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.
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.