Complainant is Fédération Française de Tennis (FFT) of Paris, France, represented by Nameshield, France.
Respondent is Ticketfinders International LLC of Wilmington, Delaware, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , and are registered with Melbourne IT Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2013. On February 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 12, 2013, the Registrar transmitted by email 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 February 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2013. On February 19, 2013 Respondent sent an email communication to the Center. No formal response was filed by March 11, 2013 and on March 12, 2013 the Center sent a notification to the parties that the Center would proceed to appoint a panel.
The Center appointed Ross Carson as the sole panelist in this matter on March 19, 2013. 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 is the governing body for tennis within France with responsibility to promote, organize and develop tennis in France. Complainant has about one million and one hundred thousand members in France. In addition, Complainant represents France with respect to international matters relating to tennis including representation of France in international meetings (Davis Cup, Fed Cup, Olympics ...) and the organization of major tournaments like the International of France.
The International tennis tournament of France has been played at the Roland Garros Stadium in Paris since as early as the 1920’s. The stadium name was chosen in honor of aviation pioneer Roland Garros, who died in an air battle of World War I in 1918. The International tennis tournament of France was and is known to many around the world since the 1920’s as the “Roland Garros” tennis tournament. Commencing in 1968 with the beginning of the Open era the tournament also became known as the “French Open” tennis tournament with an Anglophone majority in the tennis world. To others the International tennis tournament of France is known by the combination trademark ROLAND GARROS FRENCH OPEN tennis tournament.
The Roland Garros stadium has a total of 24 courts. The three largest are the central court, the Suzanne Lenglen and Court No. 1. The French Open is one of the four Grand Slam tennis tournaments held in the world each year, the other Grand Slam tennis tournaments being the Australian Open, Wimbledon and The United States Open.
The “Roland Garros” or “French Open” tennis tournament is promoted in the media throughout the world annually. Television coverage of the tennis matches at the “Roland Garros” or “French Open” tennis tournament at Roland Garros Stadium are carried live or time delayed in many countries throughout the world. In addition, the top seeded international tennis players taking part in the “Roland Garros” or “French Open” tennis tournament and the matches at the “Roland Garros” or “French Open” tennis tournament receive wide coverage in magazines and newspapers throughout the world.
The “Roland Garros” or “French Open” tennis tournament is the only one of the four Grand Slam tennis tournaments played on clay tennis courts.
Complainant is the owner of European, International, French and United States registered trademarks for ROLAND GARROS FRENCH OPEN. The Community trademark registration No. 3498276 for ROLAND GARROS FRENCH OPEN was granted on October 31, 2003 for wares and services in International Classes 3, 6, 9, 12, 14, 16, 18, 20, 22, 24, 25, 26, 28, 30, 32, 33, 35, 36, 37, 38, 39, 41, 42, 43 and 45. Complainant is also the owner of International and French trademark registrations for the trademark ROLAND GARROS. International trademark registration No. 459517 for the trademark ROLAND GARROS was granted on April 1, 1981 in relation to goods and services in International Classes 18, 25 and 28. French registration No. 3762129 for the trademark ROLAND GARROS was granted on August 26, 2010 in relation to goods and services in a broad list of International classes. Complainant is the registered owner of International Registration No. 538170 for the trademark FRENCH OPEN registered on June 22, 1989.
Complainant is the registrant of numerous domain names for or including “rolandgarros” or “roland-garros” as the distinctive part of the domain name. For example Complainant is registrant of the domain name registered April 10, 1996 and registered April 22, 1997.
Respondent registered the disputed domain names in August or December of 2011. 5. Parties’ Contentions A. Complainant A.1. Identical or Confusingly Similar
Complainant states that it is the registered owner of French and European trademarks for the trademark ROLAND GARROS as set out in Section 4 immediately above. Complainant further submits that it is the registered owner of French, United States, European and International trademark registrations for the trademark ROLAND GARROS FRENCH OPEN as set out in Section 4 immediately above. Complainant further states that it is the registered owner of International trademark registration No. 538170 for the trademark FRENCH OPEN registered June 22, 1989 in relation to goods in International Class 3.
Complainant submits the disputed domain names are confusingly similar to the trademarks ROLAND GARROS and FRENCH OPEN.
The domain names include in its entirety the trademarks ROLAND GARROS and FRENCH OPEN.
Complainant contends the addition of generic Top-Level Domains (“gTLDs”) “.com”, “.net” and terms “tickets” (in referencing of the sale of tickets for the tournament of “Roland Garros”), “2012”, “2013”, “2014”, “2015”, “2016”, “2017” (in referencing of the period of the tournament) are not sufficient to escape the finding that the disputed domain names are confusingly similar to the trademarks and does not change the overall impression of the designation as being connected to Complainant.
Complainant further states that Respondent confirmed that it is aware of Complainant and its trademarks with the use of the disputed domain names to sell tickets in relation with Complainant’s business. A.2. No Rights or Legitimate Interests in Respect of the Domain Names
Complainant states that according to the findings of the panel in Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
Complainant states that Respondent is not affiliated with nor authorized by Complainant in any way.
Complainant further states that Respondent has no rights or legitimate interests in respect of the disputed domain names and is not related in any way to Complainant’s business.
Complainant further states that it does not carry out any activity for, nor has any business with Respondent.
Complainant states that Respondent does not appear to be known by the name “Roland Garros” or “French Open”, and does not appear to have any registered or pending trademark rights over that period.
Complainant further states that Respondent sells tennis tickets through the disputed domain names (except the disputed domain name which is inactive).
Complainant states that Respondent uses the disputed domain names to offer and sell match tickets, which clearly compete with Complainant’s business. This cannot constitute a bona fide offering of goods or services under this element of the Policy, as Respondent is attempting to divert Complainant’s customers for its own commercial gain. See for example, T, Inc. v. Daniel Deamone,WIPO Case No. D2001-1066.
Complainant further submits that the use of the fame and notoriety of Complainant’s respective trademarks and branding to promote and sell tennis tickets is not a bona fide offering of goods and services within the scope of paragraph 4(c)(i) of the Policy.
Complainant further submits that Respondent is selling unauthorized tickets, and furthermore that tickets purchased through the websites in question cannot be verified as being legitimate. Complainant states that the generation of revenue from the use of Complainant’s brand and marks in this manner does not constitute a legitimate noncommercial use of the disputed domain names in accordance with paragraph 4(c)(iii) of the Policy. A.3. Registration and Use in Bad Faith
Complainant states that Respondent registered the disputed domain names in bad faith as the disputed domain names are confusingly similar to Complainant’s trademarks and the years associated with the disputed domain names are consistent with the “Roland Garros” or “French Open” tennis tournament which is conducted annually in spring at the Roland Garros Complex in Paris. The web pages associated with the disputed domain names include a diagram of the seating arrangement of Center Court at Roland Garros stadium together with categories of seating and escalating ticket prices for the various categories from the beginning of the tennis tournament to the finals of the tennis tournament.
Complainant states that the disputed domain names are confusingly similar to its trademarks.
Respondent uses the disputed domain names to sell tickets without authorization in relation with Complainant’s business.
Complainant further submits that Respondent is unauthorized to sell tickets to tennis matches at the “Roland Garros” or “French Open” and could be considered as Complainant’s competitor in the context of ticket sales.
For the purposes of paragraph 4(b)(iv) of the Policy, Complainant submits that Respondent has used the disputed domain names in an attempt to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s trademarks as to source, sponsorship, affiliation or endorsement.
See previous UDRP decisions:
Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd., WIPO Case No. D2009-0331;
Arsenal Football Club Public Limited Company v. Official Tickets Ltd.,WIPO Case No. D2008-0842;
Chelsea Football Club Limited v. Official Tickets Ltd, WIPO Case No. D2008-1574. B. Respondent
Respondent did not file a formal Response. It sent an email communication in which it stated “Can you please tell me who I address my reply to, as it is nor immediately apparent?” 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) the disputed domain names registered by Respondent are 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 disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The fact that Respondent did not submit a formal Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a formal Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain names are identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant is the owner of trademark registrations for the trademarks ROLAND GARROS, FRENCH OPEN and ROLAND GARROS FRENCH OPEN registered in many countries throughout the world. The trademark ROLAND GARROS has been used in France and subsequently throughout the world since the 1920’s in association with the annual French international tennis tournament. The trademark FRENCH OPEN has been used since the mid 1960’s alone or in combination with ROLAND GARROS in association with the French international tennis tournament conducted annually on clay tennis courts at the Roland Garros tennis complex in Paris. The Panel agrees with the finding of the panel in Federation Francaise du Tennis (FFT) v. Marimouthu Devendran, WIPO Case No. DCO2011-0006 where the panel found: “In fact FRENCH OPEN is a trademark, which is used and known worldwide to identify the tournament organized by the Complainant”. The “Roland Garros”, “French Open” or “Roland Garros French Open” tennis tournament is promoted and seen on television and the Internet throughout the world and are well-known as distinguishing Complainant’s French International tennis tournament from those of others. Further particulars of Complainant’s registered trademarks and domain name registrations relating to its trademarks are set forth in Section 4 above.
Nine of the disputed domain names incorporate Complainant’s trademark FRENCH OPEN as the distinctive element together with four numbers representing the year for which tickets for the tennis tournament are available. Further, each of the disputed domain names include a gTLD indicator, either “.com” or “.net”.
The four remaining disputed domain names incorporate Complainant’s trademark ROLAND GARROS as the distinctive element together with four numbers representing the year for which tennis tickets are available; with the exception of the disputed domain name which includes the descriptive word “tickets” indicating tickets available any year as opposed to a specific year as indicated by the four numerals included in all the other disputed domain names. Further, the four disputed domain names incorporating Complainant’s trademark ROLAND GARROS include the gTLD indicator “.com”.
Numerous UDRP panels have found that the use of a gTLD indicator as part of a domain name is typically irrelevant in consideration of confusing similarity. Several UDRP panels have held that the use of a hyphen in a domain name is insignificant and does little to avoid confusing similarity between a domain name and a trademark. See e.g., Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630 (“It is well established in decisions under the UDRP that the presence or absence of characters (e.g., hyphens, dots) in a domain name and indicators for top level domains (e.g., “.com”, “.info”, “.net”, “.org”) are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name”). See also, Swarovski Aktiengesellschaft v. jianxin ou aka jianxinou,WIPO Case No. D2010-2022.
The inclusion of the word “ticket” in the disputed domain name will only enhance confusing similarity with Complainant’s trademark ROLAND GARROS as Complainant sells tickets to the “Roland Garros” tennis tournament. See, Swarovski Aktiengesellschaft v. Luc Sun,WIPO Case No. D2012-0071 (“Moreover, the addition in the disputed domain name of the term “crystal” only reinforces the association of the disputed domain name with Complainant’s mark, because Complainant is a well-known manufacturer of crystals”).
The disputed domain names all include either Complainant’s trademark ROLAND GAROS or FRENCH OPEN in full as the distinctive part of the disputed domain names. Previous UDRP panels have held that a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety. See, Swarovski Aktiengesellschaft v. Wutianhao,WIPO Case No. D2010-0503.
The Panel finds that all the disputed domain names are identical to Complainant’s trademark ROLAND GARROS or FRENCH OPEN.
The Panel also finds that all the disputed domain names are confusingly similar to Complainant’s combination trademark ROLAND GARROS FRENCH OPEN tennis tournament. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s trademarks ROLAND GARROS, FRENCH OPEN or ROLAND GARROS FRENCH OPEN.
Respondent does not appear to be known by the name “Roland Garros” or “French Open”, and does not appear to have any registered or pending trademark rights relating to such names.
All the disputed domain names except the disputed domain name resolve to a webpage having an overhead representation of “Court Philippe-Chatrier”, the Center court at the Roland Garros stadium. Respondent’s overhead view is a copy of Complainant’s overhead view of “Court Philippe-Chatrier” shown on Complainant’s ticket website. Respondent’s unauthorized use of Complainant’s representation of “Court Philippe-Chatrier” suggests a false connection with Complainant. Further each of the webpages associated with the disputed domain names includes active links to a page entitled “Tennis Links” which include “Australian Open”; “Davis Cup”; “French Open”; “Italian Open”; “Monte Carlo Open”; “U.S. Open and Wimbleton”. Clicking on “Australian Open” opens a webpage with live links to “Soccer Tickets”, “Tennis Tickets”, “Theatre Tickets”, “Formula 1 Tickets”, “Opera Tickets”, “Rugby Tickets” and many other more specific links. The webpage also includes advertising links for pay-per-click advertising.
Respondent is using the disputed domain names to host websites which include links which offer to sell tennis tickets to other leading tennis tournaments in Europe and around the world. Respondent is using the goodwill associated with Complainant’s well-known trademarks to attract Internet users and sell tennis tickets to other tennis tournaments. Respondent is also using active links associated with the disputed domain names to offer tickets for sale for soccer, theatre, Formula 1, opera, rugby and other entertainment. Respondent is also associating the webpages with the disputed domain names which include advertising links for pay-per-click revenue. Such uses are not bona fide uses of the disputed domain names.
The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in a domain name. Once this showing is made, the burden of production shifts to the respondent to demonstrate its rights or legitimate interests in the domain name. See Deutsche Telekom AG v. Britt Cordon,WIPO Case No. D2004-0487 where the panel stated “A number of WIPO cases have established that, by virtue of paragraph 4(c) of the Policy, once a Complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent.” In this case, Respondent was given the opportunity by way of Response to demonstrate any rights or legitimate interests in the disputed domain names pursuant to paragraph 4(c) of the Policy. However, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
A respondent is entitled to avail itself of the benefits of paragraph 4(c) of the Policy to demonstrate its rights or legitimate interests in the disputed domain names in responding to the Complaint. Respondent did not avail itself of the opportunity to file evidence establishing rights or legitimate interests in the disputed domain names.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain names recognized under the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain names have been registered and are being used in bad faith. C.1. Registered in Bad Faith
The International tennis tournament of France was and is known to many around the world since the 1920’s as the “Roland Garros” tennis tournament. Commencing in 1968 with the beginning of the Open era the tournament also became known as the “French Open” tennis tournament with an Anglophone majority in the tennis world. The “Roland Garros” or “French Open” tennis tournament is one of the four Grand Slam tennis tournaments held and televised throughout the world each year. The other Grand Slam tennis tournaments being the “Australian Open”, “Wimbledon” and “The United States Open”. The “Roland Garros” or “French Open” tennis tournament is well-known throughout the world and was well-known throughout the world long before Respondent registered the disputed domain names in August and December of 2011. The webpages associated with the disputed domain names include a diagram of the seating arrangement of the Center Court at Roland Garros stadium together with categories of seating and escalating ticket prices for the various categories from the beginning of the “Roland Garros” or “French Open” tennis tournament to the finals of the tennis tournament.
The Panel thus finds on a balance of probabilities that Respondent registered the twelve active disputed domain names in bad faith. C.2. Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy, inter alia, the following circumstances shall be evidence of use and registration of a domain name in bad faith: by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 its website or location or of a product or service on its website or location.
As recited in Section 5.B. above, Respondent is using the disputed domain names to host websites which include links which offer to sell tennis tickets to other leading tennis tournaments in Europe and around the world. Respondent is using the goodwill associated with Complainant’s well-known trademarks to attract Internet users and sell tennis tickets to other tennis tournaments. Respondent is also using active links associated with the disputed domain names to offer tickets for sale for soccer, theatre, Formula 1, opera, rugby and other entertainment. Respondent is also associating webpages with the disputed domain names which include advertising links for pay-per-click revenue. Such uses are uses of the disputed domain names in bad faith contrary to paragraph 4(b)(iv) of the Policy.
The Panel finds that the twelve disputed domain names which resolve to active webpages are used in bad faith.
As noted above Respondent is passively holding the disputed domain name . Previous UDRP panels have found that non-use of domain names which include well-known trademarks, which if used by a respondent would confuse Internet users into concluding that the website associated with the domain name belonged to the complainant constituted bad faith use under paragraph 4(b) of the Policy. See, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, where the panel has set out convincingly that the provisions in paragraph 4(b) of the Policy support the assumption that passive use can also be of bad faith. In the Telstra case the panel stated: “[…] inaction is within the concept. That is to say, it is possible in certain circumstances for inactivity by the Respondent to amount to the domain name being used in bad faith […]. The question that then arises is what circumstances of inaction (passive holding) […] can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case.”
It is the prevailing view of UDRP panels that paragraph 4(b) of the Policy is not limitative, but that there is a general notion of use in bad faith. See, Atlantic Recording Corporation v. Paelle International,WIPO Case No. D2001-0065, where the panel found: “Since the hypotheses identified in paragraph 4(b) are not limitative, it is possible to say that Respondent’s inactivity or passive holding of the domain name may prove that the domain name has been registered and is being used in bad faith.”
There is no evidence that Respondent has ever carried on business or used the trademark FRENCH OPEN as a trademark. The Panel cannot conceive of any use of the currently passively held disputed domain name which would not mislead Internet users seeking Complainant’s goods to the website associated with the disputed domain name should it be activated.
The Panel finds on a balance of probabilities that the currently passively held disputed domain name was registered and is being used in bad faith under paragraph 4(b) of the Policy. 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 , , , , , , , , , , , and be transferred to Complainant.
Ross Carson
Sole Panelist
Date: March 31, 2013
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