Complainant is Fédération Française de Tennis of Paris, France, represented by Nameshield, France.
Respondent is Shohel Rana, Sohel IT of Bangladesh.
The disputed domain names <open-french.net> and <2017frenchopen.net> are registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2017. On June 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 6, 2017.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on July 13, 2017. 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.
Complainant is the owner of international registration under the Madrid System of the word trademark FRENCH OPEN, registration number 538170, registration dated June 22, 1989, in international class (“IC”) 3, covering various toiletry products. Complainant is the owner of registration of the word European Union Trade Mark (“EUTM”) ROLAND GARROS FRENCH OPEN, filing number 003498276, registration dated January 12, 2006, in ICs 3, 6, 9, 12, 14, 16, 18, 24, 25, 28, 30, 32, 33, 35, 36, 37, 38, 39, 41, 42, and 43, covering a wide range of goods and services. Complainant is the owner of additional word – and word and design – trademark registrations of the term ROLAND GARROS (without incorporation of FRENCH OPEN).
Complainant promotes, organizes and develops tennis in France, and provides representation of France in international meetings. Complainant annually organizes a major international tennis tournament known since 1968 in English-speaking countries as the French Open. Complainant has registered a substantial number of domain names incorporating the term French Open, including <frenchopen.org> (registered in 1996) and <frenchopen.com> (registered in 1997). Complainant licenses broadcast rights for the French Open tournament to select official and exclusive broadcasters around the world.
According to the Registrar’s verification, Respondent is registrant of the disputed domain names. According to that verification, Respondent has been the owner of registration of each of the disputed domain names since May 9, 2017.
As of May 29, 2017, the disputed domain names directed Internet users to websites that promoted live streaming of the French Open tennis tournament, headed “Watch French Open 2017 Live Stream Online FREE On iPda [stet] Smart Phone MAC and PC For Any Devices Form [stet] Any Where” and “French Open 2017 Live Stream, Tennis, Date, Time, Schedule, Watch Online”. Such websites displayed the ROLAND GARROS logo of Complainant and included photos and news reports regarding the French Open tournament. The websites displayed virtual buttons and/or links for viewing the live streams. As of June 7, 2017, the disputed domain names directed Internet users to pages indicating that active websites could not be reached.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
Complainant alleges that it has rights in the FRENCH OPEN and ROLAND GARROS trademarks, and that the disputed domain names are confusingly similar to its FRENCH OPEN trademark.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain names because: (1) Respondent is not affiliated with Complainant nor authorized to use its FRENCH OPEN trademark; (2) Respondent is not authorized to use its trademark in connection with live streaming websites; (3) Respondent reinforced confusion with Complainant’s FRENCH OPEN trademark by displaying Complainant’s ROLAND GARROS trademark without authorization on Respondent’s websites; (4) Respondent’s websites did not include any disclaimer of association with Complainant; (5) Respondent’s websites are currently disabled due to an action of the hosting provider, and; (6) Respondent registered the disputed domain names only to take unfair advantage of Complainant’s trademark.
Complainant contends that Respondent registered and is using the disputed domain names in bad faith because: (1) the disputed domain names are confusingly similar to Complainant’s FRENCH OPEN trademark; (2) in light of the distinctiveness and repute of Complainant’s trademark, Respondent must have been aware of the trademark when it registered the disputed domain names; (3) Respondent offered live streaming of the French Open tennis tournament without authorization from Complainant, which streaming was reserved to other authorized parties; (4) Respondent has provided no evidence of actual or contemplated good faith use of the disputed domain names; (5) Respondent registered the disputed domain names with the intent to create a likelihood of confusion with Complainant’s trademarks and to unduly benefit from the reputation of Complainant’s trademarks, and; (6) Respondent is preventing Complainant from exercising its intellectual property rights over its trademarks.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain names to Complainant.
Respondent did not reply to Complainant’s contentions.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its records of registration. There is no indication in the record of this proceeding that express courier delivery was unsuccessful. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant has provided evidence of rights in the trademark FRENCH OPEN through use in commerce and as evidenced by international registration under the Madrid System and its EUTM (see section 4, Factual Background, supra). Respondent has not challenged Complainant’s assertion of rights. The Panel determines that Complainant has rights in the trademark FRENCH OPEN.
The disputed domain name <2017frenchopen.net> directly incorporates Complainant’s trademark, adding the current year as a prefix. The addition of the date does not distinguish the disputed domain name from Complainant’s trademark from the standpoint of the Policy. The disputed domain name <open-french.net> reverses the word order of Complainant’s trademark. The term “open” has a meaning associated with a type of tennis tournament. Its combination with the portion of Complainant’s trademark referring to the location of Complainant’s tournament is likely to give rise to confusion with Complainant’s trademark and its associated tournament.1 The Panel determines that each of the disputed domain names is confusingly similar to Complainant’s FRENCH OPEN trademark.
The Panel determines that Complainant has established that it owns rights in the trademark FRENCH OPEN and that the disputed domain names are confusingly similar to that trademark.
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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”. (Policy, paragraph 4(c)).
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain names are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names.
Respondent has not replied to the Complaint, and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent has not offered any argument or justification for its use of Complainant’s trademark in association with live streaming, and the Panel is not prepared to determine that such use is a fair one on its face. There are contexts in which third-party use of a trademark term associated with a sporting event without authorization from the trademark owner may be fair, for example, in the context of news reports regarding the event (i.e., nominative fair use). However, the live streaming of an entire sporting event without the consent of its sponsor or organizer, while associating that live streaming with the trademark of the sponsor or organizer, may substantially interfere with the economic interests of the tournament sponsor or organizer. This may take unfair advantage of the interests of the trademark owner. The Panel is not prepared to determine that such use is fair on its face.
Respondent’s use of the disputed domain names does not otherwise manifest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain names.
In order to prevail under the Policy, Complainant must demonstrate that each disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” These include that, “(iv) by using the domain name, [the respondent has] intentionally attempted 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] website or location or of a product or service on [the respondent’s] website or location.”
Respondent used the disputed domain names to direct Internet users to websites where it offered live video streaming of a tournament organized by Complainant and used Complainant’s trademark associated with the tournament. Respondent was not authorized to make such use of Complainant’s trademark. Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with Complainant’s FRENCH OPEN mark as to the source, sponsor, affiliate or endorser of Respondent’s websites. Such use by Respondent of Complainant’s trademark evidences bad faith within the meaning of paragraph 4(b) of the Policy.
The Panel determines that Respondent registered and is using the disputed domain names in bad faith within the meaning of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <open-french.net> and <2017frenchopen.net> be transferred to Complainant.
Frederick M. Abbott
Sole Panelist
Date: July 21, 2017
1 See Wikipedia, “Open (sport)”, https://en.wikipedia.org/wiki/Open_(sport), Panel visit of July 21, 2017.