Federation francaise de rugby v. Andrew Johnson / PBW Consulting LLC
Claim Number: FA1803001776251
Complainant is Federation francaise de rugby (“Complainant”), represented by Jean-Remi Cognard of Verheyden & Cognard, France. Respondent is ANDREW JOHNSON / PBW CONSULTING LLC (“Respondent”), represented by Justin Kloss of Kloss, Stenger & LoTempio, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <france2023.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Eduardo Magalhães Machado as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 16, 2018; the Forum received payment on March 16, 2018.
On March 19, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <france2023.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@france2023.com. Also on March 26, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April 16, 2018.
On April 18, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eduardo Magalhães Machado as Panelist.
On April 30, having reviewed the communications records, the Panel issued an order for additional submissions, therefore extending the time for rendering a decision, in light of the subject matter at hand.
On May 7, Respondent sent the Forum its additional submissions.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, the Federation Francaise de Rugby (“FFR”) is the French rugby federation, and asserts trademark rights in FRANCE 2023 and alleges that the disputed domain name is identical or at least confusingly similar to its trademark, as it incorporates the mark in its entirety, less the space, and merely adds the generic top level domain (“gTLD”) “.com”.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent is not commonly known by the disputed domain name and that Complainant has not granted Respondent permission or license to use the FRANCE 2023 mark.
Complainant states that Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, merely passively holding the disputed domain name.
Complainant then asserts that Respondent has registered and is using the disputed domain name in bad faith, because Respondent’s actions are part of a speculative pattern of bad faith registration, as it fails to make an active use of the disputed domain name.
B. Respondent
Respondent registered the disputed domain name on September 20, 2013.
Respondent states that it has purchased the disputed domain name well prior to the filling or approval of any FRANCE 2023 trademark.
Respondent alleges that thanks to its business’ nature he does not yet make an active use of the disputed domain name, planning to do so in the second quarter of 2019 and has decided to do so as a matter of business strategy.
Respondent states that the domain name does not infringe upon the rights of Complainant.
Respondent alleges that it has no intention to compete with Complainant and that it has managed and grown global events in the hospitality industry for many years, the reason why it has registered multiple domain names to that end. These domain names are intended to the major events its company plans to hold in many different countries in different years.
Respondent states that it has no intention to sell or use the domain name in bad faith.
C. Additional Submissions
Pursuant to the Panel’s request for additional submissions Respondent submitted, on May 2, its company’s articles of organization and two example presentations for past meetings/events managed by its other company, Connex International LLC.
Respondent also stated that said events are intended to be replicated by its new company and that owning domain names such as the disputed domain name gives these events gravitas, online marketing synergy and search engine optimization strength.
The factual findings pertinent to the decision in this case are as follows:
1. Complainant is the French rugby federation and owner of the trademark rights for FRANCE 2023, upon registration of the mark with the NIIP (e.g. Reg. No. 4337523, registered February 13, 2017);
2. Complainant has been granted the organization of the 2023 Rugby World Cup, by the World Rugby;
3. Respondent registered the disputed domain name, <france2023.com> on September 20, 2013;
4. As of the date of the Complaint, Respondent’s domain name does not redirect internet user to any website, therefore the domain name is currently not in use.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
According to the evidence submitted, Complainant has been using the FRANCE 2023 trademark since 2017, when Complainant started its campaign against South Africa and Ireland to be chosen host of the 2023 Rugby World Cup.
Nonetheless, Complainant had its trademark application granted by NIIP (National Institute for Intellectual Property) on July 21, 2017, later that year, on November 15, 2017, it was announced that Complainant had been granted the rights to organize the international.
Complainant’s registration with the NIIP is sufficient to establish rights in the mark, pursuant to Policy ¶ 4(a)(i). See Les Echos v. Zhao Zhong Xian, FA 1716753 (Forum Mar. 30, 2017) (concluding rights in the LES ECHO mark exist because “Panels have established that registration of a mark with the NIIP sufficiently recognizes a registrant’s rights in a mark.”)
Respondent does not contest Complainant’s rights to the FRANCE 2023 mark. On the other hand, Respondent states that the disputed domain name is not identical to Complainant’s mark, in light of the gTLD “.com” and that any similarity is of Complainant’s responsibility, as it has registered the mark almost four years later than the disputed domain name’s registration.
This Panel, however, finds that the disputed domain name is identical or confusingly similar to the FRANCE 2023 mark, taking into account that the addition of a gTLD is irrelevant in determining whether or not a disputed domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”).
In regards to the allegation that the disputed domain name has been registered well in advance of any trademark application or registration, this Panel finds that this information is irrelevant in determining whether the disputed domain is confusingly similar or not.
Thus, the Complainant has satisfied the requirements of Policy ¶4(a)(i).
The Panel finds that this is one of these cases where the issue of rights or legitimate interests and bad faith can be more conveniently dealt with together.
Paragraph 4(c) of the Policy includes a nonexclusive listing of circumstances that prove a respondent’s rights or legitimate interests in a domain name:
(i) Before any notice of the dispute, Respondent’s 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) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent 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 or service mark at issue.
After analyzing the case, the Panel finds that, before any notice of the dispute, there is evidence of Respondent’s demonstrable preparation to use the disputed domain name in connection with a bona fide offering of services.
As a matter of fact, the Panel verifies that Respondent has presented various documents that confirm that it has registered the disputed domain name to be used, in a near future, in connection to a business that promote conferences and corporate hospitality events.
Additionally, the Panel verifies that, based on the information provided by Respondent (and not contested by Complainant), no affiliation to rugby as well as the sport’s World Cup is made and neither is intended to be made by the Respondent.
Moreover, the Panel has conducted a detailed search in the history of the Rugby World Cup in connection with this matter in which the following has been found:
(i) Since 1999, until the last world cup that happened in 2015, only one of the event’s hosts has registered a domain name consisting of the name of the hosting country and the event’s year, plus the gTLD “.com”. That was England in the 2015’s event. Still, the domain name was only used to redirect internet users to another domain name with the official information for the event;
(ii) In 2007, France was the host country for the event, owning and managing the domain name <rwc2007.irb.com>. Differently from the disputed domain name, the domain name for the 2007 event made reference to the event and the sport, by using the acronyms “rwc”, for “rugby world cup”, and “.irb”, standing for “international rugby board”;
(iii) Japan will be hosting the event in 2019. The domain name <japan2019.com> exists and is currently owned by a third party, who does not seem to be related to Complainant, according to the WHOIS database.
Analyzing the above information, the Panel concludes that it is not a common practice among the Rugby World Cup hosts to register domain names consisting of the host country name, plus the event’s year, along with the gTLD “.com”.
Thus, it is hard to believe that by the time of the registration of the disputed domain name, which was way before Complainant acquires rights over the FRANCE 2023 trademark, Respondent knew of Complainant’s possible interests in the disputed domain name. Besides, as already mentioned, the disputed domain name does not make any reference to the sport or event, other than the host country’s name and a year, which happens to coincide with the event’s date.
Accordingly, Respondent has shown evidence of past events (conference meetings etc) managed by his other company as well as documents that prove that his new company does exist. All of these evidences just confirm Respondent’s demonstrable preparation to use the disputed domain name in connection with a bona fide offering of goods or services. See Sony Pictures Television Inc. v Thomas, Jeff, FA 1625643 (Forum Aug. 6, 2015) (holding that “Respondent has provided evidence of his plans to use the disputed domain name and, despite Complainant’s arguments to the contrary, Respondent can take his time so long as there is no indication of bad faith.”).
Furthermore, Complainant alleges that Respondent might have been expecting who would be granted the rights to hold the Rugby World Cup in 2023 by proceeding to register the disputed domain name. However, there are no facts or documents in the available record which could possibly justify Complainant’s argument, especially considering the date of registration of the disputed domain name and the facts and documents submitted by the Respondent.
In this sense, the Panel also verifies that the Respondent did not register the disputed domain name for the purposes of selling it, in contrast to Complainant’s claims. A lack of intent to sell a disputed domain name at the time of registration may not provide for a finding of bad faith, according to past Panels. See JCM Germany GmbH v. McClatchey Jr., D2004-0538 (WIPO Sept. 17, 2004) (holding that the respondent did not violate Policy ¶ 4(b)(i) by attempting to sell the disputed domain name for profit because the respondent did not register the domain name with the intent to sell it to the complainant or one of its competitors).
Last but not least, the Panel verifies that the disputed domain name currently resolves to an inactive website. Although the passive holding of a disputed domain name does not prevent a finding of bad faith, the Panel observes that, in this specific case, the Respondent has submitted supporting assertions and evidence to conclude that there is plausible bona fide use that Respondent could make of the disputed domain name that would not interfere with the Complainant’s trademark.
Thus, the Panel concludes that Complainant has failed to prove that the disputed domain name has been registered and is being used in bad faith.
Complainant has been granted the chance to oppose Respondent’s allegations and documents submitted, but any additional submission has been submitted by the deadline provided.
Considering the above, this Panel finds that Complainant has not satisfied the second and the third requirements of the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED, without prejudice of a new complaint (e.g., if the disputed domain name starts being used in an improper way).
Accordingly, it is Ordered that the <france2023.com> domain name REMAIN WITH Respondent.
Eduardo Magalhães Machado, Panelist
Dated: May 11, 2018
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