WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fédération Française De Tennis (FFT) v. Ticketfinders International LLC / Michael Cook
Case No. D2013-2024
1. The Parties
The Complainant is Fédération Française De Tennis (FFT) of Paris, France, represented by Nameshield, France.
The Respondent is Ticketfinders International LLC / Michael Cook of Wilmington, Delaware, United States of America (“USA”), represented by MKR Legal, USA.
2. The Domain Names and Registrar
The disputed domain names, <frenchopen2018.com>, <frenchopen2018.net>, <frenchopen2019.com>, <frenchopen2019.net>, <frenchopen2020.com> and <frenchopen2020.net> (the “Domain Names”), are registered with Melbourne IT Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2013. On November 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 2, 2013, the Registrar 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 December 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2013. The Response was filed with the Center on December 23, 2013.
The Center appointed Tony Willoughby as the sole panelist in this matter on January 9, 2014. 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.
Having read the case file, the Panel sought further information as to the Complainant’s trade mark rights by way of Procedural Order No. 1 dated January 14, 2014, inviting further submissions from the parties. The Complainant filed a further submission on January 15, 2014. The Respondent filed a further submission in response on January 21, 2014.
4. Factual Background
The Complainant is a legal entity under French law, which was founded in 1920 to develop tennis in France. Among its responsibilities is the representation of France in international meetings concerned with tennis (e.g. the international competitions such as the Davis Cup, the Federation Cup and the Olympics). Significantly, for the purpose of this dispute, the Complainant is responsible for the running of the tennis tournament known internationally as the “French Open”, one of the so-called “Grand Slam” events and one which has been run as an open event since 1968.
The Complainant is the registered proprietor of International Registration No. 538170 dated June 22, 1989 FRENCH OPEN (words) in class 3 for perfumery and cosmetic products.
The Complainant is also the registered proprietor of Community Trade Mark Registration No. EU003498276 dated January 12, 2006 (filed October 31, 2003) ROLAND GARROS FRENCH OPEN (words) for a wide variety of goods and services including services in class relating to the organization of competitions and related ticket agency services.
The Complainant is also the registered proprietor of United States Trade Mark Registration No. 3374854 dated January 29, 2008 (filed October 13, 2006) ROLAND GARROS FRENCH OPEN (words) for a wide variety of goods and services including “organizing community sporting and cultural events” and related ticket agency services in class 41. This registration features a disclaimer reading “no claim is made to the exclusive right to use “French Open” apart from the mark as shown.”
The Complainant operates its main website connected to its domain name, <frenchopen.com> (registered December 18, 1997), and is the proprietor of a number of other similar domain names such as <frenchopen.org> (April 10, 1996), <frenchopen.net> (May 8, 2001) and <frenchopen.fr> (February 25, 2004).
The Domain Names were registered on August 22, 2012 and are connected to a substantially identical home page headed “Ticketfinders International – name it, we’ll get it”. There is a bar containing 4 links: “Home”, “About Us”, “Links” and “Contact”. Under “About Us” the Respondent describes itself as follows:
“Ticketfinders International LLC is a Limited Liability Company incorporated in the State of Delaware, U.S.A. We are an international ticket brokerage with over forty-one years experience in the secondary ticket market. We specialize in sourcing tickets throughout Europe and the World with a particular expertise in finding hard to get tickets and tickets to sold-out events. Whether for personal or corporate clients, Ticketfinders International aims to offer the best personalized experience for each one of our patrons, with particular detail taken to find the very best tickets available at the best possible prices.”
The “Links” link leads to further links to six major tennis championships, each of which in turn leads to the Respondent’s main website connected to its domain name, <ticket-finders.com> featuring references and further links to a wide variety of other sporting and cultural events.
The home page features in its centre two prominent links, one entitled “French Open” followed by the year present in the Domain Name and the other entitled “French Open Tickets” both of which lead to the Respondent’s “www.ticket-finders.com” website.
Each of the pages directly linked to the Domain Names features in very small pale grey print the disclaimer:
“Please note that Ticketfinders International is NOT in any way affiliated with, nor do we have any licenses or strategic alliances with, nor are we sponsored, endorsed or authorized by any League, team, association, event producer or venue. Any and all copyrights, trademarks, or trade names used within this web site are for descriptive purposes only and are not meant to suggest any kind of partnership or affiliation. Copyright © 2011-2013. All Rights Reserved.”
However, it appears from the annexes to the Complaint that the above disclaimer was not posted to the site until after this Complaint was filed.
On February 11, 2013, the Complainant filed a complaint under the Policy against the Respondent in relation to 13 domain names, many of which are similar to those the subject of this Complaint. They included, for example, <frenchopen2012.net>, <frenchopen2017.net> and <2012frenchopen.com>. The decision is published on the Center’s website under Fédération Française de Tennis (FFT) v. Ticketfinders International LLC, WIPO Case No. D2013-0287. The Respondent did not respond to that Complaint and the panel ordered transfer of the domain names to the Complainant.
5. Parties’ Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to the Complainant’s FRENCH OPEN trade mark.
In response to Procedural Order No. 1 the Complainant introduced the Community and United States ROLAND GARROS FRENCH OPEN trade mark registrations details of which are to be found in Section 4 above and asserted that the Domain Names are confusingly similar to those registrations covering precisely the ticket agency services offered by the Respondent.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names, contending that none of the examples of rights or legitimate interests set out in paragraph 4(c) of the Policy is applicable.
Finally, the Complainant contends that the Domain Names were registered and are being used in bad faith. This section of the Complaint is short. It reads:
“The Complainant contends that the domain names are confusingly similar to its trademark.
The Respondent uses the domain names to sell tickets without authorization in relation with the Complainant’s business.
The Complainant contends that the Respondent is unauthorized to sell tickets to their Tennis matches and could be considered as the Complainant’s competitor in the context of ticket sales.
For the purposes of paragraph 4(b)(iv) of the Policy the Complainant contends that the
Respondent has used the disputed domain names in an attempt to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement.”
The Respondent does not dispute that the Domain Names are identical or confusingly similar to the Complainant’s International Registration No. 538170 for the purposes of paragraph 4(a)(i) of the Policy, but denies that the Domain Names are identical or confusingly similar to the ROLAND GARROS FRENCH OPEN trade mark registrations introduced by the Complainant in response to the Procedural Order No. 1.
The Respondent denies that it has no rights or legitimate interests in respect of the Domain Names and denies that it registered the Domain Names in bad faith.
The Respondent contends that it is using the Domain Names in connection with a bona fide offering of goods and services in that it is a reseller of tickets for the French Open tennis tournament and its use of the Domain Names conforms to the Oki Data test as set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. It further contends that even if it does not meet the Oki Data test, it is making fair nominative use of the Domain Names. It asserts: “To fall within the protection of the nominative fair use defense, (i) the product or service in question must not be “readily identifiable” without use of the trademark, (ii) only so much of the mark may be used as is reasonably necessary to identify the product or service, and (iii) the use of the mark in question must not suggest sponsorship or endorsement by the trademark holder.”
The Respondent denies that any of the examples of bad faith registration and use set out in paragraph 4(b) of the Policy is applicable and in relation to the specific allegation of the Complainant that it falls foul of paragraph 4(b)(iv) of the Policy, the Respondent points to the disclaimer on the website and that the nature of the website is so different from that of the Complainant that confusion is not a realistic possibility.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The 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 Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith.
B. Identical or Confusingly Similar
The Respondent cannot (and does not) dispute that the Domain Names are confusingly similar to the Complainant’s FRENCH OPEN trade mark registration for cosmetics.
Accordingly, the Panel finds that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights.
However, it is convenient here to explore also the Complainant’s allegation that the Domain Names are confusingly similar to the Complainant’s Community and United States Trade Mark registrations for ROLAND GARROS FRENCH OPEN. In relation to the later United States Trade Mark registration the answer has to be in the negative, because that registration disclaims exclusive use of the words “French Open” apart from the mark as shown.
The Community Trade Mark does not appear to be saddled with the same disclaimer, but even though the test under paragraph 4(a)(i) of the Policy is said to be a low threshold test, the Panel struggles to find that there is confusing similarity. The name “Roland Garros”, which features in the trade mark but not the Domain Names, is such a powerful element of the trade mark.
The Panel notes that the Complainant makes no claim to any unregistered trade mark rights in respect of the term “French Open” for tennis.
C. Rights or Legitimate Interests
The Panel is satisfied that the Respondent is a bona fide seller or reseller of tickets for a wide variety of sporting, cultural and other entertainment events through its “www.ticket-finders.com” website.
One of the sporting events covered by the Respondent is the Complainant’s French Open tennis tournament. While the Complainant asserts (and the Panel accepts) that the Respondent is not authorised by the Complainant to sell tickets for the Complainant’s French Open tennis tournament, there is nothing in the case file to suggest that the resale of those tickets by an unauthorized reseller is unlawful per se. The Complainant’s Complaint relates solely to the manner in which those tickets are or may be sold by the Respondent, namely under and by reference to the Domain Names. Accordingly, for the purpose of this decision the Panel treats the Respondent simply as an unauthorized reseller.
The Respondent accepts that the appropriate test for resellers under this element of the Policy is what is known as the Oki Data test arising from the decision in Oki Data Americas, Inc. v. ASD, Inc., supra. The substance of the test is set out in paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition as follows (excluding cited cases):
“2.3 Can a reseller/distributor of trademarked goods or services have rights or legitimate interests in a domain name which contains such trademark?
Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.
However: Some panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant’s trademark (i.e., <trademark.tld>). [See further View 1 in paragraph 2.4 below regarding impersonation.]
Furthermore: A small number of panels have taken the view that, without express authority of the relevant trademark holder, a right to resell or distribute that trademark holder’s products does not create a rightto use a domain name that is identical, confusingly similar, or otherwise wholly incorporates the relevant trademark.”
A principal problem for the Respondent is that tickets for the events indicated in the Domain Names (i.e. the
French Open tournaments for 2018, 2019 and 2020) are not yet available. Accordingly the Domain Names, being connected to active websites, are inherently deceptive.
Moreover, having arrived at the websites connected to the Domain Names, the visitor is directed by at least one of the links on the home page to the Respondent’s main “www.ticket-finders.com” website selling tickets for other events (i.e. classic bait and switch).
Another problem for the Respondent is that while it is plain to the visitor that he/she is visiting a website of the Respondent (not the Complainant), the visitor might very well believe that the Respondent is an authorised reseller of tickets for the Complainant’s French Open tournaments, which it is not. The website features a disclaimer, but it is in a small light grey font and might very well be overlooked. Moreover, on the evidence before the Panel, it seems that the disclaimer only arrived after the Complaint was launched, which detracts from its sincerity. Had the Respondent genuinely intended to alert visitors to the fact that it is not an authorised reseller, it could have made it a much clearer and more prominent disclaimer.
Accordingly, in the view of the Panel, the Respondent fails the Oki Data test on more than one ground. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
D. Bad Faith Registration and Use
The Respondent accurately points out that the underlying purpose behind the Policy is a very narrow one. In his evidence to a sub-committee of the Committee on the Judiciary, U.S House of Representatives, Congress of the United States, Dr. Francis Gurry (then Deputy Director General and Legal Counsel of the World Intellectual Property Organization stated “The most egregious manifestation of this problem [the intersection of the privately administered domain name system and the publicly administered and globally based intellectual property rights system] is the exploitation in bad faith of the ease and simplicity of obtaining a domain name registration in order to register, as a domain name, the trademark of another person with a view to extracting a premium from the owner of the mark. Significantly, throughout the whole of the WIPO Process, not one voice defended this practice, which is known commonly as cybersquatting. The practice was universally condemned.”
The Policy extends beyond that “most egregious manifestation of this problem” inter alia to certain situations where a domain name registrant, by adopting the trade mark of another in the domain name in issue, is seeking to exploit the trade mark value of the domain name without authority and for commercial gain (see for example paragraph 4(b)(iv) of the Policy).
The only trade mark upon which the Complainant originally relied is an International Trade Mark registration of FRENCH OPEN (words) for perfumery and other cosmetic goods. To what extent (if at all) can a domain name used for the sale of tickets for inter alia a tennis tournament be said to impinge upon the Complainant’s trade mark rights in respect of perfumery and cosmetic goods?
Does it matter for the purposes of the Policy that there is a disconnect between the trade mark relied upon and the business activity of the Respondent? In the view of this Panel it depends upon the circumstances. There are literally hundreds of examples of domain names featuring well-known trade marks which resolve to porn sites a million miles away from the goods or services associated with the trade mark. However, in those cases it is the bait and switch factor engendered by the fame of the trade mark which leads to the findings of abusive registration. It is the fame of the trade mark protected brand which attracts the visitors to the offending website. In this case there is absolutely no evidence before the Panel as to the Complainant’s business in “French Open” cosmetics. For all that the Panel knows it may be that the Complainant has never sold one item of “French Open” cosmetics.
In response to Procedural Order No. 1 the Complainant has produced details of two registrations covering its services in relation to the organization of (and ticket sales for) its French Open tennis tournament, but these registrations are for ROLAND GARROS FRENCH OPEN and one of these registrations, the United States registration, features a disclaimer of the words “French Open”. As indicated above, the Panel has not found the Domain Names to be confusingly similar to these registrations.
Nonetheless, as can be seen from paragraph C above, the Panel has found that an objectionable element of the Respondent’s use of the Domain Names is that it constitutes “bait and switch”. How can this be if the cosmetics brand is unknown?
The answer, of course, is that the cosmetics brand is an irrelevance. The registration covering cosmetics is merely an easy route through the first element. What is significant is that the Complainant owns a substantial reputation and goodwill in respect of the name “French Open” for tennis tournaments. It is not the Complainant’s trade mark protected brand which is likely to be attracting visitors to the Respondent’s website, but the Complainant’s famous tennis tournament.
In asserting a likelihood of confusion arising from the Respondent’s use of the Domain Names the Complainant is relying upon the reputation and goodwill associated with its French Open tennis tournament, not its cosmetics trade mark.
The Complainant has produced no evidence to support the existence of a reputation and goodwill in respect of the French Open tennis tournament, but (a) the Panel does not need evidence to support that proposition and takes judicial note of worldwide fame of the tournament among sports fans and tennis fans in particular and (b) by its selection of the Domain Names the Respondent clearly accepts that those names are sufficient for its purposes to identify the Complainant’s tournament.
Why has the Complainant made no claim to unregistered trade mark rights in respect of the name “French Open” for tennis tournaments? The Panel can only surmise that it stems from the fact that the Complainant is French, its representative is French and France does not recognise unregistered trade mark rights as such. It does however recognise the right of a company in the position of the Complainant to restrain unfair competition (“concurrence déloyale”). In the United Kingdom of Great Britain and Northern Ireland (“UK”), for example, the UK equivalent of the Complainant would have no difficulty by way of a passing off action restraining the unauthorised use of the name “Wimbledon” for a tennis tournament or ticketing agency in relation to a tennis tournament in a manner likely to lead people to believe that the tournament/ticket agency was in some way associated with or authorised by the organiser of the tournament. In that context the name “Wimbledon” would be regarded as an unregistered or common law trade mark.
Does the fact that unregistered trademarks are not recognised as such in France mean that French entities are to be disadvantaged as against entities based in common law countries such as the UK or in civil law countries such as Germany where unregistered trademarks are recognised by statute? The Panel does not think so. This Panel has come across the issue in previous cases, one of which was Luis Cobos v. West, North (Nick Handle: JNMTOKTCQD), WIPO Case No. D2004-0182 in which this Panel addressed the issue as follows:
“Is the Complainant’s name merely his personal name or is it in addition an unregistered or common law trademark? To answer that question one has to consider the position under common law. A common law trademark is a trademark, which may or may not be registered (although the term is most commonly used in relation to unregistered trademarks), the use of which by an unauthorized third party can be restrained in a passing off action. If a musician conducted business in a common law jurisdiction such as the United Kingdom, for example, under the name Luis Cobos, could the Complainant succeed in a passing off action in the United Kingdom to restrain that unauthorized use? Almost certainly, the answer is “yes,” in which case his name is a common law trademark. To succeed, the Complainant would have to establish a reputation and goodwill in the United Kingdom under his name Luis Cobos; he would have to prove that the third party’s use of his name would be likely to lead to deception in the marketplace (e.g. among purchasers of CDs) and he would have to prove a likelihood of consequential damage to his goodwill. From the evidence submitted by the Complainant, the Panel has no doubt that the Complainant would be able to prove the necessary elements of the tort.
Does it matter that the Complainant is resident in a civil law jurisdiction? In the Panel’s view it does not matter. First, the Complainant’s reputation and goodwill extends well beyond Spain, but, secondly and more fundamentally, equivalent relief is available to Spanish citizens resident in Spain by way of unfair competition actions and the like. The fact that the terms “common law trademark” and “unregistered trademark” may not be used in that context in Spain cannot sensibly mean that citizens of common law jurisdictions are entitled to wider protection under the Policy than citizens of other jurisdictions. To adopt that approach would ignore the fact that the Policy is intended to be of uniform applicability across the globe; it would also involve subordinating the substance of the issue to its form. Substance has to be more important than form and the point of substance is that the relief available to the proprietors of unregistered trademarks in common law jurisdictions is in reality equally available to their counterparts in other jurisdictions. In the Panel’s view, the name Luis Cobos, the name under and by reference to which members of the purchasing public in Spain and elsewhere recognize his performances and purchase his records, is in common law parlance an unregistered trademark and therefore a trademark for the purposes of paragraph 4(a)(i) of the Policy.”
In the case of the French Open tennis tournament, the reputation and goodwill associated with it extends far beyond the boundaries of France and the Panel has no difficulty in finding that the Complainant has unregistered trade mark rights in respect of the name of the tournament for the purposes of the Policy. Indeed, in Fédération Française de Tennis (FFT) v. Versio, VERSIO.NL Domein Registratie, WIPO Case No. D2013-2021 the panel expressly relied upon the reputation of the Complainant’s trademark FRENCH OPEN in the field of sport:
“As regards to the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark FRENCH OPEN in the field of sport is clearly established and the Panel finds that the Respondent clearly knew that the disputed domain name <frenchopen2014.com> was confusingly similar to the Complainant’s trademark. This is also confirmed by the content of the relevant website, focused on the Complainant’s tennis tournament.
In fact, the disputed domain name was also used in bad faith since at the relevant website, the Respondent was offering tickets for the Complainant’s tennis tournament, taking advantage from the initial interest confusion created by a domain name that is virtually identical to the Complainant’s trademark.”
In this case, of course, the Domain Names, which are connected (directly or indirectly) to active trading sites, indicate tournaments for which the Respondent can have no available tickets. They are inherently deceptive.
The Panel finds that the Domain Names were registered and are being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Panel directs that the Domain Names, <frenchopen2018.com>, <frenchopen2018.net>, <frenchopen2019.com>, <frenchopen2019.net>, <frenchopen2020.com> and <frenchopen2020.net>, be transferred to the Complainant.
Date: January 27, 2014