David Taylor November 3 2008 Leading Newspaper Publisher Wins Transfer of Infringing Domain Name Hogan Lovells | Intellectual Property - France David Taylor Intellectual Property FactsDecisionFactsFrench company Société Du Figaro publishes the long-established French newspaper Le Figaro and owns a number of trademarks such as LE FIGARO, LE FIGARO.FR and LE FIGARO TV MAGAZINE. It registered the domain name 'lefigaro.fr' in 1996. On September 7 2000 the Yak Corp of Cadiz, Spain registered the domain name 'lefigaro.tv'. The domain name pointed to a website that contained links to pornographic or at least adult-oriented websites, as well as to competitors of the complainant. The country-code top level domain (ccTLD) '.tv' is the ccTLD of Tuvalu, a Polynesian island nation located in the Pacific Ocean midway between Hawaii and Australia. The '.tv' ccTLD is popular (and thus economically valuable) because it also forms an abbreviation of the word 'television' and thus has been adopted by many media organizations. Tuvalu has adopted the Uniform Domain Name Dispute Resolution Policy (UDRP) for the resolution of disputes arising out of the registration of '.tv' domain names. To obtain a successful transfer of the domain name, the complainant in the case was therefore obliged to prove all three of the circumstances under Paragraph 4(a) of the UDRP: The domain name registered by the respondent was identical or confusingly similar to a trademark or service mark in which the complainant had rights; The respondent had no rights or legitimate interests in the domain name; and The domain name was registered and used in bad faith.DecisionWith regard to the first element, the panel had no difficulty in finding that the domain name 'lefigaro.tv' was identical to the trademark LE FIGARO. The domain name was also found to be confusingly similar to the trademark LE FIGARO TV MAGAZINE and the panel considered that the extension '.tv' increased the risk of confusion between the domain name 'lefigaro.tv' and this trademark. The complainant therefore successfully established the first hurdle of the UDRP. Turning to the second element of the UDRP, the panel first pointed out that once the complainant had established a prima facie lack of rights and interests on the part of the respondent, the burden of proof shifted from the complainant to the respondent. The panel considered that the respondent was unable to prove any rights or legitimate interests in the domain name, since it had made no preparation to use the domain name in connection with a bona fide offering of goods or services. The mere pointing of a domain name to the websites of third parties did not in itself create a legitimate interest. In the absence of any compelling evidence establishing rights or legitimate interests from the respondent, the panel was satisfied that the complainant had also established the second element of the UDRP. The panel considered that the respondent had registered the domain name in bad faith because it was identical to the complainant's trademarks. In the panel's opinion, it was inconceivable that the respondent had chosen this domain name for any reason other than because of its similarity with the complainant's trademarks. The panel also found that the content on the website linked to the domain name could mislead internet users as to the source and affiliation of the same. Furthermore, the panel observed that the domain name was apparently being used to post sponsored links, from which revenue was presumably derived. This indicated that the respondent had registered and was using the domain name in bad faith. The complainant had therefore also proven the third element of the UDRP and the panel ordered that the domain name be transferred. For further information on this topic please contact David Taylor at Lovells by telephone (+33 1 53 67 47 47) or by fax (+33 1 53 67 47 48) or by email ([email protected]).