WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Federation Francaise de Tennis (FFT) v. Isao Akutsu, Shonan Soken., Ltd.
Case No. D2016-2503
1. The Parties
The Complainant is Federation Francaise de Tennis (FFT) of Paris, France, represented by Nameshield, France.
The Respondent is Isao Akutsu, Shonan Soken., Ltd. of Yokohama, Japan.
2. The Domain Name and Registrar
The disputed domain name <rolandgarros.black> is registered with Netowl, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2016. On December 12, 2016, the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 2016, the Registrar transmitted to the Center its verification response disclosing the registrant and contact information, which differed from the named Respondent and contact information indicated in the Complaint. The Center sent an email to the Complainant on December 15, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 15, 2016.
On December 15, 2016, the Center notified the parties, in both English and Japanese, that the Complaint was submitted in English, and that according to the Registrar, the language of the Registration Agreement is Japanese. In the same notification, the Center instructed the Complainant to provide, by December 18, 2016:
“1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or
2) submit the Complaint translated into Japanese; or
3) submit a request for English to be the language of the administrative proceedings….”
To the Respondent, the Center stated that “if the Respondent is intending to participate in these proceedings, and/or has any comments on the Complainant’s submission replying to this notification, the Respondent is requested to submit these to the Center by December 20, 2016.” The Center also advised the Respondent:
“Specifically in the case of the Complainant submitting (or indicating that it will submit) a request for the language of proceedings to be English, and the Respondent objects to such request, the Respondent is invited to indicate that objection for the record, and to submit any arguments/supporting materials … as to why the proceedings should not be conducted in English.
Please note that if we do not hear from you by [December 20, 2016], we will proceed on the basis that you have no objection to the Complainant’s request that English be the language of proceedings.”
On December 15, 2016, the Complainant requested that “the language in this case shall be English,” and set forth its reasons, to which the Respondent did not reply.
The Center verified that the Complaint together with the amended 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, in both English and Japanese, and the proceedings commenced on December 21, 2016. In accordance with the Rules, paragraph 5, the due date for the Response was January 10, 2017. The Respondent did not submit any formal response. On January 11, 2017, the Center notified the parties that the Center will proceed to appointment of the Panel.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on January 18, 2017. 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 identifies itself as an organization that “promotes, organizes and develops tennis in France.” One of the tennis tournaments that it organizes annually is the International of France at Roland Garros, popularly known as the French Open, one of the sport’s Grand Slam events. The Complainant has obtained multiple registrations for the mark ROLAND GARROS, including an international trademark registration, on April 1, 1981. The Complainant has also registered domain names containing “rolandgarros”, including <rolandgarros.com> on April 21, 1999.
The Respondent registered the disputed domain name <rolandgarros.black> on October 15, 2016.
5. Parties’ Contentions
The Complainant contends principally that: (i) the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights; (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. In addition, the Complainant states that “the Respondent is not affiliated with him nor authorized by him in any way to use the trademarks ROLAND GARROS®. The Complainant does not carry out any activity for, nor has any business with the Respondent.”
The Respondent did not reply to the Complainant’s contentions. Paragraphs 5(e) and 14(a) of the Rules permit the Panel to decide the dispute based on the Complaint. Pursuant to paragraph 14(b), the Panel may draw appropriate inferences from the Respondent’s default.
6. Discussion and Findings
The Panel must initially address the language of the proceeding.
Under paragraph 11(a) of the Rules, the language of the registration agreement is the language of the administrative proceeding, unless otherwise agreed by the parties or specified in the registration agreement. But the rule also states that the determination of the language is “subject to the authority of the Panel …, having regard to the circumstances of the administrative proceeding.” Here, the language of the Registration Agreement is Japanese. Nevertheless, the Complainant requests that English be the language of the proceeding.
After receiving the Complaint submitted in English, the Center notified the Parties, in both Japanese and English, of the Center’s procedural rules regarding the language of the proceeding. The Center informed the Respondent that it may object timely to a proceeding conducted in the English language. The Respondent did not respond to the Center’s notification, and has declined to take part in the proceeding. Under these circumstances, the Panel determines that English is the language of the proceeding.
Turning to the merits, in order to prevail, the Complainant must satisfy each of the three elements of Paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The disputed domain name <rolandgarros.black> is identical or confusingly similar to ROLAND GARROS, a mark in which the Complainant has rights. The disputed domain name contains the Complainant’s mark in full. For this purpose, the generic Top-Level Domain (here, “.black”), a technical requirement of every domain name, is not considered.
The Complainant has demonstrated the first element.
B. Rights or Legitimate Interests
The Complainant contends that it has not authorized the Respondent to use the Complainant’s protected trademark. The Complainant has met its initial burden of making a prima facie showing. The burden shifts to the Respondent to demonstrate any such rights or legitimate interests. The Respondent has not participated in this proceeding. The Panel is unable to ascertain any evidence that would demonstrate the Respondent’s rights or legitimate interests in the disputed domain name, as described in paragraph 4(c) of the Policy, or otherwise.
The second element is satisfied.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii), the Complainant must show that the disputed domain name “has been registered and is being used in bad faith.” Paragraph 4(b) provides a non-exhaustive list of circumstances that are “evidence of the registration and use of a domain name in bad faith”.
The Panel concludes that the Respondent knew or should have known about the Complainant or the Complainant’s mark, ROLAND GARROS, when the Respondent registered the disputed domain name <rolandgarros.black>. The disputed domain name resolves to a website with minimal text in Japanese. “Parking” or passive holding of a disputed domain name does not preclude a finding of bad faith. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.2. Here, relevant in the Panel’s consideration is the well-known nature of the Complainant’s mark and the Respondent’s refusal to submit a response to the Complainant’s averments.
The Panel concludes that the requisite bad faith element is established.
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 <rolandgarros.black> be transferred to the Complainant.
Date: February 1, 2017