{ "case_number": "CAC-UDRP-104031", "time_of_filling": "2021-09-27 09:20:45", "domain_names": [ "carnalplus.com" ], "case_administrator": "Denisa Bilík (CAC) (Case admin)", "complainant": [ "GROUPE CANAL +" ], "complainant_representative": "NAMESHIELD S.A.S.", "respondent": [ "Legrand Wolf" ], "respondent_representative": null, "factual_background": "The Complainant claims to be a leading French audio-visual media group and a ‘top player’ in the production of pay-TV, theme channels and the bundling and distribution of pay-TV services. The Complainant claims to have nearly 22 million subscribers worldwide. From the evidence submitted by the Complainant, it seems that the Complainant focuses its activities on Europe, Africa, Asia, and the French overseas territories.\r\n\r\nThe Complainant owns the Canal Plus Trademarks mentioned above and the and domain names mentioned above.\r\n\r\nThe Respondent claims to be the owner of the company ‘CARNAL MEDIA LLC’, a Minnesota Limited Liability Company. This company is a publisher of gay pornographic goods and services in the United States.\r\n\r\nThe Respondent claims to own United States common law unregistered trademark rights in ‘CARNAL’ through its first use in commerce with various offerings to the public since 2018. The Respondent claims that it uses the term ‘CARNAL’ in its company name; that it registered the domain names (registration on March 30, 2018), (registration on January 5, 2018), and (registration on March 30, 2018); that it uses a ‘CARNAL MEDIA’ Twitter account (registration in October 2018); that it announced the so called ‘CARNAL NETWORK’ on December 7th, 2018; that it announced the so called ‘CARNAL MEDIA PREMIUM’ service (on an unspecified date); and that it has produced over a thousand copyrighted works including 24 DVD’s, 600 other video’s (it is not clear whether these videos mention the term ‘CARNAL’) and 14 subscription pay-sites (the domain names of these pay-sites do not seem to contain the word ‘CARNAL’).\r\n\r\nThe Respondent also claims to own United States common law unregistered trademark rights in ‘CARNAL+’ through its first use in commerce in June 2021. This use consists of the launch of ‘CARNAL+’. The Respondent describes ‘CARNAL+’ as a ‘streaming platform’, a ‘single site’ featuring the combined content from Respondent’s other websites (which do not contain or refer to the term ‘CARNAL’), a ‘premium video subscription service’, a ‘paysite’ and a ‘gay porn platform’.\r\n\r\nThe Respondent registered the disputed domain name on May 3, 2020.\r\n\r\nAll the Complainant’s Canal Plus Trademark registrations predate the registration of the disputed domain name. The Complainant’s international trademark registrations date from 1987 and 1994. The Complainant’s US trademark registration dates from 2011.", "other_legal_proceedings": "The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.", "no_response_filed": "COMPLAINANT:\r\n\r\nThe disputed domain name is confusingly similar to the Complainant’s registered Canal Plus Trademarks.\r\n\r\nThe Respondent does not have rights or legitimate interest in the disputed domain name. The Respondent is not identified in the ‘whois’ information as the disputed domain name. The Respondent is not known as the disputed domain name. The Respondent is not related to the Complainant. The Complainant does not carry out any activity for, nor has any business with, the Respondent. No authorisation was granted to the Respondent to use the Complainant’s registered Canal Plus Trademark. The disputed domain name redirects to a commercial pornography website offering links to other porn websites. The Respondent disrupts the Complainant's activities by creating a likelihood of confusion with its registered trademarks and by redirecting traffic to pornographic content. \r\n\r\nThe disputed domain name has been registered and is being used in bad faith. The Complainant states that the disputed domain name is confusingly similar to its registered Canal Plus Trademarks. The Complainant submits that it is highly unlikely that the Respondent registered the disputed domain name without knowing the reputation of the Complainant and its trademarks. The disputed domain name is used as a portal to access other websites of the Respondent. The Complainant contends that the Respondent has registered the disputed domain name in bad faith to divert Internet traffic from the Complainant’s site to its own website offering adult entertainment content (through other – linked - sites). The Complainant seems to argue that its Canal Plus Trademarks are “well-known” or “famous”. However, the Complaint is not entirely clear on this point. \r\n\r\nRESPONDENT: \r\n\r\nThe disputed domain name is not identical or confusingly similar to the registered Canal Plus Trademarks for the following reasons: First, the Complainant has very narrow and limited trademark rights in the United States because the Complainant has not registered a standard character mark in the United States for ‘CANAL+’ or ‘CANAL PLUS’ and only has a limited stylized mark. Second, the Respondent's ‘CARNAL+’ sign is visually different from the Complainant’s US stylized mark. Third, ‘canal’ (French) and ‘carnal’ (English) are very different words (different spelling, different pronunciation, different meaning). The Respondent emphasizes that the word ‘canal’ is defined as a passageway and the word ‘carnal’ refers to ‘feelings and desires that are sexual and physical’. The use of the word ‘canal’ suggests that the Complainant provides a passageway or a ‘channel’ to television content provided by others, whereas the word ‘carnal’ describes the actual goods and services offered by the Respondent. Fourth, the Complainant and the Respondent target an entirely different public. For the Complainant, the target public is a French-speaking public located in France and consisting of children and the general public. For the Respondent, the target-public is an English-speaking public located in the United States and consisting of ‘gay men with specific fetishes’. \r\n\r\nThe Respondent has rights and\/or legitimate interest in the disputed domain name. First, before any notice to the Respondent of the dispute, the Respondent used the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services. The Respondent has been offering a wide variety of goods and services under the Respondent's unregistered trademark rights in ‘CARNAL’, ‘CARNAL PLUS’, and ‘CARNAL+’. Second, the Respondent is commonly known by the disputed domain name. Under the ‘CARNAL’ brand, the Respondent has produced over a thousand copyrighted works including 24 DVDs, over 600 other videos, and 14 subscription pay-sites. \r\n\r\nAccording to the Respondent, he did not act in bad faith for the following reasons: First, the Respondent registered the disputed domain name and used it for bona fide goods and services. Second, the Complainant and the Respondent are not competitors and target different markets. Third, the Respondent did not register the disputed domain name to disrupt the Complainant's business. Fourth, the Respondent did not register the disputed domain name in an intentional attempt 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 mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site or location. The Respondent argues that he had in fact no knowledge of the Complainant or its trademarks prior to this proceeding. Fifth, the Respondent was sufficiently identified in the domain’s whois information. The Respondent had a legitimate purpose for using a privacy service, i.e. to avoid publicising the address where adult industry performers can be found and reduce the chances of unwanted attention from fans and\/or dangerous individuals. Sixth, the Respondent did not register the disputed domain name for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant. The Respondent registered the domain name to offer Respondent's own goods and services to the public.\r\n\r\nFinally, the Respondent asks the Panel to find that the Complaint was brought in bad faith. The Respondents argues that the Complainant makes issue of the fact that Respondent uses the domain name to offer gay pornography, suggesting that this should persuade the Panel to rule in the Complainant's favour. According to the Respondent, the cases cited by the Complainant involved intentionally misdirecting consumers to tarnish a competitor's mark, which is entirely inapplicable to the Respondent and unrelated to this case since the Respondent uses the domain name to offer its own legitimate gay porn goods and services. According to the Respondent, the Complainant's attack on the Respondent's association with gay pornography is an attempt to incite discrimination, which is evidence of bad faith. ", "rights": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).", "no_rights_or_legitimate_interests": "The Complainant has not shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).", "bad_faith": "The Complainant has not shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).", "procedural_factors": "The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.", "decision": "Rejected", "panelists": [ "Bart Van Besien" ], "date_of_panel_decision": "2021-11-22 00:00:00", "informal_english_translation": "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:\r\n\r\n• 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;\r\n• 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;\r\n• 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\r\n• 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.\r\n\r\nOf these trademarks, only the last one is valid in the home country of the Respondent, i.e. the United States.\r\n\r\nThe Complainant also claims that it is the registered owner of several domain names which incorporate the Canal Plus Trademark(s), amongst others: registered on May 19, 2006, and registered on March 27, 1996.\r\n\r\nThe 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 in 2018 and the launch of its ‘Carnal+’ streaming platform in June 2021.\r\n\r\nThe Respondent also claims that it is the registered owner of several domain names which incorporate the term ‘CARNAL’, amongst others: , registered on May, 3 2020; , registered on March 30, 2018; , registered on January 5, 2018; and , registered on March 30, 2018. The Panel notes that the Respondent submitted the so called ‘whois’ data for the domain names , , and . 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.\r\n\r\nThe Respondent also refers to its company name, ‘CARNAL MEDIA LLC’, which incorporates its ‘CARNAL’ US common law trademark.", "decision_domains": { "CARNALPLUS.COM": "REJECTED" }, "panelist": null, "panellists_text": null }