Complainant is Fédération Française de Tennis (FFT) of Paris, France, represented by Nameshield, France.
Respondent is Satoshi Shimoshita of Tokyo, Japan. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2011. On May 10, 2011, the Center transmitted by e-mail to eNom a request for registrar verification in connection with the Domain Name. On May 10, 2011, eNom transmitted by e-mail to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 15, 2011.
The Center appointed Robert A. Badgley as the sole panelist in this matter on June 24, 2011. 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
Complainant, founded in 1920, promotes tennis in France and organizes tennis events. The most famous tournament that Complainant hosts is the International of France, also known as the Tournament of Roland Garros and the French Open. This is one of the four annual “Grand Slam” tennis tournaments, and the famous tournament is broadcast worldwide.
The stadium where the French Open is held was named Roland Garros in 1927, in honor of an aviation pilot of that name who died in battle in World War I. The Roland Garros tennis stadium in Paris is also well known for its clay court surface.
Over the past several decades, Complainant has secured numerous trademark registrations in various jurisdictions (France, European Union, International, Australia) for trademarks comprised of or including ROLAND GARROS. Complainant also maintains an Internet presence via the domain name , registered in April 1999, and other domain names.
The Domain Name was registered on June 23, 2005. The Domain Name resolves to a directory-type website which contains hyperlinks associated with various offerings, such as airfares, Disney tickets, travel discounts, hotels, and so forth. Complainant states that the site also states: “Make an Offer for .” A blank space for indicating a US dollar offer follows this statement, and then a button to make the offer appears.
According to Complainant, Respondent derives pay-per-click revenue from this website. This is not disputed by Respondent. Finally, Complainant points out that Respondent has been held in bad faith in at least two prior cases decided under the Policy. 5. Parties’ Contentions A. Complainant
Complainant’s salient factual assertions are set forth above. Complainant asserts that it has satisfied the three elements of the Policy and is entitled to a transfer of the Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant clearly has rights in the well-known mark ROLAND GARROS, through registration and longstanding use. The Domain Name is identical to the mark.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as Complainant does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited,WIPO Case No. D2001-0122. Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174, correctly observed: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.” As noted above, Respondent did not file a Response and hence did not effectively rebut any of Complainant’s assertions.
There is no evidence that Respondent has ever been authorized to use Complainant’s mark in a domain name or otherwise. Likewise, there is no evidence that Respondent is commonly known by the Domain Name, or has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the Domain Name in “bad faith”.
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds that Respondent is in “bad faith” under paragraph 4(b)(iv) of the Policy. The Panel declines to rule on other possible “bad faith” grounds, such as paragraphs 4(b)(i) and (ii) of the Policy, because it is not necessary to do so.
As respects paragraph 4(b)(iv) of the Policy, the Panel concludes that Respondent almost certainly had Complainant’s ROLAND GARROS mark in mind when registering the Domain Name. It is alleged, and not disputed, that Respondent derives click-through revenue from the hyperlinks at the website. The commercial content at Respondent’s website makes it reasonable to infer, particularly in the absence of any explanation or denial by Respondent, that Respondent has intentionally sought to attract, for commercial gain, Internet users to Respondent’s site by creating a likelihood of confusion between the ROLAND GARROS mark and the Domain Name.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied. 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 Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Dated: July 8, 2011
Full & Egal Universal Law Academy