The Complainant submitted evidence that it is the registered owner of several trademarks which include the wording ‘CANAL PLUS’ or ‘CANAL+’ (hereafter the “Canal Plus Trademark” or the “Canal Plus Trademarks”), including, amongst others:
• International trademark CANAL PLUS n° 509729 (word trademark), registered since March 16th, 1987, for various subclasses under classes 9, 16, 35, 38 and 41, valid for the following designated territories: AM, AT, BA, BG, BX, BY, CH, CZ, DE, DZ, EG, ES, HR, HU, IT, KG, MA, MC, MD, ME, MK, PT, RO, RS, RU, SI, SK, TJ, UA, UZ, VN;
• International trademark CANAL PLUS n° 619540 (word trademark), registered since May 30th, 1994, valid for various subclasses under classes 9, 16, 25, 28, 35, 38 and 41, valid for the following designated territories: CN, CU, LI, MN, PL, SD, SM;
• International trademark CANAL + n° 618943 (figurative mark with word elements), registered since May 30th, 1994, valid for various subclasses under classes 9, 16, 25, 28, 35, 38 and 41, valid for the following designated territories: AT, BY, PL, RU, UA; and
• US trademark CANAL+ n° 3902485 (figurative mark with word elements), registered since January 11th, 2011, valid for various subclasses under classes 38 and 41, valid in the US.
Of these trademarks, only the last one is valid in the home country of the Respondent, i.e. the United States.
The Complainant also claims that it is the registered owner of several domain names which incorporate the Canal Plus Trademark(s), amongst others: <canalplus.com> registered on May 19, 2006, and <canal-plus.com> registered on March 27, 1996.
The Respondent does not own a registered trademark. The Respondent claims that it owns United States common law unregistered trademark rights in ‘CARNAL’ since 2018 and in ‘CARNAL+’ since June 2021. The Respondent refers to respectively its domain name registration of <carnalmedia.com> in 2018 and the launch of its ‘Carnal+’ streaming platform in June 2021.
The Respondent also claims that it is the registered owner of several domain names which incorporate the term ‘CARNAL’, amongst others: <carnalplus.com>, registered on May, 3 2020; <carnalmedia.com>, registered on March 30, 2018; <carnalgoods.com>, registered on January 5, 2018; and <carnalcash.com>, registered on March 30, 2018. The Panel notes that the Respondent submitted the so called ‘whois’ data for the domain names <carnalmedia.com>, <carnalgoods.com>, and <carnalcash.com>. The ‘whois’ information submitted for these domain names mention as registrant ‘Contact Privacy Inc.’ (with various customer numbers), not the Respondent itself. In other words, the Respondent seems to be using a so called ‘privacy shield’ for these domain names.
The Respondent also refers to its company name, ‘CARNAL MEDIA LLC’, which incorporates its ‘CARNAL’ US common law trademark.
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