WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fedération Française du Tennis (FFT) v. Marimuthu Devendran
Case No. DCO2011-0006
1. The Parties
The Complainant is Fedération Française du Tennis (FFT) of Paris, France, represented by Nameshield, France.
The Respondent is Marimuthu Devendran of Falmouth, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <frenchopen.co> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2011. On January 25, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On the same day, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on February 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2011.
The Center appointed Alexander Duisberg as the sole panelist in this matter on February 25, 2011. 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.
4. Factual Background
The Complainant challenges the registration of the disputed domain name <frenchopen.co> by the Respondent.
It results from the undisputed submissions brought forward and evidenced by the Complainant that it is an association which promotes, organizes and develops tennis in France and collects and supports the actions of affiliated clubs. The Complainant represents France in international meetings (e.g. Davis Cup, Fed Cup etc.) and is in charge of organizing major tournaments like the "French Internationals of Roland Garros", which is the biggest tournament of the tennis season on clay, one of the four Grand Slam tournaments and generally known and referred to as the "French Open" in the tennis world. The tournament is broadcast by the media worldwide. The Complainant promotes this tournament and related products through various websites, such as “www.frenchopen.com” and “www.frenchopen.fr”. The Complainant is the owner of the following trademarks consisting of or including the term "French Open" in word or in word/logo:
- International Trademark FRENCH OPEN, no. 538170;
- French Trademark FRENCH OPEN, no. 1658995;
- International Trademark ROLAND GARROS FRENCH OPEN, no. 732452;
- United Kingdom Trademark ROLAND GARROS FRENCH OPEN, no. 1393844;
- Community Trademark ROLAND GARROS FRENCH OPEN, no. 003498276
- Community Trademark ROLAND GARROS FRENCH OPEN, no. 007267057;
- French Trademark ROLAND GARROS FRENCH OPEN, no. 99823417;
- French Trademark FRENCH OPEN ROLAND GARROS, no. 93490167.
The Complainant registered all of the trademarks referred to above before the disputed domain name <frenchopen.co> was registered in July, 2010.
Between 1997 and 2006 the Complainant has registered several domain names using the term "frenchopen" under the Top-Level-Domains ".com", ".net", ".fr", ".eu", ".org" and ".mobi" and operates websites under these domain names.
The disputed domain name <frenchopen.co> was registered on July 21, 2010 and has not been used.
On October 22, 2010 the Respondent sent an email to the Complainant offering the Complainant to buy or rent the disputed domain name <frenchopen.co>. The email reads as follows:
I own the domain frenchopen.co, which I recently bought when the .co extension came into public availability.
I have had a lot of interest from private parties to buy the domain name. But as the domain is more relevant for the French federation and Rolland garros, I would like to give the first refusal to FFT. So if the organization is interested in buying or renting the domain "frenchopen.co" please get in touch with me. You can contact me at […].
5. Parties’ Contentions
The Complainant contends that the disputed domain name <frenchopen.co> is identical and confusingly similar, respectively, to its trademarks FRENCH OPEN, that the Respondent lacks rights or legitimate interests in the disputed domain name and that the disputed domain name has been registered and used in bad faith:
(a) The disputed domain name incorporates the term "French Open" and is therefore identical to the Complainants registered trademark FRENCH OPEN. The Complainant owns numerous trademarks FRENCH OPEN and uses respective domain names. The mere addition of the ccTLD (country code top-level domain) ".co" is not enough to avoid similarity between the disputed domain name and the trademarks FRENCH OPEN and its domain names associated. Given that the term "French Open" is known especially in Anglophone countries and that a Google search of the term "French Open" displays several results, related to the company, the Complainant contends that the disputed domain name is identical or at least confusingly similar to the Complainant's trademarks.
(b) The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is neither affiliated with nor authorized by the Complainant and is not related in any way to the Complainant's business. The Respondent is not commonly known by the disputed domain name and has no trademarks FRENCH OPEN, it does not do any legitimate business under the disputed domain name nor has it used the disputed domain name since its registration, i.e. the site is down for maintenance since then. In consequence, the Complainant contends that the Respondent has not registered the disputed domain name <frenchopen.co> with the intention of a bona fide offering of related goods or services.
(c) The Complainant, lastly, contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant its trademarks FRENCH OPEN are well-known in the world in relation with the Complainant. The Complainant argues that it is well established that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of the registration cost is evidence that a domain name was registered and being used in bad faith (adidas-Salomon AG v. Vincent Stipo, WIPO Case No. D2001-0372). The Complainant contends that due to the Respondent's attempt to sell or rent the disputed domain name <frenchopen.co> to the Complainant it is, thus, established that the Respondent registered and used the disputed domain name in bad faith.
The Complainant requests a decision that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Procedural matters
The Respondent did not file any formal Response to the Complaint. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (paragraph 4.6) the Respondent’s default does not automatically result in a decision in favour of the Complainant. In fact the Complainant must establish each of the three elements required by paragraph 4(a) of the Policy. While a panel may draw negative inferences from the Respondent’s default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in an UDRP proceeding (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 and Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Varentinuo inc. reg by sopao.com, WIPO Case No. D2008-0186).
Pursuant to the requirements of paragraph 4(a) of the Policy, transfer of the domain name to the Complainant may only be granted if the Complainant demonstrates that each of the following three elements has been satisfied:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which theComplainant has rights; and
(ii) The 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.
B. Identical or Confusingly Similar
The list of trademarks referenced in Section 4 above is based on the information provided by the Complainant, which is capable of interpretation based on the evidence attached to the Complaint. Thus, the Panel notes that while the Complainant identified the trademarks no. 003498276 as a United Kingdom and no. 007267057 as a French trademark the evidence provided by the Complainant shows that these trademarks actually are Community trademarks registered with OHIM. The Panel also notes that (apart from the International Trademark no. 538170 and French trademark no. 1658995 FRENCH OPEN) the majority of the trademarks referred to by the Complainant also include the term "Roland Garros" and, thus, the Complainant's general reference to its "FRENCH OPEN trademarks" must not be taken literally but rather in a sense that all the trademarks contain the term "French Open".
The Panel finds that the disputed domain name <frenchopen.co> is identical to the Complainant's trademarks FRENCH OPEN and confusingly similar to the Complainant's trademarks ROLAND GARROS FRENCH OPEN and FRENCH OPEN ROLAND GARROS.
The Complainant has provided sufficient evidence confirming that it is the owner of various registered trademarks consisting of or including the term "French Open", e.g. International trademark No. 538170 (word mark FRENCH OPEN registered for Fédération Française de Tennis on June 22, 1989 in class 3); French trademark No. 1658995 (word mark FRENCH OPEN registered for Fédération Française de Tennis on April 29, 1991 in classes 24 and 25); Community trademark No. 003498276 (word mark ROLAND GARROS FRENCH OPEN registered for Fédération Francaise de Tennis on January 12, 2006 in classes 3, 6, 9, 12, 14, 16, 18, 20, 22, 24, 25, 26, 28, 30, 32, 33, 35, 36, 37, 38, 39, 41, 42, 43 and 45); Community trademark No. 007267057 (word mark ROLAND GARROS FRENCH OPEN registered for Fédération Française de Tennis on August 6, 2009 in classes 20, 21 and 45); and French trademark FRENCH OPEN ROLAND GARROS (word mark no. 93490167 registered for Fédération Française de Tennis on October 29, 1993 in class 3) etc.
The disputed domain name is identical with International trademark No. 538170 and French trademark No. 1658995, both FRENCH OPEN.
The disputed domain name is confusingly similar to Complainant's trademarks FRENCH OPEN ROLAND GARROS and ROLAND GARROS FRENCH OPEN. Such similarity remains unaffected by the fact that these trademarks are combining the term "French Open" with the name "Roland Garros" as a prefix or suffix.
Confusing similarity, in trademark law, is subject to a subjective test. What is similar to one person may not be so to another. It was held by the European Court of Justice in the SABEL/PUMA case (C-251/95 of November 11, 1997) that: "In determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, phonetic and conceptual similarities between the marks. The comparison must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components" (Cadbury Limited v. Jonathan Harris, WIPO Case No. D2000-1249).
It is the opinion of the Panel that based on the above test, the disputed domain name <frenchopen.co> has to be considered not only identical to the International trademark No. 538170 and French trademark No. 1658995, both FRENCH OPEN, but also confusingly similar to i.e. the Complainant’s Community trademarks No. 003498276 and No. 007267057, both ROLAND GARROS FRENCH OPEN or French trademark no. 93490167 FRENCH OPEN ROLAND GARROS. The identical part of the latter trademarks, i.e. the term "French Open" dominates these trademarks, as the public will immediately associate the term "French Open" with the said tennis tournament, whereas the name "Roland Garros" only indicates the venue of the tournament (the arena is named "Stade Roland Garros") and, thus, is perceived as being of secondary importance for the overall assessment of the similarity of the domain name and the trademarks. By virtue of the widespread use and reputation of the Complainant's FRENCH OPEN trademarks, members of the public around the world would mistakenly believe that the registrant of the <frenchopen.co> domain name was the Complainant or was in some way associated with the Complainant. Therefore, this term "Roland Garros" is not capable to exclude confusing similarity between the disputed domain name <frenchopen.co> and the trademarks ROLAND GARROS FRENCH OPEN.
Thus, the Panel is satisfied that the first condition has been met.
C. Rights or Legitimate Interests
The Panel finds that the Respondent has neither rights nor legitimate interests in respect of the disputed domain name <frenchopen.co>.
The Complainant has asserted in its Complaint that the Respondent is neither affiliated with nor authorized by the Complainant in any way and has no business whatsoever with the Complainant.
Furthermore, there is no indication for the assumption that the term "French Open" is a descriptive term, in which the Respondent could have a legitimate interest. In fact FRENCH OPEN is a trademark, which is used and known worldwide to identify the tournament organized by the Complainant.
The Respondent has not disputed the Complainant's assertion that it has no rights or legitimate interests in respect of the disputed domain name nor has it provided any other information suggesting that the Respondent has any rights or legitimate interests in respect of the disputed domain name. In particular, the Respondent does not appear to use the disputed domain name for any of the purposes suggested as legitimate interest by paragraph 4(c) of the Policy. The Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, is not commonly known by the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name. In fact the Respondent's website under the domain name <frenchopen.co> merely displays a page stating: “This site is down for maintenance. Please check back again soon”.
In the absence of any submission from the Respondent, the only known circumstances supporting the existence of rights or legitimate interests of the Respondent in respect of the disputed domain name is the mere registration of <frenchopen.co>. Yet, the Panel concurs with earlier decisions holding that mere registration does not seem sufficient to establish rights or legitimate interests since if this was so, all registrants would have such rights or legitimate interests, and no complainant could succeed on a claim of abusive registration (see General Electric Company v. John Bakhit, WIPO Case No. D2000-0386 and Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A v. Steven Shiekman, WIPO Case No. D2000-1375).
Under these circumstances this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and is therefore satisfied that the second condition is met.
D. Registered and Used in Bad Faith
The Panel is satisfied that the disputed domain name <frenchopen.co> was registered and is being used in bad faith for the following reasons.
The circumstances enumerated in paragraph 4(b) of the Policy regarding "evidence of registration and use in bad faith" are not exhaustive. A finding of bad faith may be made where the respondent "knew or should have known" of the registration and/or use of the trademark prior to registering the domain name (Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763). It is shown in the Complaint that the trademarks FRENCH OPEN, ROLAND GARROS FRENCH OPEN and FRENCH OPEN ROLAND GARROS have been the object of several registrations in several countries and used accordingly for decades prior to the Respondents registration of the disputed domain name. Moreover, the Complainant filed as evidence substantial documentation indicating that the tennis tournament "French Open" is subject to worldwide extensive media coverage. In light of these circumstances, and in the absence of any counter argument from the Respondent, the Panel finds Complainant’s allegations credible that the Respondent had no good faith intention to use the disputed domain name <frenchopen.co> when registering it.
Furthermore, paragraph 4(b)(i) of the Policy holds that, if the circumstances indicate that the disputed domain name was registered for the purpose of selling the disputed domain name to the Complainant, that the Complainant is the owner of the trademark and that the consideration sought by the Respondent is in excess of documented out-of-pocket costs directly related to the disputed domain name, then this is evidence of bad faith registration and use on behalf of the Respondent. In the present case the Respondent offered the disputed domain name for sale or rent to the Complainant. In relying on paragraph 4(b)(i) of the Policy and with the intend to provide evidence of such respective bad faith in this context, the Complainant refers to the email of the Respondent dated October 22, 2010.
The Panel notes that in this email the Respondent did not offer the disputed domain name asking for a specific purchase or rental price which could be considered in excess of out-of pocket expenses. The Panel is nevertheless prepared to accept that this email provides evidence for the Respondent's bad faith. The Respondent in its offer indicated that there was "a lot of interest from private parties", i.e. other potential buyers or rentees and that the Complainant would have the chance to place the first bid. The Panel finds that such offer implies that the purchase or rental price for the disputed domain name would not be limited to out-of-pocket expenses, otherwise the reference to other potential buyers would not have made any sense. The Panel finds that the only reasonable conclusion that can be drawn from the Respondent's email dated October 22, 2010 is that the Respondent intended to pressure the Complainant to make a good offer (certainly in excess of the out-of-pocket costs related to the domain name) by implicitly threatening that the disputed domain name may otherwise be sold to a third party placing a higher bid. Furthermore, the Respondent stated in its email dated October 22, 2010 that he wanted to "to give the first refusal to FFT" which the Panel interprets as Respondent's intention to grant the Complainant a "right of first refusal" regarding the purchase or rent of the disputed domain name. Thus, the Panel is of the opinion that the Respondent itself expressed the view that the Complainant had a certain entitlement to the disputed domain name by offering a right of first refusal, i.e. granting the Complainant priority over other potential buyers or rentees. This is further evidence for the fact that the Respondent was aware of the Complainant and its rights under the trademarks FRENCH OPEN.
No evidence has been given by the Respondent regarding the question whether or not the disputed domain name was registered in bad faith.
Thus the Panel is of the opinion that paragraph 4(b)(i) of the Policy applies and the Respondent has registered and is using the disputed domain name 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 disputed domain name <frenchopen.co> be transferred to the Complainant.
Dated: March 11, 2011