case No. D2001-1010.

6. Discussion and Findings

Paragraph 15(a) of the Rules requires the Panel to decide a complaint on
the basis of the statements and documents submitted and in accordance
with the Policy, the Rules and any rules and principles of law that it
deems applicable.

To qualify for cancellation or transfer, the Complainant must prove each
element of paragraph 4(a) of the Policy, namely:

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 domain name; and

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

While geographical names are not protected as such under the Policy,
they may nevertheless qualify for protection under the Policy as
trademarks if registered as such or if shown by evidence of their use to
have become distinctive of the goods or services of a particular trader.
In this respect they may be protected as trademarks in the same way as
generic words shown to have become distinctive. It is therefore a matter
of evidence in each case as to whether a complainant has proved that the
geographical name functions as a trademark: see Mt. Eliza Graduate
School of Business and Government Ltd. v. Rom Graphics, eResolution Case
No. AF-00831; Daydream Island Resort Investments Pty Ltd. v. Alessandro
Sorbello, eResolution Case No. AF-0586 and Stadt Heidelberg v. Media
Factory, WIPO Case No. D2001-1500.

The fact that a trademark may also be a geographical indication means
that the trademark owner cannot claim exclusive use of the mark: see
Sorel Corporation v. Domaine Sales Ltd, NAF Case No. FA0102000096674. It
is therefore a matter for evidence in each case as to whether the
elements of illegitimacy and bad faith are established: see Maui Land
and Pineapple Co., Inc. v. Kapalua Land Co., NAF Case No.
FA0008000095544; Bondy Way Development Corporation and Ashburn Village
Development Corporation v. Re/Max Premier, WIPO Case No. D2000-0322;
Oshawa Centre Holdings Inc. v. M. Bharwani, eResolution Case No.
AF-0820; MAHA Maschinenbau Haldenweg GmbH & Co. KG v. Deepak Rajani,
WIPO Case No. D2000-1816 and Sorel (supra). In this regard also, the
Policy applies to geographical indications that function as trademarks
in like manner as it applies to generic words that function as trademarks.

A. Identical or Confusingly Similar

The Complainant clearly has rights in numerous registrations of the
trademark USHUAIA.

Many cases have established that “essential” or “virtual” identity is
sufficient for the purposes of the Policy: The Stanley Works and Stanley
Logistics Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113, Nokia
Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102;
America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Disney
Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,
WIPO Case No. D2001-0489; Komatsu Ltd. and Komatsu America International
Company v. RKWeb Ltd., WIPO Case No. D2000-0995; America Online, Inc. v.
Andy Hind, WIPO Case No. D2001-0642 and The Toronto-Dominion Bank v.
Boris Karpachev, WIPO Case No. D2000-1571.

Disregarding the inconsequential extension “.com”, the Panel finds that
the disputed domain name (ushuaiavoyages.com) is not identical to the
trademark USHUAIA.

The test of confusing similarity under the Policy is confined to a
comparison of the disputed domain name and the trademark alone,
independent of the other marketing and use factors, such as the
“Sleekcraft factors” – AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,346
(9th Cir. 1979), usually considered in trademark infringement or unfair
competition cases. See BWT Brands, Inc. and British American Tobacco
(Brands), Inc v. NABR, WIPO Case No.D2001-1480; Britannia Building
Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505;
Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No.
D2000-0662; Koninklijke Philips Electronics N.V. v. In Seo Kim, WIPO
Case No. D2001-1195; Energy Source Inc. v. Your Energy Source, NAF Case
No. FA 96364; Vivendi Universal v. Mr. Jay David Sallen and GO247.COM,
Inc., WIPO Case No.D2001-1121, and the cases there cited.

Not without some hesitation given the mark at issue, the Panel finds the
disputed domain name to be confusingly similar to the Complainant’s
USHUAIA trademark. The Complainant has established this element of its case.

B. Rights or Legitimate Interests

Ushuaia is a popular tourist destination. The disputed domain name
(ushuaiavoyages.com) conveys the descriptive idea of tourism to Ushuaia.
The Complainant’s USHUAIA mark is relatively weak since the word
Ushuaia, being a geographical place name, cannot uniquely distinguish
the goods or services of the Complainant. Any use of that word in a
domain name must be considered in light of the nature of the activity
conducted under the domain name and the motivation of the registrant:
Report of the Second WIPO Internet Domain Name Process, September 3,
2001, paragraph 260.

Nevertheless, the Respondent is not known by the disputed domain name
and has not been authorized by the Complainant to use its USHUAIA mark
nor to register the disputed domain name. These circumstances are
sufficient to constitute a prima facie showing by Complainant of absence
of rights or legitimate interest in the disputed domain name on the part
of the Respondent, to whom the evidentiary burden therefore shifts to
show by concrete evidence that he does have rights or legitimate
interests in that domain name: Do The Hustle, LLC v. Tropic Web, WIPO
Case No. D2000-0624; Cassava Enterprises Limited, Cassava Enterprises
(Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case
No. D2004-0753.

Paragraph 4(c) of the Policy sets out, without limitation, circumstances
which, if proved, establish the registrant’s rights or legitimate
interests to the disputed domain name. The Respondent relies on the
circumstances specified in sub-paragraph 4(c)(i):

“before any notice to you of the dispute, your 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;”

Even perfunctory preparations have been held to suffice for this
purpose: Shirmax Retail Ltd. v. CES Marketing Group, Inc., eResolution
Case No. AF-0104; Lumena s-ka so.o. v. Express Ventures Ltd., NAF Case
No. FA00030000094375 and Royal Bank of Canada v. Xross, eResolution Case
No.AF-0133. On the other hand, use which intentionally trades on the
fame of another cannot constitute a ‘bona fide’ offering of goods or
services; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and
“Madonna.com”, WIPO Case No. D2000-0847.

Despite the Complainant’s assertions, there is no evidence that the
Respondent was aware of the Complainant’s USHUAIA mark when he
registered the disputed domain name, in response to his client’s
request. Further, the Panel does not accept that the depiction on the
Respondent’s client’s website (developed by the Respondent) of a circle
in association with the word Ushuaia amounted to a counterfeit of the
Complainant’s mark and logo, and does not accept the implication that
the former was copied from the latter, with knowledge thereof.

The Panel accepts the Respondent’s sworn evidence that he was at the
time of registration of the disputed domain name unaware of the
existence of the Complainant’s registered trademarks for USHUAIA and
assumed that his client had chosen it because it is the name of a
tourist destination. Under these circumstances and having regard to the
fact that Ushuaia is a popular tourist destination, the Panel finds that
the registration of the disputed domain name by the Respondent and the
development for his client of a tourism-related website offering
holidays “at the other end of the world” and reached via the domain name
constituted use of the domain name, prior to notice of this dispute, in
connection with a bona fide offering of services.

It follows that the Complainant has failed to establish this element of
its case.

C. Registered and Used in Bad Faith

The Panel has already found that the Respondent was unaware of the
Complainant’s USHUAIA marks when he registered the disputed domain name.
Mr. Benmansour’s decision to abandon the website upon his receipt of the
first cease and desist letter is not evidence that his activities and,
by extension, those of the Respondent, were in bad faith. Given the
events since registration, the Respondent’s failure to use the disputed
domain name since Mr. Benmansour ceased using it does not constitute bad
faith use.

The mere offering of a domain name for sale for more than the out-of
pocket costs directly related to the domain name does not constitute
evidence of bad faith registration and use within paragraph 4(b)(i) of
the Policy. That sub-paragraph of the Policy requires a showing that the
respondent registered or acquired the disputed domain name primarily for
the purpose of selling it to the complainant or to a competitor of the
complainant for a price exceeding those costs: The World Phone Company
(Pty) Ltd v. Telaccount Inc., WIPO Case No. D2000-1163.

Here the evidence establishes that the primary purpose in registering
the disputed domain name was to establish a tourism-related website for
the Respondent’s customer. Even if the offer in November 2006 to sell
the disputed domain name for 10,000 Euros were use in bad faith, that
would be insufficient to displace the evidence of good faith
registration in June 2005: Substance Abuse Management, Inc. v. Screen
Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No.
D2001-0782; Teradyne Inc.Teradyne, Inc. [sic] v. 4tel Technology, WIPO
Case No. D2000-0026; Telaxis Communications Corp. v. William E. Minkle,
WIPO Case No. D2000-0005 and Yoomedia Dating Limited v. Cynthia Newcomer
/ Dateline BBS, WIPO Case No. D2004-1085.

The Complainant has failed to establish this element of its case.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Alan L. Limbury

Sole Panelist

Date: March 20, 2007

(*) Reproducido con la amable autorización de la OMPI

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Fecha del Documento: 4/7/2007