Complainant is Federation Francaise de Tennis of Paris, France, represented by Nameshield, France.
Respondent is Jack Halua, Google Inc of Las Vegas, Nevada, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are 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 May 30, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 31, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s 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 Respondent of the Complaint, and the proceedings commenced on June 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2017. The Center received informal email communications from Respondent on May 31, 2017 (two communications), June 1, 2017, and June 2, 2017.
The Center appointed Eduardo Machado as the sole panelist in this matter on July 10, 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
Complainant is Federation Francaise de Tennis (FFT), founded in 1920. Complainant promotes, organizes and develops tennis in France as well as represents France at international meetings regarding the sport and organizes major tournaments, including the world-renowned International of France at Roland Garros, also known as the “French Open” since 1968, one of the four Grand Slam tournaments.
Complainant is the owner of the international trademark FRENCH OPEN, Registration No. 538170, registered on June 22, 1989. Complainant holds the rights for broadcasting the tournament worldwide, which Complainant sells to selected television broadcasters and Internet streaming services.
Complainant also owns a number of different domain names composed by the words “French” and “open”, such as , , , , and others.
Respondent registered the disputed domain names on May 9, 2017. The websites at the disputed domain names have been showing, since the beginning of the French Open Tournament, information regarding the tournament with hyperlinks displaying the message “Watch French Open 2017 Free Live Stream Online” and “Watch French Open 2017 Live Stream Free” as well as a page on each of the websites that appears to display a live stream of the tournament event. 5. Parties’ Contentions A. Complainant
Complainant alleges that the disputed domain names are confusingly similar to Complainant’s international trademark FRENCH OPEN, stating that they incorporate in their entirety the trademark.
Complainant asserts that the only additions to the trademark are the generic term “2017” (indicating the year of the event), the term “live” at the end of one the disputed domain names, and the use of the generic Top-Level Domain (“gTLD”) “.net”. Complainant adds that these additions are not sufficient elements to escape the finding that the disputed domain names are confusingly similar to Complainant’s trademark.
Also, Complainant argues that the pairing of Complainant’s trademark with non-distinctive terms does not withdraw nor prevent the likelihood of confusion between the disputed domain names and the Complainant’s trademark and domain names.
Nonetheless, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain names. Firstly and foremost, Respondent is not affiliated with Complainant nor authorized by Complainant in any way to use the trademark FRENCH OPEN. Not only that but Complainant does not carry out any activity nor have any business with Respondent and has granted neither license nor authorization to Respondent to make use of the Complainant’s trademark or to broadcast the tournament.
Complainant states that Respondent’s intent to propose a live streaming of the tournament through the disputed domain names’ websites is forbidden considering that Complainant has chosen selected official and exclusive broadcasters all around the world be it through television or Internet services.
Besides, Respondent displays on its websites the official Roland Garros logo of Complainant, without authorization.
Additionally, Complainant alleges that given the distinctiveness of Complainant’s trademark and reputation, Respondent has registered the disputed domain names with full knowledge of Complainant’s trademark and uses it for the purpose of misleading Internet traffic, benefitting from the reputation of Complainant’s trademark.
Finally, Complainant requests that the disputed domain names be transferred to Complainant. B. Respondent
Respondent did not present a formal reply to the Complainant’s contentions.
The only response received from Respondent has been four emails, essentially asking for instructions “to open this site [the disputed domain names] from lock”. The Center proceeded to formally notify the Respondent of the Complaint; however, no response was received. 6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by Complainant to obtain relief. These elements are:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the disputed domain name;
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant owns an international trademark registration for the FRENCH OPEN mark and other registrations for different expressions that include the FRENCH OPEN mark. Additionally, Complainant’s trademark and tennis tournament is a worldwide renowned event. The Panel holds, therefore, that Complainant has rights in the FRENCH OPEN mark.
The disputed domain names incorporate Complainant’s trademark in its entirety, having added descriptive terms that do not prevent a finding of confusing similarity between the disputed domain names and Complainant’s trademark. That is, the addition of the numbers “2017” and the term “live” is irrelevant in assessing identity or confusing similarity between the disputed domain names and Complainant’s trademark (see Oakley, Inc. v. Joel Wong/BlueH- INC,WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim,WIPO Case No. D2009-0679; Federation Francaise de Tennis (FFT) v. Whoisguard Protected, Whoisguard, Inc. / Sampath Reddy,WIPO Case No. D2016-0864; and The Coca-Cola Company v. Whois Privacy Service,WIPO Case No. D2010-0088).
The Panel, thus, concludes that Complainant has established the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests with respect to the disputed domain names.
There is no evidence that Respondent has, before any notice of the dispute, ever been commonly known by the disputed domain names nor has made or is making a legitimate noncommercial or fair use of the disputed domain names.
Complainant has prior rights to the use and license the FRENCH OPEN mark and has never authorized, licensed or permitted, in any way, Respondent to register or use the disputed domain names nor broadcast, be it on television or through the Internet, Complainant’s tournament with or without the use of Complainant’s mark.
The disputed domain names resolve to websites intended to let Internet users watch a live stream of Complainant’s tennis tournament event. Even if Respondent has no intention to make commercial gain through the websites and the use of Complainant’s trademark, the Panel does not consider the use legitimate. That is because Complainant has shown evidence that broadcasting or streaming said tournament are activities that Complainant has the exclusive rights to. Furthermore, Complainant licenses such rights to select others, making it a substantial commercial revenue practice for Complainant.
Furthermore, the fact that Respondent has registered the disputed domain names and is using them, in connection with Complainant’s mark, to offer a live stream even if noncommercially does not establish a legitimate interest.
The Panel considers that there is no fair use in the circumstances of the case, because although no significant signs of a commercial use are found, the nature of the website relates to an area of commercial activity which Complainant has reserved to itself. The websites at the disputed domain names are not merely informational about the FRENCH OPEN tournament, but also offer the opportunity for Internet users to watch, for free, said tournament through a live stream that has not been authorized Complainant, who holds the rights of broadcasting and streaming the event (see Federation Francaise de Tennis (FFT) v. James Bay,WIPO Case No. D2017-0671).
Therefore, in the absence of any evidence to the contrary and taking into account the nature and circumstances of the disputed domain names, the Panel concludes that Complainant has succeeded to establish the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that Respondent has intentionally registered the disputed domain names with the sole objective of making a connection with Complainant’s trademark and its FRENCH OPEN tournament.
As discussed above, there is no significant evidence that Respondent has been using the disputed domain names for commercial gain. In fact, Respondent’s behavior could be pointed out as not being evidence of registration and use in bad faith according to paragraph 4(b)(iv) of the Policy.
However, it is important to note that the list of factors presented in said paragraph is no exhaustive and, taking into account the overall circumstances of this case, the Panel finds that the registration and use has been made in bad faith. The nature of the content shown on Respondent’s websites at the disputed domain names is that of an activity Complainant reserves to itself to regulate, making commercial gain from it and which Complainant has not allowed Respondent to explore. Accordingly, Respondent’s use of the disputed domain names has the effect to disrupt the commercial activities of Complainant and its authorized broadcasters.
Also, given the exclusive trademark rights of Complainant and its worldwide reputation and global recognition, Respondent could not legitimately claim to have acquired any public association between itself and Complainant’s marks, at least not for goods, services or areas of commercial interest provided or exploited by Complainant under its mark.
Under these circumstances, the Panel finds that Respondent registered and is using the disputed domain names in bad faith for the purpose of confusing Internet users into believing that the websites the disputed domain names redirect to are associated with Complainant and its mark, namely being some sort of “official” source for streaming the FRENCH OPEN tournament.
In view of 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 Complainant.
Eduardo Machado
Sole Panelist
Date: July 24, 2017
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