The Complainant is beIN Media Group L.L.C, Qatar, represented by Tmark Conseils, France.
The Respondent is Alaattin Bulut, Austria. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2019. On August 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 29, 2019, the Registrar transmitted by email to the Center its verification response disclosing contact information for the disputed domain name which differed from the contact information in the Complaint. The Center sent an email communication to the Complainant on August 30, 2019, providing the contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 1, 2019.
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, and the proceedings commenced on September 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2019. The Response was filed with the Center on September 22, 2019.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on September 25, 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.
On October 3, 2019, the Complainant filed a Supplemental Submission relating to the Response of the Respondent with the Center. 4. Factual Background
The Complainant is beIn Media Group L.L.C, a media group registered under Qatari law. The Complainant is an international leader in the media market, notably for broadcasting of major sport events and entertainment, offering subscriptions to TV channels, websites, and mobile apps in its broadcasting territories. The Turkish TV broadcaster Digiturk, a pay-tv broadcaster that offers a mix of sports and entertainment content, was acquired by the Complainant in July 2015. The Complainant advertises and sells its products and services through its , , and various other related websites with domain names consisting of the term “bein” or “beIN”, together with words such as “group”, “connect”, “show”, “sports”, “shop”, “store”, “corporation”, “foundation”, and so on.
The Complainant owns the BEIN, BEIN SPORT, and BEIN SPORTS trademarks in various jurisdictions (e.g. Turkey registration No. 2014/101991 of December 11, 2014, or the European Union registration No. 010617082 of May 24, 2013).
The disputed domain name was registered on July 23, 2015. The disputed domain name resolves to a webpage seemingly dedicated to Turkish football players.
The Complainant has sent various communications to the Respondent, requesting that the disputed domain name be transferred to the Complainant. 5. Parties’ Contentions A. Complainant
In its Complaint, the Complainant alleges that it has satisfied all elements of the Policy, paragraph 4.
In its Supplemental Submission, the Complainant states that the Respondent has sent an email to the Center on September 23, 2019, informing the Center that the online response form had been filled out and sent to the Center. This communication was sent after the deadline for the Response, namely on September 22, 2019.
Further, the Complainant points out that the Respondent has failed to forward a copy of its Response to the Complainant as required by paragraph 2(b) and 5(c)(vii) of the Rules. B. Respondent
The Respondent alleges that Beintürk was an informal software group of Turkish and Austrian software developers established in 2007 and that the disputed domain name has first been used for a software blog. From April 4, 2018, the Respondent took over the disputed domain name and started to work on a website which could serve as a database for footballers of Turkish origin playing in Europe.
The Respondent finds that, although the BEIN trademark has been registered by the Complainant, there was no activity of the Complainant in Turkey on the date of the registration. Moreover, the beginning of the Complainant’s activities in Turkey and the first registration date of the disputed domain name are close to each other.
The Respondent further explains that there was no information about the Complainant’s brand at the time of domain registration and that the disputed domain name is using the German word “Bein”, meaning foot [recte: leg] and the word “Turk” referring to the Turkish society.
Further, the Respondent is of the opinion that the main domain names of the Complainant, and , are far from similar to the disputed domain name. Moreover, based on the number of visitors of the Complainant’s websites and the website under the disputed domain name, the rate of error is very low.
Additionally, the webpage under the disputed domain name does not show advertisement or promotion of competitors of the Complainant. 6. Discussion and Findings A. Procedural considerations
Before discussing the merits, the Panel must decide whether to consider the Complainant’s Supplemental Submission dated October 3, 2019. Paragraph 12 of the Rules unambiguously provides that only the Panel may request further submissions. However, the Rules make no provision for a party to file an additional submission without leave of the Panel.
In general, such supplemental submissions are only appropriate if they raise new facts or law not reasonably available at the time of the party’s initial submission. They are not to be used to reply to respondents’ arguments (Magnum Piering Inc., v. Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903). In the case at hand, the Panel rejects the Complainant’s Supplemental Submission as it does not elaborate on new facts.
It has to be noted that the Response was sent to the Center on September 22, 2019, and the Center confirmed receipt on that date. Therefore, the Response was sent in time to the Center.
If a party has not complied with any provision or requirement of the Rules, the Panel shall draw such inferences as it considers appropriate (paragraph 14(b) of the Rules). In view of the below considerations, including the material facts of the case, and considering that the failure by the Respondent to submit the Response to the Complainant has not resulted in any disadvantage for the Complainant, the Panel decides to disregard the fact that the Respondent has not complied with the formal requirements of paragraph 2(b) and 5(c)(vii) of the Rules when filing its Response. B. Analysis of the Complaint
On the basis of the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b), and (c) of the Policy, the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has submitted evidence to prove its registered rights in the trademarks BEIN, BEIN SPORT, and BEIN SPORTS.
The BEIN trademark is reproduced in the disputed domain name . The disputed domain name differs from the trademark BEIN only by addition of the term “turk”. The Top-Level Domain (“TLD”) in a domain name (e.g. “.com”) is viewed as standard registration requirement and as such disregarded under the confusing similarity test (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11).
The term “turk” is a geographical term, relating to a country in which the Complainant has ongoing business activities and registered trademarks. It is the consensus view of UDRP panels that the addition of such geographical terms does not prevent a finding of confusing similarity under the first element of the Policy (WIPO Overview 3.0, sections 1.7 and 1.8).
In particular, the use of a well-known trademark in its entirety, together with a geographical term in a domain name, creates a domain name that is confusingly similar to the trademark for the purposes of the Policy (see Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
The Complainant has thus fulfilled the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Under the circumstances of this case, it can be inferred that the Respondent was aware of the Complainant’s trademarks when registering the disputed domain name.1 The Complainant is very well known in its business area and on an international level. The Panel finds that the Complainant has established a prima facie case showing a lack of the Respondent’s rights or legitimate interests to the disputed domain name. Hence, the burden of production shifts to the Respondent. See WIPO Overview 3.0, section 2.1.
In assessing the question of fair use, the Panel will look at the nature of the disputed domain name (WIPO Overview 3.0, section 2.5.1) and the overall facts and circumstances beyond the wording of the disputed domain name (WIPO Overview 3.0, section 2.5.2).
In this regard, the Panel notes that even where a domain name consists of a trademark plus an additional term (at the second or top level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.
The Panel notes that there are no indications on the website under the disputed domain name that the Respondent is achieving any direct commercial gain from pay-per-click links, advertisement, or other commercial activities. It should be noted, however, that commercial gain may also include reputational advantage, even where such advantage may not be readily quantified (WIPO Overview 3.0, section 2.5.3). In the present case, the Respondent submits that he is operating a website under the disputed domain name that in his own words “aims to promote Turkish football players in Europe, especially Germany”. Noting the renown of the Complainant, the Panel finds the Respondent’s submissions pretextual.
Considering the contents of the Respondent’s website under the disputed domain name, it seems likely that the Respondent wanted to profit from the BEIN trademark by increasing traffic on his website. This is not changed by the fact that the Respondent has previously used the disputed domain name for websites with different content, especially considering that the Respondent, according to his own statement, started to work on the website to promote Turkish footballers immediately after he took over the disputed domain name in 2018. In view of the well-known character of the BEIN trademark in the sports industry, it is implausible that, when the Respondent took over the disputed domain name, he in fact thought the disputed domain name was suitable for his cause because the German word “Bein” means foot, and not because of the trademark BEIN. Moreover, the Panel notes that the German word “Bein” actually means leg, not foot.
In the case at hand, the website under the disputed domain name contains football-related content. Considering the business activities of the Complainant and the nature of the disputed domain name, confusion of Internet users seems very likely. Furthermore, it is certainly not immediately apparent to Internet users visiting the website under the disputed domain name that this is not a website of the owner of the BEIN trademark. While the purple color and the common logo of the Complainant were not used on the website under the disputed domain name, the Panel finds that, due to the nature of the disputed domain name (being confusingly similar to the widely known trademark BEIN) and the sport-related content of the website, the disputed domain name carries a high risk of being affiliated with the Complainant’s trademark.
Further, the Respondent diverts Internet users to his own website, thereby potentially depriving the Complainant of visits by Internet users (Volkswagen AG v. Constantin Amann,WIPO Case No. D2015-2011).
The Complainant has developed arguments and made a prima facie case under the second element of the Policy, and the Respondent has not brought forward convincing arguments or evidence for any rights or legitimate interests. Based on the case file, the Panel finds it more likely than not that the Respondent registered the disputed domain name with full knowledge of the Complainant, with the intent to profit from the goodwill the Complainant has on its trademark BEIN.
In view of the foregoing, the Panel finds that the second element of paragraph 4(a) of the Policy is fulfilled. C. Registered and Used in Bad Faith
Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark would also satisfy the complainant’s burden. See WIPO Overview 3.0, section 3.1.
While it has not been proven that the Respondent derived any financial gain from the use of the website under the disputed domain name, the Panel finds it very likely that the Respondent used the disputed domain name containing the well-known trademark BEIN in order to benefit from the corresponding Internet traffic. In addition, Internet users might not immediately be able to recognize that the website under the disputed domain name is not a website of the owner of the BEIN trademark.
Having reviewed the contentions of the parties and the evidence in the case file as well as the content of the website at the disputed domain name, the Panel is satisfied that these sources of information contain evidence indicating that the Respondent has specifically targeted the Complainant’s BEIN trademark when setting up the associated website under the disputed domain name and is using it to achieve a certain type of gain.
In view of the above, the Panel finds that the Complainant has met its burden of proof to establish that it is more likely than not that the Respondent has used the disputed domain name in bad faith by targeting the Complainant’s BEIN trademark and attempting to achieve extra traffic for the Respondent's website from the popularity of the Complainant’s trademark. The Panel finds the Respondent’s explanation of the selection of the disputed domain name to be pretextual, i.e., the combination of the terms “bein” (a German word for “leg”) and “turk” (an English word for “a native or inhabitant of Turkey”). Even if the Respondent’s intent was genuinely to promote Turkish football players in a noncommercial context, the Respondent could easily have used a domain name that does not incorporate the BEIN trademark. Thus, the Respondent most likely wanted to profit directly or indirectly from the reputation of such trademark.
The Respondent’s Response dated September 22, 2019 does not provide any reasonable explanation for a different conclusion.
The Panel thus concludes that the Complainant has fulfilled paragraph 4(a)(iii) of the Policy. 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 Complainant.
Tobias Zuberbühler
Sole Panelist
Date: October 9, 2019
1 In the circumstances, the question if and whether the Respondent had known about the Complainant’s purchase of the company Digiturk is not relevant to the below considerations.
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