Federation Francaise De Tennis (FFT) v Soboleva v Tatyana

WIPO Case No. D2024-2235

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Federation Francaise De Tennis (FFT) v. Soboleva V Tatyana

Case No. D2024-2235

1. The Parties

The Complainant is Federation Francaise De Tennis (FFT), France, represented by Nameshield, France.

The Respondent is Soboleva V Tatyana, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <rolandgarros.pro> (“the “Domain Name”) is registered with RU-CENTER-MSK

(Regional Network Information Center, JSC dba RU-CENTER) (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2024. On June 3, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 4, 2024, the Registrar transmitted by email to the Center its

verification response disclosing registrant and contact information for the Domain Name which differed from
the named Respondent (Redacted for Privacy) and contact information in the Complaint. The Center sent an
email communication to the Complainant on June 5, 2024 providing the registrant and contact information
disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The

Complainant filed an amended Complaint on June 5, 2024.

On June 5, 2024, the Center informed the parties in Russian and English, that the language of the
registration agreement for the Domain Name is Russian. On June 5, 2024, the Complainant requested
English to be the language of the proceeding. The Respondent did not submit any comment on the

Complainant’s submission.

The Center verified that the Complaint together with the amended 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 in both Russian and English, and the proceedings commenced on June 13, 2024. In accordance

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with the Rules, paragraph 5, the due date for Response was July 3, 2024. The Respondent did not submit
any response. Accordingly, the Center notified the Respondent’s default on July 9, 2024.

The Center appointed Piotr Nowaczyk as the sole panelist in this matter on July 12, 2024. 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 promotes, organizes and supports development of tennis in France. The Complainant also organizes tennis tournaments such as the International of France, also known as Roland-Garros.

The Complainant is the owner of several ROLAND GARROS trademark registrations, including the
International Trademark Registration for ROLAND GARROS (figurative) No. 459517, registered on April 1,

1981.

The Domain Name was registered on May 30, 2024.

At the time of submitting the Complaint, the Domain Name resolved to a website displaying the ROLAND

GARROS trademark and inviting Internet users to participate in a cryptocurrency giveaway (the “Website”).

As of the date of this Decision, the Domain Name does not resolve to any active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name.

First, the Complainant contends that the Domain Name is identical to the trademark in which the

Complainant has rights.

Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the

Domain Name.

Third, the Complainant submits that the Domain Name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Preliminary Matters – Language of the Proceeding

The language of the Registration Agreement for the Domain Name is Russian. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

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The Complaint was filed in English. The Complainant requested that the language of the proceeding be English for several reasons. First, the Complainant submits that the English language is widely used in international relations. Second, the Complainant notes that the Domain Name is composed of Roman characters. Third, the Complainant contends that in order to translate the Complaint it would have to retain

specialized translation services at a cost very likely to be higher than the overall cost of these proceedings. The use of Russian language in this case would therefore impose a burden on the Complainant which must be deemed significant in view of the low cost of these proceedings. Finally, the Complainant alleges that the

Domain Name resolves to the Website in English which suggests that the Respondent understands English.

The Respondent did not comment on the Complainant’s request for the language of the proceeding be
English.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs. See section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian. Moreover, the Panel notes that the Domain Name resolved to a Website in the English language and the Respondent did not comment or let alone object to the Complainant’s arguments concerning the language of the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

6.2. Substantive Matters – Three Elements

Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows:

(i)        the Domain Name is identical 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 Domain Name; and

(iii)      the Domain Name has been registered and is being used in bad faith.

The requested remedy may only be granted if the above criteria are met. At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”. See section 4.2 of the WIPO Overview 3.0.

A. Identical or Confusingly Similar

Under the first element, the Complainant must establish that the Domain Name is identical or confusingly similar to the trademark in which the Complainant has rights.

The Complainant holds valid ROLAND GARROS trademark registrations. The Domain Name incorporates
the textual part of the above-mentioned figurative trademark in its entirety. As numerous UDRP panels have
held, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or
confusingly similar to that trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS
COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696). See also section 1.10 of the
WIPO Overview 3.0.

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The generic Top-Level Domain “.pro” in the Domain Name is viewed as a standard registration requirement
and as such is disregarded under the first element test. See section 1.11.1 of the WIPO Overview 3.0.
Given the above, the Panel finds that the Domain Name is identical to the textual part of the Complainant’s

ROLAND GARROS figurative trademark.

Thus, the first element of the Policy has been established.

B. Rights or Legitimate Interests

Under the second element, the Complainant must prove that the Respondent has no rights or legitimate interests in the Domain Name.

The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i)        that it has used or made 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 prior to the dispute; or

(ii)       that it is commonly known by the Domain Name, even if it has not acquired any trademark rights; or

(iii)      that it is 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.

Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case.

On the contrary, it results from the evidence on record that the Complainant’s ROLAND GARROS trademark evidence to suggest that the Respondent has been commonly known by the Domain Name.

registration predates the Respondent’s registration of the Domain Name. There is no evidence in the case
record that the Complainant has licensed or otherwise permitted the Respondent to use the ROLAND

Moreover, it results from the evidence on record that the Respondent does not make use of the Domain Name in connection with a bona fide offering of goods or services, nor does it make a legitimate noncommercial or fair use of the Domain Name. On the contrary, at the time of submitting the Complaint, the Domain Name resolved to the Website displaying the Complainant’s trademark and inviting Internet users to participate in a cryptocurrency giveaway. Such use of the Domain Name does not confer rights or legitimate interests on the Respondent.

Furthermore, the Respondent’s use of the Domain Name will fundamentally not be considered “fair” if it falsely suggests affiliation with the trademark owner. The correlation between the Domain Name and the Complainant’s mark is often central to this inquiry. Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark, such as in the case at hand, carry a high risk of implied affiliation. See sections 2.5 and 2.5.1, WIPO Overview 3.0.

Given the above, the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Name. Thus, there is no evidence in the case file that refutes the Complainant’s prima facie case. The Panel concludes that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

Under the third element, the Complainant must prove that the Domain Name has been registered and is being used in bad faith.

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Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See section 3.1 of the WIPO Overview 3.0.

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use includes without limitation:

(i)        circumstances indicating the domain name was registered or acquired primarily for the purpose of

selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii)       circumstances indicating that the domain name was registered in order to prevent the owner of a

trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct;
or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for

commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion
with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a
product or service on a website or location.

As indicated above, the Complainant’s rights in the ROLAND GARROS trademark predate the registration of the Domain Name. This Panel finds that the Respondent was or should have been aware of the Complainant’s trademark at the time of registration of the Domain Name. This finding is supported by the composition of the Domain Name consisting exclusively of the Complainant’s trademark, as well as by the content of the Website displaying this trademark. Moreover, it has been proven to the Panel’s satisfaction that the Complainant’s ROLAND GARROS trademark is well known and unique to the Complainant. Thus, the Respondent could not reasonably have been unaware of the reputation of goods and services under this trademark. In sum, the Respondent in all likelihood registered the Domain Name with the expectation of taking advantage of the reputation of the Complainant’s ROLAND GARROS trademark.

Furthermore, as previously noted, the Domain Name has been used in bad faith by the Respondent to resolve to the Website inviting Internet users to participate in an alleged cryptocurrency giveaway. The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to

this Website by creating a likelihood of confusion with the Complainant’s trademark as to the source,

sponsorship, affiliation, or endorsement of the Website.

For the reasons discussed above, the Panel finds that the third element of the Policy has been established.

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 Domain Name <rolandgarros.pro> be transferred to the Complainant.

/Piotr Nowaczyk/
Piotr Nowaczyk
Sole Panelist
Date: July 26, 2024