The Complainant is BNP Paribas of Paris, France, represented by Pierre-Louis Dauzier, Avocat à la Cour, Paris, France.
The Respondent is eSeats.com of Scottsdale, Arizona, United States of America (“US” or “USA”).
The disputed domain name <bnpparibasopen.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2010. On January 22, 2010, the Center transmitted by e-mail to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On January 26, 2010, GoDaddy.com, Inc. transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2010. The Respondent did not submit any Response. Accordingly, the Center notified Respondent's default on February 23, 2010.
On March 3, 2010, i.e., after the lapsing of the deadline set by the Center for Respondent filing his response, the latter submitted a short e-mail communication addressed to the Center.
The Center appointed Lorenz Ehrler as the sole panelist in this matter on March 3, 2010. 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 a company with its seat in Paris, France.
Complainant holds several trademarks BNP PARIBAS, in particular the international trademarks BNP PARIBAS IR 0897938 (with design) and IR 0876031, which enjoy protection, among other countries, in the United States. Trademark IR 0897938 was registered on August 22, 2006 and trademark IR 0876031 on November 24, 2005. The first mentioned trademark claims, among other things, “printed tickets” and the second “financial sponsoring of sporting events”.
Complainant is, since the beginning of 2009, the official sponsor of the Indian Wells Tennis Tournament which is since known as the BNP Paribas Open.
The domain name in dispute, <bnpparibasopen.com> was registered with the registrar GoDaddy.com, Inc. on September 5, 2008.
The website operated under the Domain Name is dedicated to the BNP Paribas Open, offering in particular tickets and travel arrangements in connection with this tennis tournament. It also contains a commercial link – in the form of an advertising banner – to a website “www.tennismall.com” offering for sale diverse tennis related goods (apparel, rackets, balls, etc.), as well as links to websites dedicated to other tennis tournaments, such as the US Open, the Sony Ericsson Open and to Wimbledon.
Any visitor of the website to which the Domain Name resolves, who wishes to purchase tickets for the BNP Paribas Open is ultimately redirected to another website of Respondent, namely the website “www.eseats.com”, which offers for sale tickets for a large range of events in different fields such as sports, theatre and music.
Complainant contends that the Domain Name is confusingly similar with its above-mentioned trademarks, in particular because the Domain Name fully comprises the designation BNP PARIBAS. Furthermore, Complainant argues that Respondent has no rights or legitimate interests in the Domain Name, not having been granted ever any authorisation to use the Domain Name for commercial purposes, more particularly for selling tickets for tennis events as well as tennis accessories. At last, Complainant argues that Respondent registered and uses the Domain Name in bad faith (i) by offering tennis tickets and – through the linked website “www.tennismall.com” – diverse articles related to tennis, thereby deceptively using the name BNP PARIBAS to promote its business and (ii) because he registered the Domain Name in view of reselling it with profit to Complainant.
Respondent did not reply to Complainant's contentions within the deadline set by the Center. In its submission of March 3, 2010, Respondent argued that he had registered the Domain Name more than six months prior to the renaming of the BNP Paribas Open being publicly announced, that Complainant does not own a trademark for the name “BNP Paribas Open” and that it could have easily chosen another name for the event in question.
Respondent's submission was not filed within the deadline set by the Center, however, the Panel is free to admit unsolicited supplementary submissions (paragraph 12 of the Rules). The Panel finds that the belated submission (consisting of a simple e-mail communication) of Respondent should be taken into account and therefore admits it.
According to paragraph 4(a) of the Policy, Complainant must prove that:
A. The Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
B. Respondent has no rights or legitimate interests in respect of the Domain Name; and
C. The Domain Name has been registered and is being used in bad faith.
Complainant holds several word and/or combined trademarks with the word elements BNP Paribas. In the present proceedings, Complainant puts forward two trademarks, namely the international trademarks IR 0897938 (combined trademark) and IR 0876031 (word mark), which enjoy protection as trademarks in particular in the USA. These trademark registrations are sufficient to found the Complaint. However, it is noteworthy that Complainant holds other trademarks BNP PARIBAS, some of which are mentioned in the cease & desist letter which Complainant sent to Respondent on January 2, 2009 (Complaint, Exhibit 8).
The disputed Domain Name is <bnpparibasopen.com>.
The identity or confusing similarity requirement under paragraph 4(a) of the Policy is not equivalent to the concept of “confusing similarity” as it is understood under most national or regional trademark laws, in the sense that under the UDRP it suffices that the complainant's trademarks and the domain name in dispute are similar from the phonetic, graphic or semantic points of view, without further elements, such as a similarity of goods and/or services, of sales channels, etc. being required (e.g., AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485 (<vincotte.com>). In particular, the content of the respondent's website is not generally taken into account in assessing identity or confusing similarity.
The existence of a confusing similarity within the meaning of paragraph 4(a) of the Policy makes no doubt in the present case, given that the distinctive elements in the Domain Name, i.e., “bnpparibas” are identical with Complainant's trademarks. The other elements of the Domain Name, i.e. the word “open”, which is a generic word, and the gTLd “.com”, which has a technical function, are not sufficient to avoid confusing similarity e.g., Nokia Corporation v. Nokiagirls.com a.k.a IBCC WIPO Case No. D2000-0102 (<nokiagirls.com>) and <rollerblade.net>, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (<rollerblade.net>).
Complainant contends that it has never given Respondent its consent to use its trademark BNP PARIBAS. Respondent neither alleges the contrary nor does he contend having any independent rights in a sign identical to the Domain Name.
Complainant also alleges that Respondent does not have legitimate interests in the Domain Name.
In his unsolicited submission of March 3, 2010 as well as in his reply of January 20, 2009 to Complainant's cease and desist letter, Respondent argues that he registered the Domain Name more than six months before the renaming of the Indian Wells Tennis Tournament to “BNP Paribas Open” was announced to the public, and that Complainant could have easily chosen another name for the tournament. To the extent that Respondent's argument can be understood to mean that it chose the Domain Name by coincidence, this argument lacks credibility. To the contrary, it seems most likely that Respondent was aware of the well-known trademark BNP PARIBAS and that he learnt about the forthcoming name change of the Indian Wells tournament before this change was being announced to the public. His choice of the Domain Name does thus not appear to have been a coincidence.
Respondent's argument can be understood in the sense that Respondent claims to have legitimate interests to the Domain Name within the meaning of paragraph 4(c)(i) of the Policy, i.e., that he was using legitimately the Domain Name before any notice to him of the dispute.
Accordingly, the Panel examines whether Respondent's use can be considered legitimate under the aforementioned provision.
The first condition for the application of paragraph 4(c)(i) of the Policy is the use or demonstrable preparations of use by respondent of the domain name or a name corresponding to the domain name before any notice of the dispute being served on him.
It appears that Respondent used the Domain Name before notice of the dispute and that he used it already for selling tennis tickets as well as tickets to other type of events, in conjunction with his website “www.eseats.com”, which appears to be his primary website. This is indicated in the cease and desist letter Complainant sent to Respondent on January 2, 2009 (Complaint, Exhibit 8) and may be seen from the website at the Domain Name. In this letter, Complainant asserted that the Domain Name was used to give access to Respondent's website “www.eseats.com”. Upon verification by the Panel, this is true only in the sense that, when wishing to proceed to a ticket purchase, i.e., when clicking the appropriate buttons on the website “www.bnpparibasopen.com”, the visitor is directed to “www.eseats.com” where the purchase can be completed. In contrast, in the Complaint, Complainant alleges that the visitor is automatically redirected to the website “www.tennismall.com” which appears to belong to Respondent, too. The allegation of automatic redirection to the aforementioned website is not proven and could not be ascertained by the Panel when visiting the website to which the Domain Name resolves. Actually at the time of this decision, it is only by clicking on the advertisement banner for “www.tennismall.com” that the visitor is directed to that site.
Be that as it may, it results from the above that the first condition of paragraph 4(c)(i) of the Policy is met, namely that the Domain Name was used before any notice of the dispute to Respondent.
However, for Respondent to obtain a defence under the UDRP, the second condition needs to be met, namely that Respondent uses the Domain Name for a bona fide offering of goods and/or services, which is the second condition for the application of paragraph 4(c)(i) of the Policy.
In his e-mail communication of January 20, 2009 Respondent indicates that he is a licensed entity in the state of Arizona engaged in the business of selling event tickets and travel arrangements in relation with national and international events (Complaint, Exhibit 9). This declaration not having been challenged by Complainant, and no contradicting facts arising from a limited online search done by the Panel, it may be assumed that this indication is true.
However, Respondent does not appear to be an authorised reseller of tickets of the BNP Paribas Open tournament. The Complainant asserts that they have given no authorization to Respondent. Respondent not having alleged any such connection to the organizer of this event, it may be inferred here that there is no contractual relationship between them.
Be that as it may, and even assuming Respondent would be an authorized reseller of Complainant or the BNB Paribas Open tournament organizer, the Panel refers to the so-called Oki Data line of decisions, i.e., the Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903, (<okidataparts.com>) decision is generally considered by panels as the leading case regarding disputes involving manufacturers and authorised resellers. It has also been referred to in cases where the respondent did not have any contractual relationship with the trademark holder. See Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481 (<porsche-buy.com>); Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447 (<volvo-auto-body-parts-online.com>), as is presumably the case here.
In the Oki Data decision, supra,the panel held that the use of a trademark of a manufacturer as part of a domain name can be considered as bona fide offering only if a certain number of conditions are met. Thus,
- A respondent must actually be offering the goods or services at issue. Here, Respondent offers on the website “www.bnpparibasopen.com” tickets and travel arrangements in relation with the BNP Paribas Open tournament, which corresponds to the goods and services offered by the organizer of the tennis tournament (cf. “www.bnpparibasopen.org”);
- However, a respondent must use the website to sell only the goods and/or services in question; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods and/or services.
In the circumstances of this case, Respondent's website does not allow the website visitor to complete any purchase of tickets or of travel arrangements on the website “www.bnpparibas.com” itself. Rather, when clicking on the button “BNP PARIBAS OPEN TICKETS”, the visitor is redirected to the primary website of Respondent, namely “www.eseats.com”, where tickets are offered for a wide range of events in diverse areas such as sports, theater and concerts. Likewise, when clicking on the button “BNP PARIBAS OPEN PACKAGES”, the visitor is redirected to a website “www.tennistours.com” where travel arrangements are offered for diverse tennis tournaments on different continents (cf., National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700 (<finalfourtickets.com>)).
Moreover, the website at the Domain Name displays links to other events not connected with Complainant. Notably, under the heading “Other Popular Tennis Websites”, Respondent's website contains links to websites dedicated to competing events such as the Sony Ericsson Open, the US Open and Wimbledon, as well as to a website dedicated to the ATP World Finals.
This means that the website “www.bnpparibasopen.com” is nothing more than a bait, allowing Respondent to attract visitors – using the goodwill of Complainant's trademark – and to direct them to the whole diversity of his offer, of which the offer related to the BNP Paribas Open is actually a very small part. The second condition of the Oki Data test is thus not met, and Respondent cannot claim legitimate use of Complainant's trademarks in the Domain Name.
In light of the above, it appears that Respondent's website is not only intended to sell products and/or services related to the BNP Paribas Open, but also, if not primarily, to attract traffic to the primary site of Respondent, “www.eseats.com”, and other websites, such as “www.tennismall.com” which also belongs to Respondent, offering a wide range of products and services which have no connection with the BNP Paribas Open.
Accordingly, Respondent's use of the Domain Name cannot be considered to be legitimate within the meaning of paragraph 4(c)(i) of the Policy.
Moreover, and as Complainant rightly points out in its Complaint, the Domain Name causes initial interest confusion as to the source, sponsorship, affiliation, or endorsement of Complainant's website. Even though a misdirected user may become aware that the website is not affiliated with Complainant, the fact remains that Respondent's improper and unauthorized use of the trademark diverts the Internet user seeking Complainant's official website. Indeed, when typing the Domain Name – which merely consists of the event name without any descriptive addition and is moreover registered under the attractive “.com” gTLD – the Internet user will expect a website operated by the organizer of the tennis event in question or, alternatively, by Complainant as the event's main sponsor, but at any rate a website that is somehow associated with and/or endorsed by Complainant.
Based on the above reasons, the Panel concludes that Respondent lacks any right or legitimate interests in the Domain Name and finds in favor of Complainant's under paragraph 4(a)(ii) of the Policy.
In the context of the last requirement under the Policy, namely that the registration and use of the Domain Name have occurred in bad faith, Complainant argues that Respondent's conduct fulfils this condition because he uses the Domain Name for commercial gain in connection with, inter alia, tennis tickets and tennis items. Complainant also infers bad faith from Respondent's suggestion at the possibility of selling the Domain Name to Complainant.
The first argument refers to paragraph 4(b)(iv) of the Policy which provides that a domain name registration and use is made in bad faith if by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website.
As can be inferred from Respondent's e-mail communication of January 20, 2009 to Complainant, and from Respondent's website itself, that Respondent registered and is using the Domain Name for commercial purposes, i.e., “to promote and grow our business interest”. Respondent actually uses the Domain Name to sell tickets and travel arrangements in relation with the BNP Paribas Open tournament, but also – if not primarily – to redirect Internet users to other websites which feature a much broader offer of goods and/or services.
The Panel finds that by using Complainant's trademark as the distinctive elements of the Domain Name, Respondent creates a risk of confusion, at least in the sense that the visitors to the website will, at least initially, expect a website operated by Complainant or his contract partner, the event organizer. In any case, the visitor will have the impression that the website to which the Domain Name resolves is associated with, or endorsed by, the owner of the BNP PARIBAS trademark, i.e., Complainant. The disclaimer that is contained on the website is of no help to Respondent, because at the time the visitor reads the disclaimer, Respondent has already misused Complainant's trademark to bring consumers to his website. (e.g., The Orange Bowl Committee, Inc. v. Front and Center Tickets, Inc/ Front and Center Entertainment case, supra).
Visitors of Respondent's website “www.bnpparibasopen.com” are likely to visit said website mistakenly believing that it is authorised, official or endorsed by Complainant. The fact that the user unavoidably, either via the advertising banner, the recommended websites of other tournaments or via the website “www.eseats.com” to which the user is redirected if he wishes to buy a ticket, is offered tickets for events that are competing with the one sponsored by Complainant, are elements which here constitute bad faith conduct.
Moreover, the Panel finds the registration of the Domain Name, prior to the new name of the BNP Paribas Open event was announced publicly, to be another indication of bad faith. In the circumstances of this case, the Panel finds it very likely that Respondent was probably informed of the planned event name through the contacts he certainly has as a ticket broker in the tennis community and seized the opportunity to register the Domain Name before Complainant or the event organizer did. It is thus likely that the registration was not only made in view of generating commercial gain by taking advantage from Complainant's notoriety and prestige, but also to deprive the latter or the event organizer from the possibility to register the new event name as a domain name under the gTLD “.com”. This is an additional indication for Respondent's bad faith (cf. Michelin Recherche et Technique S.A. v. Naxza.com, WIPO Case No. D2005-1107 (<bfgoodrichsuperchallenge.com>)).
Further, in this Panel's opinion, the fact that Respondent declared his readiness to enter into negotiations with a view of the sale of the Domain Name to Complainant is not conclusive indication of bad faith as the circumstances surrounding this case rather indicate that Respondent registered the Domain Name not in view of reselling it for a profit, but to generate commercial gain by using it in conjunction with his other websites.
The Panel concludes that Respondent registered and is using the domain name <bnpparibasopen.com> in bad faith.
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 <bnpparibasopen.com> be transferred to Complainant.
Date: March 17, 2010