Complainants are Perform Investment Limited t/a DAZN and Perform Investment Brands Limited of Feltham, United Kingdom (“UK”), represented by Bird & Bird LLP, United Kingdom.
Respondent is Bidzina Chkheidze, Rituals Cosmetics Georgia LLC of Tbilisi, Georgia, self-represented. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Mesh Digital Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2018. On December 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 13, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainants on December 17, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. On December 17, 2018, the Center received an informal communication from Respondent. Complainants filed an amended Complaint on December 20, 2018.
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 Respondent of the Complaint, and the proceedings commenced on December 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2019. The Center received informal email communications from Respondent on December 21, 2018, and on December 24, 2018.
The Center appointed Jordan S. Weinstein as the sole panelist in this matter on January 23, 2019. 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
Complainants are a global sports media business and own the following registrations for the asserted Trademark:
- UK trademark registration number 3,135,886 for the word mark DAZN, registered on February 5, 2016;
- United States trademark registration number 5,264,263 for the word mark DAZN, registered on August 15, 2017;
- UK trademark registration number 3,201,287, registered on March 3, 2017, and United States Trademark registration number 5,264,264, registered on August 15, 2017, both covering the following DAZN Logo.
The Disputed Domain Name was registered on October 30, 2017 and resolves to an inactive page. 5. Parties’ Contentions A. Complainant
Complainants assert that they are part of the Performance group of companies, a global sports media business based in the United Kingdom operating across a range of digital platforms. Complainants have over 3,000 employees in 30 countries and operate a number of sports media services.
Complainants assert that one of their most popular services is an on-demand sports streaming service, DAZN, which is currently available across seven different countries, streaming over 20 million hours of sport content and broadcasting thousands of live sporting events.
Complainants own two registrations in the United States and two registrations in the United Kingdom for the DAZN word mark and the DAZN logo. Among other goods and services, these registrations cover digital media content streaming services.
Complainants have a number of domain name registrations linked to their DAZN streaming services, including in the , , , and domainspaces.
Complainants assert that the Disputed Domain Name is confusingly similar to trademarks in which Complainants have rights because it combines the word mark DAZN and the term “group”. “Group” is commonly used by businesses in general and is entirely nondistinctive. However,“dazn” is a coined term with no meaning other than to refer to Complainants’ streaming services. As a result, Complainants assert that the Disputed Domain Name should be considered identical to the Complainants’ Trademarks.
Complainants assert that Respondent has no rights or legitimate interests in the respect of the Disputed Domain Name because the website to which the Disputed Domain Name resolves currently has no content and therefore Respondent is not using the Disputed Domain Name.
Complainants assert that the Disputed Domain Name has no content because Complainants contacted Respondent’s webhost by email, resulting in the host removing the content from the website linked to the Disputed Domain Name. Complainants assert that previously the webpage resolved to a precise clone of Complainants’ “” website.
For these reasons, Complainants assert that the Disputed Domain Name does not serve any legitimate purpose and is being used unlawfully as a way to legitimize the Respondent’s own content.
By virtue of this same conduct, Complainants assert that the Disputed Domain Name was registered and is being used in bad faith. B. Respondent
Respondent did not reply to the Complainants’ contentions.
Respondent sent informal email communications to the Center informing that the Disputed Domain Name has been cancelled. 6. Discussion and Findings A. Applicable Policy Provisions
Paragraph 4(a) of the Policy requires Complainants to prove each of the following three elements in order to prevail in this proceeding:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that [respondent has] registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) [respondent has] registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or
(iii) [respondent has] registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.
These circumstances are non-exhaustive, and a UDRP panel may consider other circumstances as constituting registration and use of a domain name in bad faith.
According to paragraph 4(c) of the Policy, a respondent may demonstrate rights in or legitimate interests to a domain name by any of the following, without limitation:
“(i) Before any notice to you of the dispute, your 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) you, as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.”
Where a respondent is in default, a UDRP panel may draw such inferences as it considers appropriate. Rules, paragraph 14(b). B. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is confusingly similar to Complainants’ DAZN registered trademarks. The Disputed Domain Name reproduces the DAZN trademark in its entirety, combined with the term “group”. Adding the term “group” to Complainants’ trademark does not prevent a finding of confusing similarity between the Disputed Domain Name and Complainants’ Trademark. See section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and Lidl Stiftung & Co. KG v. Chen Chang Jiang,WIPO Case No. D2018-0221 (“The inclusion of a generic term (“group”) […] does not avoid the finding of confusing similarity”).
The Panel finds that Complainants have provided sufficient evidence to establish paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Complainants have made a prima facie case under paragraph 4(a)(ii) of the Policy that Respondent has no rights or legitimate interests in the Disputed Domain Name by showing that Respondent linked the Disputed Domain Name to a website that scraped Complainants’ own content, including both Complainants’ word trademark and their logo, without Complainants’ consent. This is not a bona fide, legitimate, or fair use under the Policy. See CBS Lyrics, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Yongqiang Zhang,WIPO Case No. D2016-0807.
Once Complainants make a prima facie case of Respondent’s lack of rights or legitimate interests, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. See WIPO Overview 3.0, section 2.1. Respondent failed to come forward with allegations or evidence demonstrating either rights or legitimate interests in the Disputed Domain Name. As a result, Complainants have established paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Panel finds that Complainants have provided sufficient evidence to satisfy paragraph 4(b)(iv) of the Policy, namely that by using the Disputed Domain Name, Respondent intentionally intended to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Specifically, the Panel finds as bad faith “Respondent’s slavish copying of the Complainants’ website, as nearly the entire content of the website associated with the Disputed Domain Name was scraped from the Complainant’s website.” CBS Lyrics, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Yongqiang Zhang,WIPO Case No. D2016-0807. See also Viceroy Cayman Ltd. v. Next Reservation Ltd / Privacy Protection Service, Inc. d/b/a PrivacyP,WIPO Case No. D2014-0919. As an inference this Panel may draw based upon Respondent’s default, Rules, paragraph 14(b), this Panel determines that by creating a precise clone of Complainants’ website and linking it to the Disputed Domain Name, Respondent intended to confuse Internet users into believing that the Disputed Domain Name was affiliated with or endorsed by Complainants. The fact that Respondent’s webhost removed the scraped content on request of Complainants does not serve to vitiate Respondent’s bad faith in scraping and uploading that content, and linking it to the Disputed Domain Name. 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 Disputed Domain Name, , be transferred to the Complainants.
Jordan S. Weinstein
Sole Panelist
Date: February 4, 2019
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