The Complainant is Federation Francaise De Tennis (FFT) of Paris, France, represented by Nameshield, France.
The Respondent is Bajirao Mastani of Delhi, India, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with BigRock Solutions Pvt Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2016. On March 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2016. Two emails from the Respondent were received by the Center on March 25, 2016 and April 8, 2016. The Center notified the Parties of the commencement of Panel appointment process on April 13, 2016.
The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on April 20, 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 was founded in 1920 and aims to promote, organize and develop tennis in France. The Complainant has about one million and one hundred thousand members in France.
The Complainant also provides representation of France in international meetings and organizes major tournaments such as the Internationaux de France de Roland Garros, played annually around the end of May and the beginning of June.
In 1927, the Complainant decided to name the tennis stadium in Paris Roland Garros, in honor of aviation pioneer Roland Garros, who was killed in aerial combat in 1918.
The Internationaux de France de Roland Garros is the biggest tournament of the tennis season on clay and the only Grand Slam event still competing on that surface.
In the tennis world with an Anglophone majority, the tournament is also known as the “French Open” since 1968, the first year of the Open era. It is one of the four Grand Slam tournaments, the second in the calendar after the Australian Open in January.
The Complainant is the owner of several trademarks, including the international trademark no. 459517 ROLAND GARROS registered on April 1, 1981 (the “Trademark”).
The Complainant is the registrant of numerous domain names for or including “rolandgarros” or “roland-garros” as the distinctive part of the domain name.
The disputed domain name was registered on January 28, 2016, well after the Complainant secured rights to the Trademark. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant contends that the disputed domain name is confusingly similar to the registered rights in which the Complainant has rights.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s Trademark because it includes the “Roland Garros” Trademark in its entirety.
The Complainant argues that the addition of the generic terms “2016” (with reference of the tournament’s period) and “schedule” (with the reference of the tournament’s schedule), as well as the mere addition of the generic Top-Level Domain (“gTLD”) “.com” are not sufficient to escape the finding that the disputed domain name is confusingly similar to the Trademark.
It follows that the Complainant concludes that such additions do not change the overall impression of the designation as being connected to the Trademark and that it does not prevent the likelihood of confusion between the disputed domain name and the Complainant, its international Trademark and its associated domain names.
The Complainant further indicates that it has defended its trademarks against cybersquatting in various UDRP cases and that a simple Internet search with the terms “Roland Garros” provides several results, all of them being linked to the Complainant.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant asserts that it has rights in ROLAND GARROS and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
More particularly, the Complainant contends that the Respondent is not affiliated with the Complainant in any way nor has he been authorised by the Complainant to use and register its Trademark, or to seek registration of any domain name incorporating said Trademark. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that he is not related in any way to the Complainant’s business.
The Complainant further submits that the disputed domain name resolves to a blank page with only the text “pageok”, whereas the disputed domain name suggests the schedule of Roland Garros 2016’s tournament. On such basis, the Complainant asserts that it confirms that the Respondent has no demonstrable plan to use the disputed domain names, and is using the disputed domain name only to divert business away from the Complainants.
Finally, the Complainant asserts that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting the Trademark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct.
(c) The disputed domain name was registered and is being used in bad faith.
The Complainant submits that the disputed domain name was registered and used in bad faith by the Respondent.
The Complainant asserts that the Respondent registered the disputed domain name in bad faith on the basis of the fact that the disputed domain name contains the Trademark in its entirety, attached to the terms “2016” and “schedule”. Accordingly, the Complainant contends that it is hard to imagine that the Respondent did not have in mind the Complainant’s business when it registered the disputed domain name.
The Complainant further asserts that the Respondent registered and used the disputed domain name in bad faith on the basis of the fact that the website behind the disputed domain name displays a blank page with the term “pageok”, which is therefore inactive. B. Respondent
The Respondent sent emails to the Center on March 25, 2016 and April 8, 2016.
The Respondent indicated in his communication of March 25, 2016 in response to the Center’s notification of the Complaint that the disputed domain name was bought for sports activity purposes and that it related to the Roland Garros tennis tournament, also known as the “French Open”. The Respondent stated that if there was any problem regarding the disputed domain name, it should then be cancelled. Furthermore, in his communication of April 8, 2016, the Respondent indicated that he did not want the disputed domain name and requested the ICANN locking restriction to be removed in order to proceed to the transfer. 6. Discussion and Findings A. Identical or Confusingly Similar
Under the first Policy element, the Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark.
First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights in ROLAND GARROS.
Secondly, the disputed domain name fully incorporates the Complainant’s ROLAND GARROS Trademark in which the Complainant has exclusive rights.
Thirdly, according to previous UDRP decisions, mere addition of common or generic terms is, in general, insufficient to make a domain name distinctive such that it is not confusingly similar to a complainant’s registered trademark (see Eurodrive Services and Distribution N.V v. Transure Enterprise Ltd, Host Master and A Domain Privacy,WIPO Case No. D2012-1453; Swarovski Aktiengesellschaft v. Luo Li,WIPO Case No. D2012-1604; Compagnie Générale des Etablissements Michelin v. isman to,WIPO Case No. D2012-0739; Tetra Laval Holdings & Finance S.A. v. TetraPak Global PH-AU, Gerald Smith,WIPO Case No. D2012-0847; Moncler S.r.l. v. xie guoren,WIPO Case No. D2010-2161; Allianz SE v. Antonio Porchia,WIPO Case No. D2010-0694). Consequently, this Panel finds that the addition of the generic terms “2016” and “schedule” does not prevent the disputed domain name from being confusingly similar to the Trademark.
Fourthly, this Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the disputed domain name does not avoid a finding of confusing similarity for purposes of the Policy.
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s ROLAND GARROS Trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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.”
This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent is commonly known by the name “Roland Garros” or is in any way affiliated with the Complainant or authorised or licensed to use the trademark or to seek registration of any domain name incorporating the Trademark.
Examination of the website operating under the disputed domain name, as sufficiently evidenced by the Complainant, shows no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services.
Moreover, this Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the disputed domain name.
This Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. In fact, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the disputed domain name, and finds after reviewing the website as evidenced by the Complainant, and as it appears following this Panel independent researches, that the Respondent had or should have had full knowledge of the Trademark and that its only intention is to deprive the Complainants from a strategic domain name or to intentionally attempt to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s Trademark.
For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
First of all, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the disputed domain name. In this respect, this Panel believes, after reviewing the website at the disputed domain name as evidenced by the Complainant, as well as the Respondent’s emails on March 25, 2016 and April 8, 2016, that the Respondent knew or must have known of the Complainant’s Trademark and its associated activities at the time of the registration of the disputed domain name.
Moreover, with respect to the current inactive website to which the disputed domain name resolves, after examination of the surrounding circumstances and the Respondent’s overall behavior, this Panel finds that the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith. The particular circumstances of this case which lead to this conclusion are as follows: (i) the Complainant’s Trademark has a strong reputation and is widely known; and (ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by him of the disputed domain name. Additionally, the Respondent’s willingness to transfer the disputed domain name to the Complainant is further telling of the lack of legitimate interest and the Respondent’s bad faith.
In light of the foregoing, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under 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 name be transferred to the Complainant.
Benoit Van Asbroeck
Sole Panelist
Date: May 4, 2016
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