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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pathй Marques, SAS v. Dmitri Melnikov

Case No. D2004-0612

1. The Parties

The Complainant is Pathй Marques, SAS of Paris, France, represented by Erick Landon, of Paris, France.

The Respondent is Dmitri Melnikov of St. Petersburg, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <pathe-caen.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2004. On August 5, 2004, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue.

On August 6, 2004, OnlineNic, Inc. d/b/a China-Channel.com 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, billing, and technical contact. Furthermore, the Registrar confirmed that the domain name at issue will be locked during the pending administrative procedure.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 18, 2004. The Center verified that the Complaint, together with the amendment to 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 August 20, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2004, to both parties.

On September 27, 2004, the parties were notified by the Center that Christian Schalk had been appointed as the sole panelist in this matter. 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.

The Panel agrees with the Center’s assessment concerning the Complainant’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules. No response was filed by the Respondent.

The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties.

The language of the proceedings is English.

4. Factual Background

a) The Complainant is engaged in managing movie theatres and video distribution in France and in the United Kingdom. In this context it markets rights to its library of films. It runs theatre chains in various cities in France and in the Netherlands. In France, the theatre chains Pathй and Gaumont belong to the Complainant. According to consumer polls, the Pathй chain was among the five best-known theatre chains in France in 1999 and 2000.

Furthermore, the Complainant operates four TV channels via cable, satellite and digital terrestrial transmission. The Complainant’s revenues in 2001, reached 570 million Euros.

According to the Complainant’s printout of results from a Google search for the words “pathe in caen,” the Complainant runs at least two of its Pathй cinemas in Caen, which is a city in the Normandy region in the north of France. Furthermore, the first ten citations in this search relate exclusively to the Complainant’s services.

In another Google search undertaken by the Complainant for the words “pathe-caen,” nine of the ten citations on the first page relate to the Complainant’s “Pathй Caen” cinemas. One of it explicitly mentions the disputed domain name in the following way:

“Site du Cinйma Pathй de Caen http://.www.pathe-caen.com/Le Web Caennais”

Only the seventh hit of this first page points to an obvious pornographic site. On the second page, half of the hits relate to services of the Complainant. The other half relate to obviously pornographic sites. The majority of the 20 citations on pages three and four are also for such sites.

b) The Complainant is the owner of the following word and design trademarks which all contain the word “Pathй”:

- French trademark No. 98760299, “PATHЙ !” (word and design), application date November 11, 1998, covering goods and services in classes 9, 14, 16, 25, 28, 35, 38, 41 and 42;

- French trademark No. 95576308, “PATHЙ” (word and design), application date June 16, 1995, covering goods and services in classes 9, 38, 41 and 42;

- French trademark No. 98760300, “PATHЙ !” (word and design), application date November 19, 1998, covering goods and services in classes 9, 14, 16, 25, 28, 35, 38, 41 and 42;

- French trademark No. 99790945, “PATHЙ !” (word and design), application date May 7, 1999, covering goods and services in classes 9, 14, 16, 25, 28, 35, 38, 41 and 42;

- International trademark registration No. 649087, “PATHЙ” (word and design), application date December 7, 1995, covering goods and services in classes 09, 38, 42 in the following countries: France, Austria, Switzerland, Czech Republic, Germany, Spain, Hungary, Italy, Monaco, Poland and Russia;

- International trademark registration No. 715871, “PATHЙ !” (word and design), application date May 17, 1999, covering goods and services in classes 09, 14, 16, 25, 28, 35, 38, 41 and 42 in the following countries: France, Austria, Benelux, Switzerland, China, Czech Republic, Germany, Spain, Croatia, Hungary, Italy, Monaco, Poland, Portugal, Romania, and Ukraine;

- International trademark registration No. 143892, “PATHЙ-JOURNAL,” application date October 11, 1949, covering goods and services in class 16 in the following countries: France, Austria, Bulgaria, Benelux, Switzerland, Germany, Egypt, Hungary, Italy, South Korea, Lithuania, Macedonia, Monaco, Portugal, Romania, San Marino, Vietnam and Yugoslavia;

- International trademark registration No. 447768, “PATHE CINEMA,” application date December 7, 1979, covering goods and services in classes 09, 16, 36, 38 and 41 in the following countries: Austria, Benelux, Switzerland, Germany, Spain, Hungary, Italy, Portugal, Romania, Russia and Yugoslavia.

c) The Complainant has provided evidence for its ownership in the domain name <pathe.com>. From a printout of its website, it appears that it also owns several other domain names such as <pathe.nl>, <pathe.co.uk>, <patheinternational.com> and <pathearchives.com>. However, Complainant has not shown any evidence for that.

d) The domain name <pathe-caen.com> was registered by the Respondent on November 28, 2003. This domain name registration was not and has not been authorised by the Complainant.

e) After having learned about the registration of the disputed domain name, the Complainant’s attorney sent a cease and desist letter via email and registered letter to the Respondent on March 31, 2004. In this letter, the Respondent was informed that the Complainant has had trademark rights in the term “Pathй” since 1924.

The Respondent neither replied to the email nor to the letter. The registered letter was returned by the Post Office.

f) In the documents submitted to the Panel, there are two printouts of a website which indicate the disputed domain name as a URL. The first is from May 7, 2004; the second from August 20, 2004.

Both websites give access to further sites with obviously pornographic content, such as “girls in thongs” and some related pages such as “sexy thongs,” “Asian girls in thongs,” etc.

5. Parties’ Contentions

A. Complainant

a) The Complainant contends that the domain name at issue is confusingly similar to International trademarks Nos. 649087 PATHЙ and 715871 PATHЙ and to French PATHЙ trademarks Nos. 95576308, 924113286, 98760299, 98760300 and 99790945, which are used in the field of entertainment services (films, movie theatres, television, etc.).

The Complainant submits that the disputed domain name is composed of the word “Pathe” associated with the word “Caen.” “Caen” is descriptive since it is the name of a city located in France. In this context, the Complainant refers to Accor v. Media Insights, WIPO Case No. D2004-0043, where it has been pointed out that “it is a widely recognised principle in trademark law that the mere adjunction of a descriptive term to a famous trademark does not suffice to avoid a risk of confusion.”

Furthermore, the Complainant contends that the domain name <pathe-caen.com> is also confusingly similar to Complainant’s website “www.pathe.com.” The Complainant believes that an Internet user who is looking for information on “Pathй” films, cinemas and schedules in France and especially in the city of Caen and types in “www.pathe-caen.com” will be redirected to pornographic websites.

b) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name <pathe-caen.com>. In its opinion, there is no relationship with the Respondent because the Complainant has not licensed or otherwise permitted the Respondent to use its name or its PATHE trademark or register a domain name incorporating its name or trademark. Furthermore, the Complainant is not a customer of the Respondent. There is also no suggestion that the Respondent is commonly known by the name “PATHE” or that it has acquired any trademark rights in that name.

The Complainant believes that, in particular, there is no evidence of 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 since the disputed domain name resolves to various pornographic websites.

c) Furthermore, the Complainant submits that the disputed domain name was registered and is being used in bad faith, as it resolves to pornographic websites. The Complainant cites Helmut Lang S.a.r.l. v. Mr. Stanley Filoramo, WIPO Case No. D2003-0822, where the Panel had decided that linking the domain name in question to graphic, adult-oriented websites is evidence of bad faith and “that the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the domain name was registered and is being used in bad faith. See Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022. The Complainant believes that there is no element in the website that would in any way justify the Respondent’s use of “pathe” in the domain name. The Respondent is, therefore, taking advantage of the goodwill and reputation of the Complainant’s trademark PATHЙ to draw Internet users to its site. Therefore, the Complainant concludes that its trademark is being diluted and tarnished. The Complainant also believes that the domain name at issue disrupts the Complainant’s business as potential customers will not reach any Pathй official sites and thus will not get information on cinemas and schedules in the city of Caen.

B. Respondent

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

6. Discussion and Findings

The jurisdiction of the Panel is limited. As the parties are from separate jurisdictions, national law is not generally determinative for the purpose of decisions under this policy. The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law it deems applicable (Paragraph 15(a) of the Rules). Pursuant to Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the Policy), a domain name can be transferred only where the Complainant has proven that each of the following three elements is present:

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

B) The domain name holder has no “rights or legitimate interest in respect of the domain name”; and

C) The domain “has been registered and is being used in bad faith.”

It is essential to dispute resolution that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), establish procedures intended to assure that a respondent is given adequate notice of proceedings initiated against him, and a reasonable opportunity to respond (Paragraph 2(a) of the Rules).

In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center.

Since the Respondent has not contested the allegations of the Complainant, the Panel shall decide on the basis of the Complainant’s submissions, and all inferences that can reasonably be drawn therefrom (See Bayerische Motorenwerke AG v. Dariusz Herman, Herman DOMCREATE et co., WIPO Case No. DNAME2004-0001).

A. Identical or Confusingly Similar

a) The Complainant has established that it has trademark rights in the word PATHЙ.

b) The Panel notes that the trademark registrations brought by the Complainant before the Panel are all composite word and design trademarks. Therefore, it is clear that the disputed domain name is not identical to any one of the Complainant’s PATHЙ trademarks, since a domain name cannot include design elements (See Park Place Entertainment Corporation v. Mike Gorman, WIPO Case No. D2000-0699).

c) However, the Panel finds that the disputed domain name is confusingly similar with the Complainant’s trademarks for the following reasons:

aa) All trademarks are combinations of the word PATHЙ with device elements. The devices, however, are commonly known diagrams of stripes, a cock and a bubble (containing the word “Pathй !”) which have only a very low level of distinctiveness, if any. On the other hand, “PATHЙ” is a fanciful term at least in connection with the goods and services for which it is used and therefore distinctive. In all trademark registrations brought before the Panel, PATHЙ is clearly the dominant portion of the Complainant’s word and device trademarks. Furthermore, as it appears from another printout of the Complainant’s website (with references to “Universe of Pathй,” “Pathй international,” “Pathй UK,” “Pathй Archives”), this is the term which would be used by consumers on referring to the Complainant’s activities and services. Since the device elements cannot be reproduced in a domain name, Internet users also have to type the word “pathй” in the browser in order to reach the Complainant’s websites.

bb) The addition of a geographical suffix such as the word “Caen,” a city in France, does not change this result. As evidenced by the documents brought before the Panel, the Complainant is doing business in Cane. Therefore, Internet users discovering the disputed domain name may assume that this domain name relates to the Complainant’s business in this area (See Viacom International Inc. v. Sung Wook Choi and M Production, WIPO Case No. D2000-1114; Jefferson Smurfit Group plc v. Stephen Davidson Inc., WIPO Case No. D2000-1117 with further references).

cc) Furthermore, it appears from the material brought before the Panel that the Complainant’s PATHЙ theatre chains are well known among consumers in France. In this context, the mere addition of a descriptive term to a trademark does not suffice to avoid risk of confusion.

B. Rights or Legitimate Interests

The Policy, paragraph 4(c) provides that any of the following circumstances, in particular but without limitation, shall demonstrate rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii);

a) “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; or

b) you (as an individual or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

c) you are making a legitimate non-commercial 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.

According to the material brought before the Panel and in the absence of a response to the Complaint, the Panel finds that the Respondent cannot demonstrate legitimate rights in the disputed domain name for the following reasons:

a) The Complainant has not authorised the Respondent to use its trademark nor to register the disputed domain name which is confusingly similar to the Complainant’s trademarks. There is also no evidence that the Respondent is known by the domain name at issue.

b) Furthermore, due to the fact that the first 10 – 15 results of a common Google search relate nearly exclusively to the websites owned and/or sponsored by the Complainant and that the Complainant’s theatre chain is well known under the name “PATHЙ,” consumers may believe that when they type in the disputed domain name in their browser, they will get information about the Complainant’s cultural services in the Caen area. However, they are misled because they were attracted by the false impression created by the misleading domain name. Offering links to pornographic websites under these circumstances not only misleads but frustrates customers and tarnishes the reputation and goodwill of the Complainant’s trademark. Such behaviour neither constitutes a bona fide offering of goods or services nor a legitimate non-commercial or fair use.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and uses the domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy paragraph 4(b) sets forth four non exclusive criteria for Complainant to show bad faith registration and use of domain names:

1) Circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

2) you have 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 you have engaged in a pattern of such conduct; or

3) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

4) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location of a product.

According to the material before the Panel and in the absence of a response to the Complaint, the Panel finds that the disputed domain name has been registered and used by the Respondent in bad faith for the following reasons:

a) It is a well-established principle under UDRP case law (See Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the Policy (see Section 2), that the domain name registrant represents and warrants to the registrar that, to his knowledge the registration of the domain name will not infringe the rights of any third party. In this case, the Panel believes that the Respondent must have been aware of the Complainant’s trademark when he registered the disputed domain name. Even a simple search in a common search engine like Google, which is accessible to everyone and free of charge, reveals a number of hits mentioning the Complainant’s services in Caen. Furthermore, the Complainant is also the owner of the <pathe.com> domain name which gives access to its various websites.

b) It is already established UDRP case law that whatever the motivation of the Respondent, the fact that the disputed domain name is directed to a pornographic website can be an indication that the domain name at issue has been registered and used in bad faith. See Ty, Inc. v. O.Z. Names, WIPO Case No. D2000-0370; Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860; Bass Hotels & Resorts, Inc. vs. Mike Rodgerall, WIPO Case No. D2000-0568; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022; Helmut Lang S.a.r.l. v. Mr. Stanley Filoramo, WIPO Case No. D2003-0822).

Furthermore, although the pornographic website seems to be free of charge, it cannot be excluded, however, as pointed out in National Association of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, WIPO Case No. D2001-1387, that the Respondent has registered the domain name in order “to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques.”

c) The redirection of the disputed domain name to a pornographic website may frustrate potential customers seeking information about the Complainant’s services when they type in the domain name at issue. The consequences can be damaging for the Complainant since consumers will refrain from searching for the Complainant‘s goods and services on its “PATHЙ” websites and probably look for the corresponding services on websites of the Complainant’s competitors.

d) The emails sent to the Respondent have been returned due to “permanent fatal error” and the Respondent has probably not received the registered mail sent to him concerning the disputed domain name. Therefore, the Respondent has actively provided and failed to correct false contact details in breach of the registration agreement (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) and may have acted to frustrate or at least to delay any attempts to transfer the disputed domain name to the Complainant.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <pathe-caen.com> be transferred to the Complainant.

Christian Schalk
Sole Panelist

Dated: October 11, 2004