The Complainant is Federation Francaise de Tennis (FFT) of Paris, France, represented by Nameshield, France.
The Respondent is James Bay of New Delhi, India, self-represented. 2. The Domain Name and Registrar
The disputed domain name (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 April 3, 2017. On April 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 4, 2017, 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 April 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 2, 2017. The Center received an email communication from the Respondent on May 3, 2017. Following this email communication, on May 3, 2017, the Center invited the Parties to request suspension to explore settlement options. On May 4, 2017, the Complainant requested suspension of the proceeding, which was suspended on May 5, 2017. On May 12, 2017, the Complainant requested the reinstitution of the proceeding and accordingly, it was reinstituted on May 15, 2017.
The Center appointed Nick J. Gardner as the sole panelist in this matter on May 19, 2017. 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 promotes, organizes and develops tennis in France. It also provides representation of France in international meetings and organizes major tournaments such as the International of France at Roland Garros which is the biggest tournament of the tennis season on a clay surface and is the only "Grand Slam" tennis tournament still played on that surface.
In the tennis world the International of France tournament is also widely known and referred to as the "French Open" and has been since 1968. The Complainant is the registered owner of international trademark No. 538170 for the words FRENCH OPEN which was initially registered on June 22, 1989 (the "FRENCH OPEN trademark"). The Complainant has also registered various domain names utilizing the words "French" and "open", such as: , and .
The Disputed Domain Name was registered on February 17, 2017. It resolves to a website (the "Respondent's Website") which provides information about the French Open and then provides information about the availability of live streaming of coverage of the French Open tournament explaining how to obtain such coverage in various countries.
The landing page of the Respondent's Website shows a photograph with a prominent image of the Complainant's flag, which bears the Complainant's proprietary logo. If a visitor scrolls down the landing page a disclaimer is found at the bottom which reads as follows:
"Disclaimer: FrenchOpen-L is absolutely legal and contains only links to other websites on the Internet that make the embedded feature available like , and more. Check our TOS. We do not host or upload any video/media files, "www.FrenchOpen-L" is not responsible for the legality of the content of other sites. If you have any legal issues please visit our DMCA page.
This blog is created and managed by French Open and Tennis Fans for the sole purpose of providing info and updates about French Open Matches, Schedule, Results etc. We're not selling tickets or anything over here, you can always check the Official Site for that". 5. Parties' Contentions A. Complainant
The Complainant contends that the Disputed Domain Name is confusingly similar to the Complainant's FRENCH OPEN trademark. It says the addition of a dash "-" and of the generic term "live" at the end of the Disputed Domain Name and of the generic Top-Level Domain ("gTLD") ".com" is not sufficient to escape the finding that the Disputed Domain Name is confusingly similar to the FRENCH OPEN trademark.
It says that when a distinctive trademark is paired with less distinctive terms, the combination will typically be found to be confusingly similar to the distinctive trademark. The Complainant refers to Fédération Française De Tennis (FFT) v. Ticketfinders International LLC / Michael Cook,WIPO Case No. D2013-2024 and Fédération Française De Tennis (FFT) v. Versio, VERSIO.NL Domein Registratie,WIPO Case No. D2013-2021.
The Complainant says 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 says that the Disputed Domain Name has been registered in an effort to take advantage of the goodwill that the Complainant had built up in its FRENCH OPEN trademark, and to unduly benefit from creating a diversion of the Internet users of the Complainant. It also says that the main page of the Respondent's Website provides information in relation with the Complainant and displays the Complainant's figurative trademark ROLAND GARROS RG without authorization, in order to create a likelihood of confusion with the Complainant.
The Complainant also says that given the distinctiveness of the Complainant's trademark and reputation, and given the content of his website, the Respondent must have registered the Disputed Domain Name with full knowledge of the Complainant's trademark FRENCH OPEN and uses it for the purpose of misleading and diverting Internet traffic. It refers to Federation Francaise De Tennis v. Mahesh Shaksena,WIPO Case No. D2016-0354, where the panel stated that the "Complainant's trademark is widely known, and, further, that it is therefore highly unlikely that the Respondent was unaware of the Complainant's trademark when registering the Disputed Domain Name."
The Complainant says that the live broadcasting of the French Open tournament is restricted to itself and that the Complainant has chosen selected official and exclusive broadcasters all around the world, on different support platforms, such as television and Internet. The Complainant says that the Respondent is not an authorized broadcaster. B. Respondent
The Panel will in its discretion treat the Respondent's email of May 3, 2017, as his response. It reads as follows:
"I'm not sure if I should push this domain to you or not. Since, I'm just sharing match schedule, live scores and other updates. (being a die hard fan of tennis). My intention isn't to do any illegal stuff at all.
Thanks!" 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
(i) the Disputed Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of the FRENCH OPEN trademark.
The Panel holds that the Disputed Domain Name is confusingly similar to the above trademark. The Disputed Domain Name, as registered by the Respondent, incorporates the FRENCH OPEN trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, "when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662). The only differences in the present case are the addition of the hyphen which the Panel finds to be a trivial difference, and the addition of the word "live". This addition does not suffice to negate the similarity between the Disputed Domain Name and the Complainant's FRENCH OPEN trademark.
It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694).
It is also established that the addition of a descriptive term (such as here "live" which simply suggests real time broadcasting or information) to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253.
It is also well established that the generic Top-Level Domain ("gTLD"), in this case ".com", does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in a domain name:
(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 organisation) 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.
Paragraphs (i) and (ii) do not apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the FRENCH OPEN trademark. The Complainant has prior rights in the FRENCH OPEN trademark which precede the Respondent's registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, e.g., Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests within (i) or (ii) above in the Disputed Domain Name.
Does paragraph (iii) above apply? It is not clear to the Panel whether or not the Respondent is deriving (or planning to derive) income from the Respondent's Website. There does not appear to be any advertising on the website and the only click through link the Panel could find appears to lead to the Complainant's official ticketing site. The Panel notes the Respondent's statement that "my intention isn't to do any illegal stuff at all" and that he is a "diehard" tennis fan. However even if the Respondent has no intention to derive commercial gain the Panel does not consider that the use the Respondent is making is legitimate. The Disputed Domain Name combines the FRENCH OPEN trademark with the word "live". The word "live" carries an obvious indication of live broadcasting or streaming, and the Complainant's evidence makes clear this is an activity which it reserves to itself and from which it presumably derives substantial commercial revenue. The Respondent's adoption of the Disputed Domain Name, even if noncommercial, is in substance the adoption of the Complainant's own trademark combined with a term which is an indication of commercial activity that the Complainant itself undertakes – namely providing (or licensing the provision of) broadcasting or streaming of the French Open tournament. In the Panel's opinion adoption of a name which is simply too close to the Complainant's own commercial field of activity does not establish a legitimate interest, even if the name is then used noncommercially.
The Respondent's case is that he is a "die hard fan" of tennis. It seems to the Panel that this raises an issue which is analogous to that of a "fan site". The Panel notes the views discussed in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0") in this regard at section 2.7 "Does a fan site support respondent rights or legitimate interests in a domain name?" as follows "Where the domain name is not identical to the complainant's trademark, i.e., it comprises the mark plus an additional, typically descriptive or laudatory term (e.g., ), noting the factors listed above at section 2.5.2, panels tend to find that the respondent has a legitimate interest in using the mark as part of the domain name for a fan site if such use is considered to be fair in all of the circumstances of the case. Where such a site is noncommercial in nature, this would tend to support a finding that the use is a fair one." The Panel in the present case does not consider the use to be fair in all the circumstances because the modifying term ("live") itself relates to an area of commercial activity which the Complainant has reserved to itself. The position would likely be different if a more general modifier was used (e.g., ) for a noncommercial site carrying information about the FRENCH OPEN.
Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
In the present case, it is clear that the Respondent selected the Disputed Domain Name because of its connection with the Complainant and its French Open tournament. The Respondent does not dispute this.
It is not clear to the Panel whether the Respondent seeks to make any commercial gain out of his activity. There does not appear to be any advertising or "click through" links and the Respondent in his email describes himself as a "diehard fan of tennis". If the Panel assumes in the Respondent's favour that there is no commercial activity being carried out by the Respondent it follows that the Respondent's behaviour does not amount to that specified in paragraph 4(b)(iv) of the Policy as being evidence of registration and use in bad faith, namely "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." The Panel nevertheless concludes the registration and use is in bad faith. The list of factors specified in paragraph 4(b)(iv) is clearly non exhaustive. The Disputed Domain Name combines the FRENCH OPEN trademark with the word "live". The word "live" carries an obvious indication of live broadcasting or streaming, and the Complainant's evidence makes clear this is an activity which it reserves to itself and from which it presumably derives substantial commercial revenue. The Respondent's adoption of the Disputed Domain Name, even if noncommercial, is in the Panel's opinion adoption of a name which is simply too close to the Complainant's own field of activity. This in the Panel's opinion amounts to bad faith registration and use.
In reaching the conclusion the Panel notes that the Respondent's Website does not at present provide any actual streaming content, but simply provides information about streaming services which may provide coverage of the French Open tournament. The Panel has not been provided with any evidence as to whether those services identified are legitimate, in the sense of having been authorised by the Complainant or its licensees, or illegitimate. As indicated above the website does not at present appear to carry any advertising nor contain any click through links save for one link to what appears to be the Complainant's own ticketing site. The website is however presented in a manner which would suggest, at least at first sight, that it is that of the Complainant or is authorised by the Complainant. It is neither. In these circumstances it seems to the Panel that the Respondent is using the Complainant's trademark, in combination with an entirely descriptive term, in order to attract visitors to his site, and then provide those visitors with information which, even if not for commercial gain, is directly relevant to one aspect of the Complainant's own commercial activity, namely the provision of live coverage of its tournament. The fact that the Respondent's Website is presented in a way which uses a prominent photograph of the Complainant's flag, with its proprietary logo, and at least as a matter of initial impression might be taken to be that of the Complainant or authorised by the Complainant, further reinforces the Panel's conclusion. Further to the above, although not providing streaming services at present, the Respondent's website states "if you don't have tv cable connection at home then you can bookmark our site as we'll be providing french open live streaming over here [sic]" together with a hyperlink under the words "french open live streaming". Such a statement clearly evidences the Respondent's intent to provide streaming services, without any apparent authorization from the Complainant. Such activity would at least have the effect of disrupting the Complainant's business, and does not support a finding of bona fide use of the Disputed Domain Name.
The Panel has also considered the fact that (as described above) the Respondent's Website carries a disclaimer. The Panel does not consider this assists the Respondent. It is not particularly prominent and a visitor has to scroll down a considerable distance to find it. This issue is discussed in WIPO Jurisprudential Overview 3.0 at paragraph 3.7: "How does a disclaimer on the webpage to which a disputed domain name resolves impact a panel's assessment of bad faith?"
"In cases where the respondent appears to otherwise have a right or legitimate interest in a disputed domain name, a clear and sufficiently prominent disclaimer would lend support to circumstances suggesting its good faith. For example, where a respondent is legitimately providing goods or services related to the complainant's mark only (see Oki Data and its progeny discussed at 2.8), the presence of a clear and sufficiently prominent disclaimer can support a finding that the respondent has undertaken reasonable steps to avoid unfairly passing itself off as related to the complainant, or to otherwise confuse users.
On the other hand, where the overall circumstances of a case point to the respondent's bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, panels may consider the respondent's use of a disclaimer as an admission by the respondent that users may be confused."
For the reasons discussed above the Panel does not consider the Respondent has a right or legitimate interest in the Disputed Domain Name and accordingly the Panel does not consider the disclaimer, even if it was more prominent, assists the Respondent.
Accordingly the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Decision
For all 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.
Nick J. Gardner
Sole Panelist
Date: June 2, 2017
Full & Egal Universal Law Academy