On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 103268
Time of Filing 2020-09-08 10:24:16
Disputed domain name ROLAND-GARROS.CLUB, ROLAND-GARROS.ONLINE
Case Administrator
Name Olga Dvořáková
Complainant
Organization FEDERATION FRANCAISE DE TENNIS (FFT)
Authorized Representative
Organization NAMESHIELD S.A.S.
Respondent
Organization International Camps Network
Other Legal Proceedings
The Panel is not aware of any other legal proceedings.
Identification of rights
According to the evidence submitted by Complainant, Complainant is the owner of numerous trademarks containing the term ROLAND GARROS, including the international trademark ROLAND GARROS with registration number 459517 and a registration date of 1 April 1981.
Factual Background
According to the information provided Complainant promotes, organizes and develops tennis in France. Complainant also provides representation of France in international meetings and organizes major tournaments such as the International of France at the Roland Garros stadium. The International of France of Roland Garros, also called “French Open”, is the biggest tournament of the tennis season on clay and the only Grand Slam still competing on that surface.

The disputed domain names <roland-garros.club> and <roland-garros.online> were registered on 1 September 2020. The disputed domain names resolve to a parking page with commercial links.

According to Complainant the disputed domain names are identical or confusingly similar to Complainant’s trademark since they fully incorporate the mark ROLAND GARROS in the disputed domain names; the addition of the dash “- “ is irrelevant. Also, the addition of the generic Top-Level Domains (gTLD), “.club” and “.online” does not add any distinctiveness to the disputed domain names.

According to Complainant, Respondent has no rights or legitimate interest in the disputed domain names. Respondent is not related in any way with Complainant. Complainant does not carry out any activity for, nor has any business with Respondent. Neither license nor authorization has been granted to Respondent to make any use of Complainant’s trademark ROLAND GARROS, or apply for registration of the disputed domain names by Complainant. Respondent is also not commonly known by the disputed domain names. Complainant submits that the website to which the disputed domain names resolve are parking pages with commercial links. Complainant submits that this is not a bona fide offering of goods or services or legitimate non-commercial or fair use.

According to Complainant the disputed domain names are registered and are being used in bad faith. Complainant submits that past panels have held that the ROLAND GARROS trademark is well-known. Given the distinctiveness of Complainant's trademark and reputation, according to Complainant Respondent has registered the disputed domain names with full knowledge of Complainant's trademark. Furthermore, the disputed domain names resolve to parking pages with commercial links. Complainant contends that Respondent has attempted to attract Internet users for commercial gain to its own websites thanks to Complainant’s trademark for its own commercial gain, which is an evidence of bad faith.

 
NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

Rights
Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).
No rights or legitimate interests
Complainant has, to the satisfaction of the Panel, shown Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).
Bad faith
Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
Procedural Factors
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.
Principal Reasons for the Decision
Complainant has established that it is the owner of a trademark registration for ROLAND GARROS. The disputed domain names, <roland-garros.club> and <roland-garros.online>, incorporate the entirety of the ROLAND GARROS trademark as its distinctive element. Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates a complainant’s trademark in its entirety. The addition of the generic Top-Level Domains (“gTLD”) “.club” and “.online”, and of the dash “-“ are insufficient to avoid a finding of confusing similarity.

In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Complainant has not licensed or otherwise permitted Respondent to use its trademark or to register the disputed domain names incorporating its trademark. Respondent is not making a legitimate noncommercial or fair use of the disputed domain names with intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of Complainant.
The Panel accepts the undisputed submission of and evidence provided by Complainant that the disputed domain names resolve to parking pages with commercial links, some of them dealing with tennis. The Panel does not consider such use a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names. In addition, the websites under the disputed domain names do not accurately and prominently disclose the relationship between Respondent and Complainant as the holder of the ROLAND GARROS trademark, in particular as there has never been any business relationship between Complainant and Respondent. Respondent is also not commonly known by the disputed domain names nor has it acquired any trademark or service mark rights.

The Panel finds that the disputed domain names have been registered and are being used in bad faith. Noting the status of the well-known ROLAND GARROS mark and the overall circumstances of this case the Panel finds it more likely than not that Respondent knew or should have known of Complainant’s mark.
The Panel notes that the disputed domain names incorporating Complainant’s mark resolve to parking pages with commercial lnks, which indicates, in the circumstances of this case, that Respondent registered and used the disputed domain names with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
Decision
For all the reasons stated above, the Complaint is Accepted
and the disputed domain name(s) is (are) to be
ROLAND-GARROS.CLUB Transferred to Complainant
ROLAND-GARROS.ONLINE Transferred to Complainant
Panellists
Name Dinant T.L. Oosterbaan
Date of Panel Decision 2020-10-09
Publication of the Decision
Publish the Decision