WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fédération Française de Tennis v. Kapil Kumar
Case No. D2016-0530
1. The Parties
The Complainant is Fédération Française de Tennis of Paris, France, represented by Nameshield, France.
The Respondent is Kapil Kumar of Fatehpur, Sikar, India, self-represented.
2. The Domain Name and Registrar
The disputed domain name <frenchopen2016livestreaming.com> is registered with BigRock Solutions Pvt Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") on March 17, 2016. On March 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 18, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2016. The Respondent sent three emails to the Center on March 29, 2016.
Upon the Complainant's request dated March 31, 2016, the proceedings were suspended for the parties to seek to resolve the dispute on April 1, 2016. Upon the Complainant's request dated May 11, 2016, the proceedings were reinstituted on the same day, with a new Response due date as May 22, 2016.
A formal response was not received by the specified due date and on May 23, 2016, the Center informed the Parties of the commencement on the Panel Appointment process. Accordingly, additional email was received from the Respondent on May 25, 2016, which will be referred to hereinafter.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on June 1, 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.
4. Factual Background
The following background facts and circumstances are to be found in the Complaint and its annexures and, in the absence of any challenges in a Response or otherwise dealing with the merits, can be accepted as background.
The Complainant was founded in 1920 and promotes, organizes and develops tennis in France having approximately 1.1 million licensees. It also provides representation of France in international meetings and organizes major tournaments such as the International of France of Roland Garros which is the biggest tournament of the tennis season on clay and the only Grand Slam still competing on that surface.
In the tennis world the tournament is also known as the "French Open" since 1968 which was the first year of the Open era. It is the registered owner of the international trademark FRENCH OPEN no. 538170 which was initially registered on June 22, 1989 and is presently registered in several countries of the world as appears from the relevant annexure provided with the Complaint.
In addition thereto, the Complainant has registered numerous domain names including the international trademark FRENCH OPEN, namely: <frenchopen.events>, <frenchopen.org>, <frenchopen.com> and significantly <frenchopen2016.com>. The last mentioned was registered on November 20, 2014, and <frenchopen.events> also registered earlier that year. The other two were registered in 1997 and 1996.
5. Parties' Contentions
The Complainant asserts that the disputed domain name incorporates the words "frenchopen" as well as the year "2016" in the case of its abovementioned domain name. It therefore contends that by incorporation of the whole of the Complainant's trade mark in the disputed domain name this causes at very least confusion and is an infringement of its rights and that incorporation of the trademark even if it does not include the year "2016" and the Respondent has added the words "livestreaming" when taken together with the generic Top-Level Domain ("gTLD") ".com" are not sufficient elements to dispel the confusing similarity when compared to the intentional trademark.
In support of these contentions it relies on two previous decisions in which it was the Complainant (Fédération Français De Tennis (FFT) v. Ticketfinders International LLC / Michael Cook, WIPO Case No. D2013-2024; and Fédération Français De Tennis (FFT) v. Versio, VERSIO.NL Domein Registratie, WIPO Case No. D2013-2021).
Its contention based on these decisions is that what has been added cannot dispel the likelihood of confusion between the disputed domain name and the Complainant in respect of its international trademark and its domain names associated.
Complainant also points out that there are links relied upon by the Respondent which clearly add to the confusion with its trademark and activity. The Complainant then sets out further evidence in regard to these web links to which an Internet user would be directed when referring to the disputed domain name and the website thereof which links obviously suggest that the Respondent has a connection with or license from the Complainant.
Complainant further contends that there is no affiliation between it and the Respondent, that it does not carry out any activity for nor have any business with, the Respondent.
The Complainant, relying on the above contentions, also submits that the registration was in an effort to take advantage of Complainant's goodwill and unduly benefit the Respondent by diversion of Internet users who would otherwise have communicated with the Complainant. To this it adds the fact that there is an offer of sale of tickets for the French Open which is also false because the franchise for such sales is limited to six official agents and the Respondent is not included therein.
Complainant draws attention to the fact that the Respondent has failed to react or answer the cease and desist letter dispatched to it by the Complainant.
It is noted that the above allegations were made in the Complaint and before the suspension of the proceedings.
Apart from an attempt between the Parties to arrive at a settlement during which negotiations the procedure was suspended and the exchange of emails on May 25, 2016 between the Respondent and the Center, there has been no other attempt by the Respondent to explain its position or put forward any defense whether formally or informally once the settlement negotiations failed. Last email received from the Respondent stated as follows:
"hey, what is the problem of my domain, I am big fan of French open so I write only information article realted to French open. I am not breaking any rules like showing live streaming or live stream links on my blog. only I wrote information article about French open .."
6. Discussion and Findings
A. Substantive Elements of the Policy
Paragraph 15(a) of the Rules requires that:
"A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) That the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or a service mark in which the complainant has rights;
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)(iii) above, be evidence of the registration of a domain name in bad faith. These are non-exclusive.
Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the respondent's rights or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) of the Policy.
B. Effect of Default
Notwithstanding the fact that the Respondent is in default, the Complainant bears the burden of proof in respect of each of the three main elements in terms of paragraph 4(a) of the Policy referred to above. Such default does not, per se, entitle the Complainant to a finding in its favour by reason thereof, as failure by the Complainant to discharge the burden of proof will still result in the Complaint being denied (M. Corentin Benoit Thiercelin v. CyberDeal Inc., WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v. Shopintimates USA, WIPO Case No. D2011-0049). The Panel is nevertheless not bound to accept all that has been put up by the Complainant but must evaluate it as it stands (Brooke Bollea, aka Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383; San Lameer (Pty) Ltd. and Sanlam Ltd. v. Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010-0551).
The Center sent notice of the Complaint, on March 23, 2016, and after lifting of the suspension of proceedings on May 11, 2016, the Panel is nevertheless satisfied that the Respondent was aware of the proceeding as the Respondent was initially involved in negotiations during the suspension and thereafter in the light of the email received by the Center on May 25, 2016.
However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with the provisional requirement of the Rules (Allianz Compañia de Seguros y Reaseguros S A v. John Michael, WIPO Case No. D2009-0942).
Despite the Respondent's protestations in the email of May 25, 2016, the Panel does not consider these to be exceptional circumstances. The Panel considers that it may accept that the Respondent does not deny the facts asserted and accordingly the contentions made by the Complainant based on such facts (Reuters Limited. v. Global Net 2000 Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons Inc. v. Domain.Contact, WIPO Case No. D2003-0994; Standard Innovation Corporation v. Shopintimates USA, supra; VKR Holding A/S v. Above.com Domain Privacy/Host Master, Transure Enterprise Ltd, WIPO Case No. D2012-0040).
Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters Limited v. Global Net 2000 Inc., supra; RX America LLC v. Matthew Smith WIPO Case No. D2005-0540; Allianz Compañia de Seguros y Reaseguros S A v. John Michael, supra; Standard Innovation Corporation v. Shopintimates USA, supra; VKR Holding A/S v. Above.com Domain Privacy/Host Master, Transure Enterprise Ltd, supra; Groupe Auchan v. Anirban Mitra WIPO Case No. D2012-0412; Barclays Bank PLC v. Miami Investment Brokers Inc. WIPO Case No. D2012-1213).
C. Identical or Confusingly Similar
The Complainant put up a list of the countries in which International trademark No. 538170 FRENCH OPEN is registered. It also gave details as to its domain names and their dates of registration all being registered prior to the disputed domain name.
The Complainant has cited the above two UDRP decisions in which was the successful party. As the Respondent was not party to any of these decisions, the Panel considers that a doctrine such as res judicata or issue estoppel does not apply, and what may have been found proven in those decisions is not evidence in this matter or binding on the Panel. (LEGO Juris A/S v. Administracion Dominios, WIPO Case No. D2013-0265; LEGO Juris A/S v. Michael Fainshtein, WIPO Case No. D2013-0464).
However, and even though not conclusive under the first element of the UDRP 1on the basis of its averments and contentions in this matter as to the worldwide reputation, the Panel considers that on the factual background relied upon by it, particularly as it is unchallenged by the Respondent, the Complainant has sufficiently established that it has rights which fall within the provisions of Article 6 bis of the Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised, and as confirmed and extended by the GATT Agreement of Trade-Related Aspects of Intellectual Property Rights (commonly referred to as the "TRIPS Agreement"). These treaties enable the owner of a well-known trademark to seek protection not only in the same class, but outside that class as well (V&S Vin & Spirit v Young Nah, WIPO Case No. D2004-0961; Groupe Auchan v. Anirban Mitra, WIPO Case No. D2012-0412).
This is applicable also as international trademark No. 538170 is not registered in India but that country is a signatory to the above TRIPS Agreement.
The Complainant is the owner of the trademark and registered domain names referred to above, all of which significantly pre-date the registration of the disputed domain name.
The fact that the word mark has been incorporated entirely into the disputed domain name is sufficient in this case to establish that it is identical or confusingly similar to the Complainant's registered marks (Quixtar Investments Inc. v. Dennis Hoffmann, WIPO Case No. D2000-0253; Universal City Studios Inc. v. David Burns & Adam-12 Dot Com, WIPO Case No. D2001-0784; Lilly ICOS LLC v. John Hopkin / NeoNet Ltd, WIPO Case No. D2005-0694; SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin / Moniker Privacy Services, WIPO Case No. D2008-0016).
The Panel agrees with the Complainant's contention that the addition of "livestreaming" and the gTLD ".com" are not sufficient to exclude the confusing similarity (Fry's Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435; VRL International Ltd. v. Domaincar, WIPO Case No. D2006-0240; and Compagnie Gervais Danone of Paris v. Jose Gregorio Hernandes Quintero, WIPO Case No. D2009-1050).
In these circumstances, the Panel has no difficulty in concluding that the Complainant has established the first element in terms of paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Although paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name, once the Complainant establishes a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production of evidence on this factor shifts to the Respondent to rebut or displace the Complainant's evidence in this regard, despite the overall burden of proof remaining upon the Complainant to disprove each of the three elements of paragraph 4 (a) of the Policy (Document Technologies Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com., Supra).
Having defaulted, the Respondent has placed itself in a position that it has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is said by the Complainant in order to determine whether or not it has been so established.
The Complainant contends that it is the proprietor of the trademark FRENCH OPEN and that the Respondent has not been given any permission to register or use any domain name adopting or similar to the trademark of the Complainant. It follows, therefore, that the Respondent has no right to the use of that mark as part of the disputed domain name and that any unauthorized use for commercial purposes would violate the exclusive trademark rights enjoyed by the Complainant (Guerlain S A v. Peikang, WIPO Case No. D2000-0055; Caesar's World Inc & Park Place Entertain Corporation v. Japan Nippon, WIPO Case No. D2003-0615; AT&T Corp v. Roman Abreu d/b/a Smartalk Wireless, WIPO Case No. D2002-0605; America Online Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374; Sybase Inc. v. Analytical Systems, WIPO Case No. D2004-0360; San Lameer (Pty) Ltd. & Sanlam Ltd. v. Atlantic Internet Services (Pty) Ltd, supra).
Apart from there being no authorization on the part of the Complainant, there is no relationship or association between the Complainant and the Respondent, whether by license or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement in the disputed domain name which might fall within that purview (Sybase Inc v. Analytical Systems, supra).
The Complainant also contends that the Respondent is using the disputed domain name for the purpose of offering his services thus relying on the reputation of the Complainant.
In view of the facts and circumstances which are unchallenged, the Panel is of the view that the Complainant should therefore succeed on this ground as well.
The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element of the Policy.
E. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location."
While bad faith can exist where a domain name contains in its entirety a complainant's trademark (Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028), the Panel does not see that this principle cannot also apply in circumstances where the domain name, almost in its entirety, is an intentional adoption of the Complainant's registered trademark (Sun International (Zambia) Limited v. Private Protection Service Inc d/b/a Privacy Protection / Hamilton Mandizvidza, Hamand Ent, WIPO Case No. D2016-0105).
The Complainant points out that the disputed domain name resolves to a website which clearly has links that create the impression that it is operated or associated with the Complainant. What is significant in the present case is paragraph 4(b)(iv) of the Policy quoted above. As already pointed out the Respondent has made misleading statements on his website and incorporated information of the Complainant. This clearly implies that the Respondent either has a relationship with the Complainant or does so with its approval or endorsement. In the view of the Panel, this of itself is clearly evidence of use in bad faith (San Lameer (Pty) Limited & Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, supra).
The implication arising from the disputed domain name, in the mind of a would-be customer, is therefore clearly that the Respondent is either of or in some way associated with the Complainant, which in turn, in the view of the Panel, leads to the inescapable conclusion that such potential customer is invited to do business with the Complainant via someone authorized on its behalf. That would, by application of paragraph 4(b)(iv) of the Policy, constitute bad faith (Media 24 Limited v. Llewellyn Du Randt, WIPO Case No. D2009-0699; San Lameer (Pty) Ltd. & Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, supra). This, in the view of the Panel, is further demonstrated by the email of May 25, 2016, in which the Respondent, by continuing with his activity, asserts that he is not doing anything which is "breaking the rules".
Moreover, by use of a domain name confusingly similar to the Complainant's trademark, the Respondent is trading on the value established by the Complainant in its mark and domain names to attract users and thereby deriving economic benefit from either those users attracted to the Respondent's website or by receiving compensation from others if these would-be customers are routed elsewhere. Such a practice would also constitute bad faith (Yahoo! Inc. & Geo Cities v. Data Art Corp, Data Art Enterprises Inc., Stonybrook Investments, Globalnet 2000 Inc, Powerclick Inc, and Yahoo Search Inc, WIPO Case No. D2000-0587).
The selection of a domain name that is the same as, or confusingly similar to, the Complainant's trademark and the Complainant's domain names, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant in the market and therefore he selected the disputed domain name in circumstances where he must have been well aware of the Complainant's reputation and intended to benefit therefrom (Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128; Barclays Bank PLC v. Miami Investment Brokers Inc, supra). This would negate any innocent or unintentional conduct on the part of the Respondent.
The Panel is also of the view that, even in the absence of specific evidence as to the extent of a worldwide reputation and goodwill in respect of the French Open tennis tournament, it can take judicial notice of its worldwide fame amongst tennis and sports fans, particularly in view of the evidence put up by the Complainant above as to the nature and status of the tournament and that it follows that the Respondent does not dispute that by selecting the disputed domain name that clearly identifies the Complainant's tournament (Federation Francaise De Tennis (FFT) v. Ticketfinders International LLC/Michael Cook supra).
The Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <frenchopen2016livestreaming.com>, be transferred to the Complainant.
Archibald Findlay SC
Date: June 6, 2016
1 See, paragraph 1.1. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")