Westmore · UDRP DecisionFrenchopen2017.xyz
The Panel ordered transfer of <frenchopen2017.xyz>. It found the domain confusingly similar to the Complainant’s registered FRENCH OPEN mark because it incorporated the mark in full and merely added the year “2017” and the “.xyz” Top-Level Domain. The Respondent lacked rights or legitimate interests because the domain promoted unauthorized live streaming of the Complainant’s tournament and was being used to take advantage of the mark for profit. Bad faith was established by the Respondent’s knowledge of the tournament, the streaming-related website content, the absence of a credible explanation for the registration, and the use of the domain to create confusion for commercial gain.
The timeline behind frenchopen2017.xyz
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind frenchopen2017.xyz — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The case illustrates targeting of a sports-event trademark through a domain combining the mark with the year of an upcoming tournament. The direct match between the domain, the website’s live-streaming language, and the Complainant’s event was central across all three UDRP elements. It also shows that an informal respondent communication may be considered while still failing to overcome a prima facie case where it supplies no supporting evidence or credible explanation.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Fédération Française de Tennis v. Aditya Soni Case No. D2016-1929 1. The Parties The Complainant is Fédération Française de Tennis of Paris, France, represented by Nameshield, France. The Respondent is Aditya Soni of New Delhi, India. 2. The Domain Name and Registrar The disputed domain name <frenchopen2017.xyz> (the “Disputed Domain Name”) is registered with Mesh Digital Limited (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 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 October 7, 2016. In accordance with the Rules, paragraph 5, the due date for the Response was October 27, 2016. An email communication from the Respondent was received by the Center on October 8, 2016. The Center appointed Gabriela Kennedy as the sole panelist in this matter on November 7, 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 sport tournaments in France. The Complainant owns registered trade mark rights in the FRENCH OPEN trade mark, including an 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 FRENCH OPEN mark. The Respondent is an individual based in New Delhi, India, who registered the Disputed Domain Name on July 31, 2016. The Disputed Domain Name resolves to a website displaying “French Open 2017 Live Streaming│French Open Live Streaming”. 5. Parties’ Contentions A. Complainant The Complainant’s contentions can be summarized as follows: (a) The Complainant is the owner of the FRENCH OPEN trade mark, including international trade mark registration number 538170. (b) The Disputed Domain Name is identical or confusingly similar to the Complainant’s FRENCH OPEN trade mark. The only difference between the Disputed Domain Name and the Complainant’s FRENCH OPEN trade mark is the addition of the generic term “2017”. This generic term, and the addition of the gTLDs “.xyz”, are insufficient to distinguish the Disputed Domain Name from the Complainant’s FRENCH OPEN trade mark. (c) The Respondent has no rights or legitimate interests in the Disputed Domain Name as: (i) The Complainant has not authorized or otherwise permitted the Respondent to use any of its FRENCH OPEN trade marks, and the Respondent is in no way connected to the Complainant. (ii) The Respondent is using the Disputed Domain Name with the intention of streaming live the French Open tennis tournament organized by the Complainant. The live broadcasting of the French Open tennis tournament is restricted by the Complainant, and the Respondent is not an authorized broadcaster. (iii) The Respondent has registered the Disputed Domain Name to take advantage of the Complainant’s FRENCH OPEN trade mark in order to mislead Internet users into believing that the Disputed Domain Name and the resulting website is associated with the Complainant, for the purpose of making a non-legitimate profit. (d) The Respondent must have registered the Disputed Domain Name in full knowledge of the Complainant and its FRENCH OPEN trade mark, due to the distinctive nature of the trade mark and the Complainant’s reputation. The website to which the Disputed Domain Name resolves suggests that the Respondent intends to use it in order to stream live the Complainant’s French Open 2017 tournament, which has not been authorized by the Complainant. Therefore, the Respondent registered and is using the Disputed Domain Name to attract Internet users for commercial gain, by confusing them into believing that the Disputed Domain Name and resulting website are associated with the Complainant. (e) Lastly, on September 13, 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 submit a formal Response to the Complainant’s contentions. However, on October 8, 2016, the Respondent sent an email to the Center, in which he stated: “Neither you are the owner of Tennis Game nor you own words “French” “Tennis” So please don’t send email again and again. If you are ready to pay me amount of domain, I will think about transferring the domain [sic]” The Panel has decided to take into account the Respondent’s email of October 8, 2016. 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 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 by the Respondent in bad faith. A. Identical or Confusingly Similar The Panel accepts that the Complainant has rights in the FRENCH OPEN trade mark, based on its international trade mark registration. The Disputed Domain Name incorporates the Complainant’s FRENCH OPEN trade mark in its entirety. The only difference between the Disputed Domain Name and the Complainant’s FRENCH OPEN trade mark is the addition of the numbers “2017”, which is clearly a reference to the year 2017 and is a generic term. 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/BlueHost.com- 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 the words “french open” are the distinctive components of the Disputed Domain Name, and the addition of “2017” does nothing to distinguish it 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 “.xyz”, 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 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 FRENCH OPEN trade mark well before the Disputed Domain Name was registered and the Complainant has never authorised the Respondent to use its FRENCH OPEN trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove that he has rights or legitimate interests in the Disputed Domain Name. Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name 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 Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or (ii) the Respondent has been commonly known by the Disputed Domain Name, 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 Name, or a name corresponding to it. The Disputed Doman Name resolves to a webpage which purports to offer the live streaming of the French Open 2017 tournament, which the Panel accepts is a reference to the French Open 2017 tennis tournament organized by the Complainant. The Complainant has not authorized such live streaming by the Respondent. In light of the foregoing, the Respondent cannot be said to be using the Disputed Domain Name to make a bona fide offering of goods or services, 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 FRENCH OPEN trade mark at the time he registered the Disputed Domain Name, and he registered and used the Disputed Domain Name in bad faith, based on the following: (a) the Respondent registered the Disputed Domain Name in July 2016, more than 27 years after the Complainant first obtained its international registration for the FRENCH OPEN trade mark; (b) the website to which the Disputed Domain Name resolves states “French Open 2017 Live Streaming”, which clearly appears to be a reference to the French Open 2017 tennis tournament hosted by the Complainant, and in which the Complainant has not authorized the Respondent to broadcast; and (c) despite having the chance to submit a response (both in relation to these proceedings and in response to the Complainant’s cease-and-desist letter), the Respondent has not provided any explanation as to the reasons why it chose to register the Disputed Domain Name, his intended use of the Disputed Domain Name and the reasons why the website to which the Disputed Domain Name resolves appears to advertise the live streaming of the French Open 2017 tennis tournament. In fact, the Respondent’s email of October 8, 2016 sent to the Center clearly shows that he is aware of the relationship between the words “French open” and the Complainant’s French Open tennis tournament ( i.e . he claims that the Complainant is not “ the owner of Tennis Game [sic]”). Based on the above, the Panel believes that the Respondent registered and is using the Disputed Domain Name in bad faith for the purpose of confusing Internet users into believing that the Disputed Domain Name is associated with the Complainant, in order to make a commercial gain. 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 Name, <frenchopen2017.xyz>, be transferred to the Complainant. Gabriela Kennedy Sole Panelist Date: November 21, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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