202010.16

boycottrolandgarros.com: the need to set up daily alerts as soon as a controversy emerges

The COVID-19 pandemic is forcing event organizers to be extra vigilant concerning domain names, among other things. As agendas are turned upside down, events are easy prey for cybersquatters.

For example, on March 24, 2020, the International Olympic Committee announced the Tokyo Olympic Games’ postponement, at the latest, to summer 2021 (Olympic.org, 2020-03-24). Given that such a delay was already foreseeable a few weeks earlier, a third-party registered the domain name tokyo2021.org as early as February 3, 2020 (WIPO, D2020-0808, International Olympic Committee and Tokyo Organizing Committee of the Olympic and Paralympic Games v. Contact Privacy Inc. Customer 1246395316 / Daniel O’Hare, June 12, 2020). Therefore, organizers of events postponed to 2021 or 2022 are strongly advised to reserve “2021” or “2022” domain names as soon as possible.

The history of extrajudicial proceedings relating to the “Roland Garros” and “French Open” trademarks reveals another example. In 2020, the French Tennis Federation (Fédération Française de Tennis, FFT), which had to shake up the Roland Garros tournament schedule and reduce the number of spectators, had to initiate several extrajudicial proceedings aimed at putting an end to acts of cybersquatting.

The number of procedures is not significant in itself. Indeed, it is not uncommon for the FFT to initiate extrajudicial proceedings to stop bad-faith uses of domain names imitating or reproducing the “Roland Garros” and “French Open” trademarks.

Decisions
WIPO, D2011-0813, Fédération Française de Tennis (FFT) v. Satoshi Shimoshita, 8 July 2011, rolandgarros.net, Transfer
WIPO, D2013-2024, Fédération Française De Tennis (FFT) v. Ticketfinders International LLC / Michael Cook, 27 January 2014, frenchopen2018.com, frenchopen2018.net, frenchopen2019.com, frenchopen2019.net, frenchopen2020.com, and frenchopen2020.net, Transfer
WIPO, D2016-0530, Fédération Française de Tennis (FFT) v. Kapil Kumar, 6 June 2016, frenchopen2016livestreaming.com, Transfer
WIPO, D2016-1917, Fédération Française de Tennis (FFT) v. Cameron Jackson, 23 November 2016, rolandgarros.club, and rolandgarros.stream, Transfer
WIPO, D2016-1929, Fédération Française de Tennis (FFT) v. Aditya Soni, 21 November 2016, frenchopen2017.xyz, Transfer
WIPO, D2016-1933, Fédération Française de Tennis (FFT) v. Ticketfinders International LLC, 23 November 2016, rolandgarros2016.net, and the-french-open.com, Transfer
WIPO, D2017-1137, Fédération Française de Tennis (FFT) v. Shohel Rana, Sohel IT, 21 July 2017, open-french.net, and 2017frenchopen.net, Transfer
CAC, UDRP Case 100579, Fédération Française de Tennis (FFT) v. Bob Meadows, 21 May 2013, french-open.org, Complaint accepted
CAC, UDRP Case 101211, Fédération Française de Tennis (FFT) v. Venkat, 3 June 2016, frenchopenlive.org, Complaint accepted
CAC, UDRP Case 101221, Fédération Française de Tennis (FFT) v. Ashwin Reddy, 22 July 2016, frenchopenlivestream.xyz
CAC, UDRP Case 101243, Fédération Française de Tennis (FFT) v. Roya Elison, 12 August 2016, frenchopenacommodation.com, Complaint accepted
CAC, UDRP Case 101244, Fédération Française de Tennis (FFT) v. john smith, rolandgarros2016live.com, Complaint accepted
CAC, UDRP Case 101242, Fédération Française de Tennis (FFT) v. Real James, 22 August 2016, rolandgarrosdirect.com, Complaint accepted
CAC, UDRP Case 101245, Fédération Française de Tennis (FFT) v. kapil Kumar, 1st September 2016, frenchopen2016-live.org, Complaint accepted
CAC, UDRP Case 102157, Fédération Française de Tennis (FFT) v. Biswas, Jyotirmoy,16 October 2018, frenchopenlivetvcom, Complaint accepted.
CAC, UDRP Case 102159, Fédération Française de Tennis (FFT) v. snatch Network,18 October 2018, french-openlive.org, Complaint accepted
CAC, UDRP Case 102158, fédération Française de Tennis (FFT) v. MD Abdullah Al Muktadir, 24 October 2018, frenchopenlivefree.com, Complaint accepted
CAC, UDRP Case 102530, Fédération Française de Tennis (FFT) v. Fundacion Comercio Electronico, 29 July 2019, rolandgarrow.com, rolandgsrros.com, rollandgarrros.com, and tolandgarros.com, Complaint accepted
CAC, UDRPC Case 102528, fédération Française de Tennis (FFT) v. Fundacion Comercio Electronico, 30 July 2019, frenchopentennis2019.com

The “Roland Garros” and “French Open” trademarks are frequently associated with terms evoking the broadcasting of the tournament (“TV”, “live”, “stream” or “livestreaming”) or, more rarely, with ticketing (“tickets”).

The recent case of the domain name boycottrolandgarros.com (CAC, UDRP Case 103287, Fédération Française de Tennis v. Lifemond Internacional, October 8, 2020) seems unique in the history of the “Roland Garros” and “French Open” trademarks. According to publicly available resources, this was the first time the FFT had faced a domain name that openly referred to freedom of expression. For several months, the FFT had been facing criticism related to the pandemic’s consequences. Now, in a crisis, brand owners may be called upon to make potentially divisive choices. In such a case, the monitoring of domain names and web pages should be part of the brand owner’s crisis strategy. This is how the brand owner can react instantly against various criminal acts, such as cybersquatting or defamation. In the presence of such risks, the owner of the trademark must place himself in a position that allows him to take awareness of these monitoring results as quickly as possible. When it comes to cybersquatting, the choice of a daily alert seems to be necessary as soon as a debate emerges, involving, for example, a call for a boycott.

One must also be wary of those who do everything they can to gain profit without being concerned by the debate. In this case, on the day the complaint was filed, ten days after the registration of the domain name boycottrolandgarros.com, the latter only hosted a parking page containing commercial links. However, the production of an honest page that would set out the reasons for dissociating oneself from the FFT choices should only require a few hours. The most probable hypothesis tends towards a cybersquatter who would have appropriated a domain name referring to the birth of a controversy he did not take part in and from which he intended to profit. Moreover, the defendant’s lack of participation in the UDRP proceedings unquestionably reveals the cybersquatter’s lack of interest in the debate. This outrageous attitude required an immediate reaction.

To conclude, in a crisis period such as the one caused by the current pandemic, it seems prudent for companies with high media exposure to prepare an audit of the domain name portfolio and set up tailor-made monitoring. Also, it seems useful to set them up so that the trademark rights holder is notified, as soon as possible, of the emergence of new domain names likely to mislead the public.

About IP Twins

IP Twins is an ICANN-accredited domain name registrar with 15 years of experience in domain name strategy and management. We represent trademark holders in UDRP proceedings.

We deliver security certificates tailored to your needs in order to ensure the safety of visitors to your website.

IP Twins also offers anti-counterfeiting and anti-cybersquatting monitoring services. Detective, our monitoring software, identifies online counterfeits and cybersquatting. We collect evidence and remove references to counterfeits from hundreds of marketplaces, social networks and the web in general.

Should you need to complete these investigations, our team based in China can help.

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