WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Federation Francaise De Tennis (FFT) v. WhoisGuard Protected, WhoisGuard, Inc. / Md Rubel Hossain

Case No. D2017-1045

1. The Parties

The Complainant is Federation Francaise De Tennis (FFT) of Paris, France, represented by Nameshield, France.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Md Rubel Hossain of Natore, Bangladesh.

2. The Domain Names and Registrar

The disputed domain names <frenchopen-live.org>, <frenchopen-2017.net>, <frenchopen2017.org>, <garros-roland.org>, <open-french.org>, <rolandgarros2017.net>, <roland-garros2017.org>, <2017frenchopen.com>, <2017frenchopen.org>, <2017rolandgarros.com> and <2017rolandgarros.org> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2017. On May 30, 2017, 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 disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 6, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on June 6, 2017.

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, and the proceedings commenced on June 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2017.

The Center appointed Desmond J. Ryan as the sole panelist in this matter on July 13, 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

This Complaint relates to 11 disputed domain names which may, for convenience, be divided into two groups. The first group relates to domain names incorporating, in one form or another, the trade mark FRENCH OPEN and the second group comprises domain names incorporating, in one form or another, the trade mark ROLAND GARROS. Each of the disputed domain names was registered using a protection service provided by WhoIs Guard, Inc. of Panama. All of the disputed domain names were registered on May 4, 2017.

The Complainant is the French national federation charged with the promotion, organization and development of tennis in France. It is located at the Roland Garros Stadium in Paris where it organizes the “French Open” tournament, one of four tournaments comprising the “Grand Slam” series and the only one to be played on a clay surface. It holds International Trade Mark registrations for the trade mark FRENCH OPEN dating from June 1989 and for the trade mark ROLAND GARROS dating from April 1981. It also holds international and European trade mark registrations for the trade mark ROLAND GARROS FRENCH OPEN. The Complainant also owns several domain name registrations incorporating the words “french open” and “roland garros”, the earliest of which date from 1996. The Complainant’s website at “www.rolandgarros.com” contains historical and promotional videos, links to the Complainant’s online store and to ticket sales.

At the time of the Complaint, the disputed domain names each resolved to a website displaying sponsored links that, inter alia, purported to provide information about the French Open tournament, including an invitation to “Tennis TV Live streaming”.

Since 2013, the Complainant has been successful in at least nine UDRP complaints relating to the trade mark FRENCH OPEN and three UDRP complaints relating to the trade mark ROLAND GARROS.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions may be summarised as follows:

i. The disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights. They each entirely include, respectively, one or other of the Complainant’s trade marks FRENCH OPEN and ROLAND GARROS. The inclusion of the generic terms “2017” or “live” or the interposition of a hyphen do not materially affect the identity of the trade mark incorporated within the respective disputed domain names nor does the addition of the respective generic Top‑Level Domain (“gTLD”). The Complainant’s well-established rights in the trade marks FRENCH OPEN and ROLAND GARROS have been recognised in a number of prior decisions under the Policy.

ii. The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not affiliated with the Complainant nor authorised by it in any way to use the Complainant’s trade marks. The Respondent’s use of the disputed domain names is not a noncommercial or fair use but rather amounts to an attempt by the Respondent to profit from the Complainant’s reputation to generate pay-per-click royalties.

iii. The disputed domain names were registered and are being used in bad faith. The terms “French Open” and “Roland Garros” are distinctive terms only known in relation to the Complainant. The Respondent has registered the disputed domain names in full knowledge of the Complainant’s trade mark rights and for the purpose of misleading Internet users and diverting Internet traffic. The Respondent’s registration of the disputed domain names prevents the Complainant from exercising its intellectual property rights over the trade marks FRENCH OPEN and ROLAND GARROS.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated registration rights in each of the trade marks FRENCH OPEN and ROLAND GARROS. Furthermore, the French Open tournament is well known in sporting circles and it is also well known that it is played at the Roland Garros arena. The Complainant’s rights in these two trade marks have been recognised in at least twelve prior decisions under the Policy; nine in respect of the trade mark FRENCH OPEN and three in respect of the trade mark ROLAND GARROS (see, for example, Federation Francaise De Tennis v. Mahesh Shaksena, WIPO Case No. D2016-0354). Each of the disputed domain names incorporates either directly or with minor modifications one or both of the Complainant’s trade marks. The addition of descriptive terms such as, in this case, “live” or “2017” does not negate the confusing similarity between the disputed domain names and the respective trade marks. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).

The Panel therefore finds that each of the disputed domain names is identical or confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant asserts that it has not licensed or authorised the Respondent to use any of its trade marks or to incorporate them in a domain name. The Respondent’s use of the disputed domain names to provide sponsored links generating pay-per-click royalties is not use in the offering of bona fide goods or services (where, as here, it is based on the reputation of the Complainant’s well-known trade marks); nor is it a noncommercial or fair use.

The Respondent has had the opportunity to rebut the Complainant’s contentions or to explain its adoption and use of the disputed domain names but has failed to do so. Further, there is no evidence that the Respondent is commonly known by any of the disputed domain names nor is there is any other apparent basis upon which it might claim to have rights or interests in any of the disputed domain names.

The Panel therefore finds that the Respondent has no rights or legitimate interests in any of the disputed domain names.

C. Registered and Used in Bad Faith

The French Open tournament and its venue at the Roland Garros Stadium have been widely publicised in print, radio and television media throughout the world. The trade marks FRENCH OPEN and ROLAND GARROS are not names which would be likely to be chosen at random and without an intended reference to the Complainant’s trade marks. It is not credible therefore that the Respondent might innocently have chosen to register any of the disputed domain names. The use which has been made of each of the disputed domain names has clearly been commercial in character and reliant upon the reputation of the Complainant’s trade marks to attract Internet users to the websites to which the disputed domain names resolve. That use has been made without the license or authority of the Complainant. This conduct falls squarely within paragraph 4(b)(iv) of the Policy.

The Panel therefore finds that each of the disputed domain names have been registered and has been used in bad faith.

7. Decision

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 <frenchopen-live.org>, <frenchopen-2017.net>, <frenchopen2017.org>, <garros-roland.org>, <open-french.org>, <rolandgarros2017.net>, <roland garros2017.org>, <2017frenchopen.com>, <2017frenchopen.org>, <2017rolandgarros.com> and <2017rolandgarros.org> be transferred to the Complainant.

Desmond J. Ryan AM
Sole Panelist
Date: July 27, 2017