The Complainant is Fédération Française de Tennis of Paris, France, represented by Nameshield, France.
The Respondent is Cameron Jackson of New South Wales, Australia.
The disputed domain names <rolandgarros.club> and <rolandgarros.stream> ("Disputed Domain Names") are registered with Uniregistrar Corp (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 20, 2016. On September 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 20, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing its 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 the Respondent of the Complaint, and the proceedings commenced on October 10, 2016. In accordance with the Rules, paragraph 5, the due date for the Response was October 30, 2016. The Respondent sent an email communication to the Center on September 27, 2016 offering one of the Disputed Domain Names for sale. The Respondent did not submit any formal contentions to the Complainant by the due date for the Response. Accordingly, the Center notified the Parties that it will proceed to Panel Appointment process on October 31, 2016.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on November 2, 2016. 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 Complainant was founded in 1920 and is the governing body for tennis in France. The Complainant coordinates, organizes and promotes the sport in France. The Complainant owns registered trade mark rights in the ROLAND GARROS trade mark, including an international trade mark registration for the ROLAND GARROS trade mark registered on April 1, 1981 (registration number 459517). The Complainant also owns and uses numerous domain names that incorporate the ROLAND GARROS mark.
The Respondent is an individual based in New South Wales, Australia, who registered the Disputed Domain Names on July 27, 2016. The Disputed Domain Names currently resolve to a parking page.
The Complainant's contentions can be summarized as follows:
(a) The Complainant is the owner of the ROLAND GARROS trade mark, including the international trade mark which was registered on April 1, 1981 (registration number 459517).
(b) The Disputed Domain Names are identical to the Complainant's ROLAND GARROS trade mark. The only difference between the Disputed Domain Names and the Complainant's trade mark is the addition of the generic Top-Level Domains ("gTLDs") ".club" and ".stream". The addition of the gTLDs do not sufficiently distinguish the Disputed Domain Names from the Complainant's ROLAND GARROS trade mark.
(c) The Respondent has no rights or legitimate interest in the Disputed Domain Names as:
(i) The Complainant has not authorized or otherwise permitted the Respondent to use its ROLAND GARROS trade mark, and the Respondent is in no way associated with the Complainant.
(ii) The Respondent is a cyber squatter that regularly registers domain names containing well-known trade marks. This is evidenced by the numerous UDRP cases in which the Respondent has been involved.
(iii) On September 13, 2016, the Complainant sent a cease and desist letter to the Respondent. In response, the Respondent offered to sell the Disputed Domain Names to the Complainant for USD 200. Therefore, the Complainant alleges that the Respondent only registered the Disputed Domain Names in order to sell them for valuable consideration, and therefore has no rights or legitimate interest in the Disputed Domain Names.
(iv) The Disputed Domain Names also resolve to parking page hosted by their registrars. The Respondent cannot be said to have any legitimate interests or rights in the Disputed Domain Names.
(a) The Respondent must have registered the Disputed Domain Names in full knowledge of the Complainant and its ROLAND GARROS trade mark, due to the distinctive nature of the trade mark and the Complainant's reputation.
(b) The Disputed Domain Names were registered and used only for the purposes of selling them for profit, based on their value derived from the Complainant's ROLAND GARROS trade mark. This is supported by the Respondent's offer to sell the Disputed Domain Names to the Complainant for USD 200, in response to the Complainant's cease and desist letter. In addition, the Respondent has been the subject of numerous UDRP proceedings issued against him, in which panelists have held that the Respondent is a cyber squatter.
The Respondent did not reply to the Complainant's contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(Iii) the Disputed Domain Names have been registered and are being used by the Respondent in bad faith.
The Panel accepts that the Complainant has rights in the ROLAND GARROS trade mark, based on its international trade mark registration.
The Disputed Domain Names incorporate the Complainant's ROLAND GARROS trade mark in its entirety.
It is also well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic top-level domain extensions, in this case ".club" and ".stream", may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is satisfied.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview") states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of production to come forward with appropriate allegations or evidence demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant registered and began using the ROLAND GARROS trade mark well before the Disputed Domain Names were registered and the Complainant has never authorised the Respondent to use its ROLAND GARROS trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove that they have rights or legitimate interests in the Disputed Domain Names. As the Respondent has not submitted a Response to the Complainant's contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant's evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Names by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use the Disputed Domain Names or a name corresponding to the Disputed Domain Names were in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Names, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Panel accepts that the Respondent has not provided any evidence to demonstrate that he has become commonly known by the Disputed Domain Names, or a name corresponding to them.
The Disputed Domain Names resolve to parking pages that advertise the services of the Registrar. As stated in paragraph 2.6 of the WIPO Overview 2.0, use of a domain name to post parking pages "may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a 'bona fide offering of goods or services'…or from 'legitimate noncommercial or fair use' of the domain name." Therefore, the Panel finds that the Respondent cannot be said to be making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Names. The Respondent has also provided no evidence to show that he is making demonstrable preparation to use the Disputed Domain Names for any such purposes.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Respondent knew of the Complainant and the Complainant's ROLAND GARROS trade mark at the time he registered the Disputed Domain Names, and registered and used the Disputed Domain Names in bad faith, based on the following:
(i) the Respondent registered the Disputed Domain Names in July 2016, more than 35 years after the Complainant first obtained its international registration for the ROLAND GARROS trade mark;
(ii) the Respondent has been the subject of numerous UDRP actions, demonstrating a pattern of bad faith conduct in which the Respondent is a regular cyber squatter; and
(iii) the Respondent offered to the sell the Disputed Domain Name twice to the Complainant (once in response to the Complainant's cease and desist letter, and once following receipt of the Complaint), for an amount that exceeds his reasonable out-of-pocket expenses in relation to them.
Based on the above, the Panel reasonably believes that the Respondent registered and is using the Disputed Domain Names in bad faith for the purpose of selling them to the Complainant or any other person in return for valuable consideration.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied.
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, <rolandgarros.club> and <rolandgarros.stream>, be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Date: November 23, 2016