The Complainant is Fédération Française de Tennis (FFT) of Paris, France, represented by Nameshield, France.
The Respondent is Daniel Hall, dotCHAT, Inc. of Las Vegas, Nevada, United States of America (“United States”), self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2016. On September 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 23, 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 September 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2016. On October 20, 2016, the Respondent contacted the Center requesting a 4 calendar day extension to the due date for the Response in accordance with the Rules, paragraphs 5(b) and (e). The Center granted this extension. The Response was filed with the Center on October 24, 2016.
The Center appointed John Swinson as the sole panelist in this matter on November 21, 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 is Fédération Française de Tennis (FFT). The Complainant promotes, organizes and develops tennis in France. The Complainant also represents France at international meetings and organizes major tournaments, including the International of France at Roland Garros, also referred to as the French Open.
The Complainant owns a number of registered trade marks associated with the French Open. The Complainant has provided evidence of the following trade mark registrations:
- International trade mark registration number 538170 for FRENCH OPEN, filed on June 22, 1989; and
- European Union trade mark registration number 003498276 for ROLAND GARROS FRENCH OPEN, filed on January 12, 2006, (the “Trade Marks”).
The Complainant also has a number of domain name registrations which incorporate the Trade Marks.
The Respondent is Daniel Hall of dotCHAT, Inc, United States. According to the Response, the Respondent plans to offer a “chat” platform which will be available on mobile devices, devoted to free speech, commentary and criticism of the French Open.
The Respondent registered the Disputed Domain Name on June 23, 2016. The website at the Disputed Domain Name is under construction, but contains a notice stating that a noncommercial mobile platform for iOS and Android devices is under development. Previously, the website at the Disputed Domain Name featured a Registrar parking page containing pay-per-click (“PPC”) links. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Disputed Domain Name uses the FRENCH OPEN Trade Mark in its entirety. The addition of the generic Top Level Domain (“gTLD”) “.chat” is not capable of eliminating the confusion between the Disputed Domain Name and the Trade Marks. The Disputed Doman Name gives the impression that it is associated with the Complainant, the Trade Marks and its associated domain names.
As such, the Disputed Domain Name is confusingly similar to the Trade Mark.
Rights or Legitimate Interests
The Respondent is not affiliated with, known to, or associated with the Complainant, and is not authorized to use the Trade Marks. The Respondent is not commonly known by the Disputed Domain Name.
The website at the Disputed Domain Name features a Registrar parking page containing PPC links. This indicates a lack of a legitimate interest in the Disputed Domain Name.
The Respondent registered the Disputed Domain Name to cause confusion.
Registered and Used in Bad Faith
The Respondent has registered the Disputed Domain Name with full knowledge of the Trade Marks, and is using it for the purpose of diverting Internet traffic. Previous panels have found that the Trade Marks are widely known.
The Respondent is taking advantage of the Complainant’s goodwill in the Trade Marks, and is attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Trade Marks as to its source, sponsorship, affiliation or endorsement. The Respondent is attempting to generate PPC or other advertising revenue.
The Respondent has demonstrated bad faith by failing to reply to a cease and desist letter sent by the Complainant’s legal representative, Nameshield. B. Respondent
The Respondent makes the following submissions.
Identical or Confusingly Similar
The Disputed Domain Name was registered for the sole purpose of privately exercising free speech, commentary and criticism about the French Open.
The Respondent acknowledges the Complainant has satisfied the threshold requirement of rights in the Trade Marks. However, the Complainant has not been able to obtain registrations for “French Open” in the United States, as the words comprising the Trade Marks are common terms. The Respondent does not speak French, and was unaware of the Trade Marks prior to the proceeding.
The website at the Disputed Domain Name will remain noncommercial, and will be used as a landing page for Internet users wishing to download the free “CHAT” platform that the Respondent is currently developing for mobile devices.
Rights and Legitimate Interests
The Respondent has never engaged in the sale of any product or service for commercial gain. The Respondent has provided evidence of a typical Registrar landing page displayed in the United States, which features no PPC links. The landing page currently at the Disputed Domain Name also does not feature PPC links.
Registered and use in Bad Faith
It is not an act of bad faith to register a trade mark protected domain name either knowingly or unknowingly.
The Complainant has not submitted evidence to prove that the Respondent:
- registered the Disputed Domain Name for the primary purpose of selling, renting or otherwise transferring it for valuable consideration;
- registered the Disputed Domain Name to prevent the Complainant from reflecting the Trade Marks in a corresponding domain name;
- registered the Disputed Domain Name for the sole purpose of disrupting the Complainant’s business; or
- is intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Trade Marks.
The Respondent has demonstrated a legitimate, noncommercial use of the Disputed Domain Name, without the intent for commercial gain or to tarnish the Trade Marks.
The Respondent has not received any cease and desist letter or other correspondence from the Complainant’s representative. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is 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 Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Marks.
The Disputed Domain Name is identical to the FRENCH OPEN Trade Mark. This Trade Mark has been wholly incorporated into the Disputed Domain Name, and no other distinguishing terms have been added.
The use of a new gTLD can, in some circumstances, play a role in determining identity or confusing similarity. However, in this case, the new gTLD “.chat” does not serve such a purpose. It is a generic term which connotes a space or page on the Internet devoted to an online forum. As such, the Panel considers “.chat” can be ignored for the purpose of testing confusing similarity in this case, in the same way that “.com” is generally ignored (see, e.g., Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698).
The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must establish that the Respondent has no rights to or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. It is then for the Respondent to rebut this prima facie case.
The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:
- The Complainant has not authorized, licensed or otherwise given the Respondent permission to use the Trade Marks in the Disputed Domain Name.
- Before notice of the dispute, the Respondent had not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. At the time the Complaint was filed, the website at the Disputed Domain Name was a Registrar parking page containing PPC links.
- The Respondent is not commonly known by the Disputed Domain Name or by the Trade Marks.
The Respondent states that he is in the process of developing a chat platform which will be available for free download on mobile devices. Currently, the website at the Disputed Domain Name is a landing page which refers to this platform at a high level. The landing page states that the platform will be devoted to “[the] private 'Free Speech, commentary and criticism' of the French Open”, and will remain noncommercial. The Respondent created this landing page at the Disputed Domain Name following notification of the Complaint. At the time the Complaint was filed, the Disputed Domain Name hosted a PPC link page.
Here, it is unclear whether or not the Respondent intends to derive revenue from the app. As the Respondent stated, development of an app is a “monumental” task, which no doubt would involve a significant investment of time and money. Even if the Respondent intends that the app will be “noncommercial” in that it will be free to download and it will not be possible for consumers to make any in-app purchases, it is possible that the Respondent intends to derive some type of revenue, such as from in-app advertisements, to justify this significant outlay.
In any event, while the Respondent’s app may be noncommercial and used for the purpose of criticism and commentary, at the time the Complaint was filed, the website at the Disputed Domain Name was being used for commercial purposes (i.e., to promote the Respondent’s chat platform). Prior to any notice of the dispute, the website at the Disputed Domain Name hosted a PPC link page which presumably generated revenue, even if such revenue was not received by the Respondent. The Complainant has provided evidence of this.
The Panel considers that, before any notice of the dispute, the Respondent was not using the Disputed Domain Name in connection with a bona fide offering of goods or services with paragraph 4(c)(i) of the Policy. Further, neither use described above is a legitimate noncommercial or fair use of the Disputed Domain Name within paragraph 4(c)(iii) of the Policy.
The Panel finds that the Respondent has not rebutted the prima facie case made out by the Complainant with evidence of use or demonstrable preparation to use the Disputed Domain Name in connection with a bona fide offering of goods or services or in connection with a noncommercial or fair use.
The Complainant succeeds in establishing the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently is using the Disputed Domain Name in bad faith.
There is no question that the Respondent was aware of the Complainant and the French Open tennis tournament organized by the Complainant at the time he registered the Disputed Domain Name (even if he was not specifically aware of the fact of the Trade Marks).
The Respondent states that he intends to develop a “chat” platform directed at discussion of the tennis tournament organized by the Complainant. However, the Panel has no evidence before it on which to reach that conclusion. Aside from the landing website (created after notification of this dispute) and his sworn statement, the Respondent has provided no documentary evidence that he intends to develop, or is in the process of developing, this platform that is to be promoted via this website. The Respondent only belatedly removed the PPC links, and created the current website, following notification of the Complaint.
The Panel notes that the examples of bad faith listed in paragraph 4(b) of the Policy are provided without limitation; that is, they are not the only possible indicators of bad faith registration or use. Based on the surrounding circumstances, it is apparent that the Respondent registered the Disputed Domain Name for its trade mark value. The Panel found, in relation to the second element, that the Respondent is not making a legitimate or fair use of the Disputed Domain Name.
In the circumstances, it is reasonable for the Panel to conclude that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Trade Marks as to the source of the website. This is an indicator of bad faith under paragraph 4(b)(iv) of the Policy. The Panel considers it more likely than not that the Respondent registered and is using the Disputed Domain Name in bad faith.
The Complainant succeeds in establishing the third element 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 Name, , be transferred to the Complainant.
John Swinson
Sole Panelist
Date: December 2, 2016
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