The Complainant is Fédération Française de Tennis of Paris, France, represented by Nameshield, France.
The Respondent is Ticketfinders International LLC of Wilmington, Delaware, United States of America ("United States"). 2. The Domain Names and Registrar
The disputed domain names and ("Disputed Domain Names") are registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 22, 2016. On September 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 22, 2016, 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 October 10, 2016. In accordance with the Rules, paragraph 5, the due date for the Response was October 30, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 31, 2016.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on November 2, 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 is the governing body for tennis in France. The Complainant coordinates, organizes and promotes the sport in France. The Complainant owns registered trade mark rights in various ROLAND GARROS trade marks and various FRENCH OPEN trade marks, including its international ROLAND GARROS trade mark registered on April 1, 1981 (registration number 459517) and its international FRENCH OPEN trade mark registered on June 22, 1989 (registration number 538170). The Complainant also owns and uses numerous domain names that incorporate the ROLAND GARROS and FRENCH OPEN trade marks.
The Respondent is a company based in the United States, which registered the Disputed Domain Names on August 20, 2011 and August 22, 2012. 5. Parties' Contentions A. Complainant
The Complainant's contentions can be summarized as follows:
(a) The Complainant is the owner of the ROLAND GARROS and FRENCH OPEN trade marks, including international trade marks (registration number 459517 and registration number 538170 respectively).
(b) The Disputed Domain Names are identical or confusingly similar to either the Complainant's ROLAND GARROS trade mark or its FRENCH OPEN trade mark. The only difference between the Disputed Domain Name and the Complainant's ROLAND GARROS trade mark is the addition of the numbers "2016". The only difference between the Disputed Domain Name and the Complainant's FRENCH OPEN trade mark is the addition of the word "the" and two dashes ("-"). These generic terms and punctuations, and the addition of the generic Top-Level Domains ("gTLDs") ".com" and ".net" are insufficient to distinguish the Disputed Domain Names from the Complainant's ROLAND GARROS and FRENCH OPEN trade marks.
(c) The Respondent has no rights or legitimate interests in the Disputed Domain Names as:
(i) The Complainant has not authorized or otherwise permitted the Respondent to use any of its ROLAND GARROS or FRENCH OPEN trade marks, and the Respondent is in no way connected to the Complainant;
(ii) The Respondent has been the subject of two other UDRP proceedings brought by the Complainant, in which the panels confirmed that the Respondent had no rights or legitimate interests in the domain names in question;
(iii) The Respondent is using the Disputed Domain Names to purportedly sell the Complainant's tickets for tennis matches in the Roland Garros stadium, which is unauthorized. The tickets purchased through the websites to which the Disputed Domain Names resolve also cannot be verified as being legitimate. Therefore, the Respondent cannot be said to be making a legitimate noncommercial or fair use of the Disputed Domain Names, as it is using them to generate revenue through the use of the Complainant's trade marks.
(iv) The Respondent is using the fame and notoriety of the Complainant's trade marks to promote and sell tennis tickets, which cannot constitute a bona fide offering of goods and services.
(a) The Respondent must have registered the Disputed Domain Names in full knowledge of the Complainant and its ROLAND GARROS and FRENCH OPEN trade marks, due to the distinctive nature of the trade marks and the Complainant's reputation. The websites to which the Disputed Domain Names resolve allegedly sell unauthorized tickets in relation to the Complainant's business. Therefore, the Respondent registered and is using the Disputed Domain Names in order to mislead Internet users into believing that the websites to which the Disputed Domain Names resolve are affiliated with the Complainant. The Respondent has also been involved in previous UDRP proceedings brought by the Complainant on identical facts.
(b) On August 4, 2016, the Complainant sent a cease-and-desist letter to the Respondent. The Respondent did not provide any response to this letter. B. Respondent
The Respondent did not reply to the Complainant's contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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 by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the ROLAND GARROS and FRENCH OPEN trade marks, based on its international trade mark registrations.
The Disputed Domain Names incorporate either the Complainant's ROLAND GARROS trade mark or its FRENCH OPEN mark in their entirety. The only difference between the Disputed Domain Name and the Complainant's ROLAND GARROS trade mark is the addition of the numbers "2016", which is clearly a reference to the year 2016 and is a generic term. Similarly, the only difference between the Disputed Domain Name and the Complainant's FRENCH OPEN trade mark is the addition of the word "the" and two dashes ("-"), which is merely a generic word and a grammatical addition. It is well established that where the distinctive and prominent element of a disputed domain name is the complainant's mark, and the only difference is a generic term that adds no distinctive element, then such a generic term does not negate the confusing similarity between the disputed domain name and the mark (see Oakley, Inc. v. Joel Wong/BlueH- INC,WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim,WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service,WIPO Case No. D2010-0088).
The Panel finds that "Roland Garros" and "French Open" are the distinctive components of the Disputed Domain Names, and the addition of "2016", "the" or the dashes ("-") do nothing to distinguish them from the Complainant's trade marks.
It is also well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain extensions, in this case ".com" and ".net", may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview") states that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant registered and began using the ROLAND GARROS and FRENCH OPEN trade marks well before the Disputed Domain Names were registered and the Complainant has never authorised the Respondent to use its ROLAND GARROS and FRENCH OPEN trade marks. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove that it has rights or legitimate interests in the Disputed Domain Names. As the Respondent has not submitted a Response to the Complainant's contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant's evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Names by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use the Disputed Domain Names or a name corresponding to the Disputed Domain Names was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Names, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Panel accepts that the Respondent has not provided any evidence to demonstrate that it has become commonly known by the Disputed Domain Names, or a name corresponding to it.
The Disputed Doman Names resolve to websites which purport to sell unauthorized tickets in relation to the Complainant's business ("Respondent's Websites"). In light of the foregoing, the Respondent cannot be said to be using the Disputed Domain Names to make a bona fide offering of goods, or for any legitimate noncommercial or fair use, as the Respondent is attempting to take advantage of the Complainant's trade marks in order to generate profit.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel accepts that the Respondent knew of the Complainant and the Complainant's ROLAND GARROS and FRENCH OPEN trade marks at the time he registered the Disputed Domain Names, and registered and used the Disputed Domain Names in bad faith, based on the following:
(a) the Respondent registered the Disputed Domain Names in August 2011 and August 2012, more than 30 years after the Complainant first obtained its international registration for the ROLAND GARROS trade mark and 22 years after the Complainant first obtained its international registration for the FRENCH OPEN trade mark;
(b) the Respondent's Websites feature the Complainant's ROLAND GARROS and FRENCH OPEN trade marks; and
c) the Respondent's Websites are purporting to sell unauthorized tickets in relation with the Complainant's business which creates a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the Respondent's Websites, for commercial gain.
(d) In addition, the Respondent has been the subject of at least two other UDRP actions issued by the Complainant in relation to domain names that incorporated the Complainant's ROLAND GARROS and FRENCH OPEN trade marks. This demonstrates a pattern of bad faith conduct on the part of the Respondent.
Based on the above, the Panel finds that paragraph 4(a)(iii) of the Policy 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 disputed domain names and be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Date: November 23, 2016
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