WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fédération Française de Tennis (Fft) v. Firdosh Kumar / Firaurs Kumar
Case No. D2016-1390
1. The Parties
The Complainant is Fédération Française de Tennis (Fft) of Paris, France, represented by Nameshield, France.
The Respondents are Firdosh Kumar and Firaurs Kumar of Delhi, India.
2. The Domain Names and Registrar
The disputed domain names, <frenchopen2016livestreamings.com> and <frenchopenresultss.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2016. On July 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the Respondents’ contact details. The Center sent an email communication to the Complainant on July 19, 2016, requesting the Complainant to provide arguments or evidence demonstrating that all named Respondents are the same entity. The Complainant filed an amendment to the Complaint on July 20, 2016.
The Center verified that the Complaint together with the amendment to 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 Respondents of the Complaint, and the proceedings commenced on July 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 12, 2016.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 24, 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 Complainant is the body responsible for organizing tennis competitions in France. One of the competitions it operates is the French Open tennis competition conducted annually at Roland Garros stadium. It is (as hardly needs saying) one of the four “Grand Slams”, the major annual tennis competitions around the world.
The Complainant has registered a number of trademarks. These include:
(a) International Trademark No. 538170, FRENCH OPEN, which dates from June 22, 1989;
(b) European Trademark No. 003498276, ROLAND GARROS FRENCH OPEN, registered on January 12, 2006; and
(c) International Trademark No. 1222329, ROLAND GARROS and device, registered from June 20, 2014.
The disputed domain names were both registered on March 30, 2016.
Both disputed domain names resolve to websites which purport to have text related to the Complainant, the French Open and its competitors. It also has links to websites which claim to provide live streams of the competition (when it is in progress) and other pay-per-click advertisements.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant 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.
No response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondents.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
A. Two Respondents
The two disputed domain names are registered in the name of different persons. Both persons appear to have the same surname. In addition, both persons have given the same address as their address in the WhoIs details for the addresses of the registrant, administrative and technical contacts. Although the second disputed domain name, <frenchopenresultss.com>, is registered in the name of “firaurs kumar”, the email contacts in the WhoIs details are Gmail addresses in the name of the first Respondent, Firdosh Kumar; the only difference being that one has the number 004 appended while the other has the number 002 appended.
In these circumstances, the Panel considers it is appropriate to allow the Complaint to be filed in respect of both Respondents and both disputed domain names, rather than requiring separate complaints. If the two Respondents are not the same person, all the available indications are that they are closely related and operating from the same address.
B. Identical or Confusingly Similar
The first element that the Complainant must establish is that each disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of at least the International Trademark No. 538170 for FRENCH OPEN. The Panel also accepts that the term FRENCH OPEN and its connection with the Complainant is well-known around the world.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The first disputed domain name, <frenchopen2016livestreamings.com>, differs from the Complainant’s trademark by the addition of “2016LIVESTREAMINGS” and the addition of the gTLD “.com”. The second disputed domain name, <frenchopenresultss.com>, differs by the addition of “resultss” and “.com”.
Disregarding the “.com” gTLD, the Complainant’s trademark is plainly the distinctive element of both disputed domain names. The additional text string in each is descriptive and, even allowing for the misspelling of “resultss”, only serve to reinforce the association to the Complainant’s event.
Accordingly, the Panel finds that the Complainant has established that each disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
C. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondents have no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use 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 consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of WIPO Overview 2.0.
The Complainant states that neither Respondent is affiliated with it. In addition, it has not authorised either Respondent to use the disputed domain names. The disputed domain names are plainly not derived from either Respondent’s name.
As noted above, the websites to which the disputed domain names resolve purport to have content related to the Complainant’s event. The narrative text content, however, is extremely garbled, riddled with errors and highly repetitive. It is far from clear that it is a genuine attempt at reportage. Further, the website features the Complainant’s ROLAND GARROS logo prominently. There is no clear disclosure that either website is unrelated to the Complainant and unauthorized by it.
The Complainant also points out that it closely controls the live broadcasting of its competition. It appears that the Complainant contends that the “streaming” websites to which links on the Respondents’ website resolve are not authorised by it. As is commonly the case with such websites, they contain many pay-per-click advertisements. Such use does not qualify as a legitimate noncommercial or fair use under the Policy. Nor does it qualify as a bona fide offering of goods or services under the Policy.
In these circumstances, the Complainant has established a clear prima facie case that each Respondent has no rights or legitimate interests in the disputed domain name. The Respondents have not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
D. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that a disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
Given the renown of the Complainant’s FRENCH OPEN competition, it is scarcely credible to suggest that the Respondents were not aware of the Complainant, its trademark and reputation when registering the disputed domain names. The nature of the websites to which both disputed domain names resolve serves only to reinforce that conclusion.
The Panel has no hesitation in inferring that both disputed domain names were registered for use in the way they are being used. As discussed above in section 5.C., that use is not use in good faith under the Policy. Rather, it is at least an attempt to attract people to the Respondents’ websites for commercial gain. That involves use of the Complainant’s trademark without authorization by the Complainant. Accordingly, the Panel finds that each disputed domain name was registered and is being used in bad faith.
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 names, <frenchopen2016livestreamings.com>and <frenchopenresultss.com>, be transferred to the Complainant.
Warwick A. Rothnie
Date: September 5, 2016