WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Federation Francaise de Tennis (FFT) v. Navneet Kumar
Case No. D2015-0700
1. The Parties
The Complainant is Federation Francaise de Tennis (FFT) of Paris, France, represented by Nameshield, France.
The Respondent is Navneet Kumar of Jalandhar, Punjab, India.
2. The Domain Name and Registrar
The disputed domain name <frenchopenlivestreaming.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2015. On April 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 17, 2015, 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 April 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2015.
The Center appointed Ellen Shankman as the sole panelist in this matter on May 28, 2015. 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 date of the Domain Name registration was confirmed by the Registrar to be March 13, 2015. The Complainant provided evidence of multiple trademark registrations for the mark FRENCH OPEN including, inter alia, International Trademark, No. 538170, (registered on June 22, 1989) that predates the date of the Domain Name registration.
Further, the Complainant is also the registered proprietor of International Trademark, No. 732452, (registered on April 17, 2000) for ROLAND GARROS FRENCH OPEN that also predates the date of the Domain Name registration for a variety of related goods.
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 Panel also conducted an independent search to determine that the Domain Name is currently active.
Because there is no formal response, the facts regarding the use and fame of the Complainant’s mark, as well as the non-response from the Respondent to the Cease & Desist letter, are taken from the Complaint and are generally accepted as true in the circumstances of this case.
5. Parties’ Contentions
The Complainant alleges that, founded in 1920, the Federation Francaise de Tennis promotes, organizes and develops tennis in France. It counts about 1.1 million licensees.
The Complainant also provides representation of France in international meetings and organizes major tournaments such as the International of France at Roland Garros. The International of France at Roland Garros is the biggest tournament of the tennis season on clay and the only Grand Slam still competing on that surface.
The Complaint alleges fame in the mark and states that in the tennis world with an Anglophone majority, the tournament is also known as the “French Open” since 1968, the first year of the Open era. It is one of the four Grand Slam tournaments, the second in the calendar after the Australian Open in January.
The Complainant is the owner of several trademarks FRENCH OPEN, of which the International Trademark No. 538170 for FRENCH OPEN was registered on June 22, 1989.
The Complainant sent a Cease & Desist letter on March 25, 2015 to the Respondent, to which no response was received, according to the Complainant.
The Respondent uses the Domain Name to sell tickets without authorization in relation with the Complainant’s business. The Panel notes that when clicking the tab for tickets, the website reads: “sorry, no posts to display”.
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.
Respondent has used the disputed Domain Name 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.
To summarize the Complaint, the Complainant is the owner of trademarks FRENCH OPEN and the ROLAND GARROS FRENCH OPEN. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the generic words “live” and “streaming” does not prevent a finding of confusing similarity. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith.
6.1. Language of Proceedings
According to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement unless the panel determines otherwise. Since the language of the Domain Name Registration Agreement is in English (and since the underlying website is in English) the Panel finds that the language of the proceeds is appropriately in English.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for FRENCH OPEN (and these rights precede the date of the Respondent’s obtaining the Domain Name). Moreover, a Google search on the expression FRENCH OPEN provides several results, all of which are linked with the Complainant.
The Panel finds that the addition of the generic terms “live” and “streaming” at the end of the Domain Name does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the disputed Domain Name and the Complainant, its international trademark and its domain names associated.
Finally, the website in relation with the disputed Domain Name makes a clear reference to the Complainant by including his logo ROLAND GARROS RG ® on the main page, further adding to likely of confusion.
See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark FRENCH OPEN, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270”.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name <frenchopenlivestreaming.com> and that he is not related to or affiliated in any way with the Complainant.
According to the information provided by the Registrar’s Whois of the disputed Domain Name, the Respondent is “Navneet Kumar”. Past panels have held that a Respondent was not commonly known by a disputed Domain Name if the Whois information was not similar to the disputed Domain Name. Thus, the Respondent does not appear to be known by the name “French Open” or even the expression “french open live streaming”.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name. Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the distinctiveness of the Complainant’s trademark and reputation, and given the content of its website, the Complainant claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark FRENCH OPEN and uses it for the purpose of misleading and diverting Internet traffic.
Moreover, the main page of the website “frenchopenlivestreaming.com” provides information in relation with the Complainant and displays the Complainant’s figurative trademark ROLAND GARROS RG® without authorization, in order to create a likelihood of confusion with the Complainant.
A tab “tickets” was created, but as of the date of this Panel decision, the link directs to a message that states “Sorry no posts to display”. The Panel finds persuasive Complainant’s assumption that this tab is intended to be used before/around the time of the Roland Garros French Open tournament.
The Panel finds compelling factual and circumstantial evidence in the record that the Respondent likely knew of the Complainant’s mark when it registered the Domain Name.
It has been held in previous cases that knowledge of a corresponding mark at the time of the Domain Name’s registration suggests bad faith (LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Caixa D’Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464).
Given the evidence of the Complainant’s prior rights in the mark, the timing of the registration of the Domain Name, together with evidence of the use of the mark both in the Domain Name as well as in the website by the Respondent, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) 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 name <frenchopenlivestreaming.com> be transferred to the Complainant.
Ellen B. Shankman
Date: June 1, 2015