Complainant is beIN Media Group LLC, Qatar, represented by Talal Abu Ghazaleh Legal, Egypt.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Ran Ron, Beinsport, Kuwait.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2020. On February 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 19, 2020, 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 Complainant on February 21, 2020 providing the registrant and contact information disclosed by Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 24, 2020.
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 February 26, 2020. In accordance with the Rules, paragraph 5, the due date for the response was March 17, 2020. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on March 19, 2020.
On March 20, 2020, Respondent sent an email communication to the Center. On March 23, 2020, Complainant submitted an unsolicited supplemental filing. Regarding the late email communication from Respondent, pursuant to paragraph 10(b) of the Rules, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. Therefore, the Panel has decided to accept the late email communication from Respondent. Regarding the Complainant’s unsolicited supplemental filing, section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that: “unsolicited supplemental filings are generally discouraged, […] panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show […] why it was unable to provide the information contained therein in its complaint […]”. The Panel has reviewed the Complainant’s supplemental filing, and has not seen any exceptional circumstances here that would allow acceptance of such filing. In any event, were the Panel decide to accept the Complainant’s supplemental filing, it would not have any impact on the Panel’s finding below.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on March 25, 2020. 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 BackgroundComplainant is a company established in Qatar that produces and distributes entertainment, live sport and major international events through broadcast channels in 43 countries. Created in 2003 under the “Al Jazeera Sport” trade name, Complainant rebranded to “beIN SPORTS” in 2012.
Complainant is the proprietor of numerous national and international trademark registrations for word and device marks incorporating the word and device marks BEIN, BEIN SPORT and BEIN SPORTS (the “BEIN Marks”), including in countries that use the Arabic language such as the United Arab Emirates, Oman, Qatar, Saudi Arabia, Jordan, Lebanon and Morocco. Complainant is the proprietor of, inter alia, the following marks:
- European Union Registration No. 010617082 for BEIN SPORT (word mark) registered on May 24, 2013 in classes 9, 16, 35, 38 and 41;
- Qatar Trademark Registrations No. 90917, 90918, 90924, 90925, and 90926 for BEIN SPORTS (word mark) registered on October 15, 2015 in classes 9, 16, 35, 38, 41;
- Egypt Trademark Registration No. 311286 for BEIN SPORTS (word mark) registered on December 3, 2016 in class 9;
- African Organisation of Intellectual Property (OAPI) Registration No. 81609 for BEIN SPORTS (device mark) filed on November 19, 2014 in classes 35, 38, 41 and 43.
Complainant operates its primary websites at “www.beinsportgroup.com” and “www.beinmediagroup.com” and has registered numerous other domain names containing the BEIN Marks.
The disputed domain name
Complainant’s lengthy contentions may be summarized as follows:
Under the first element, Complainant states that it has registered and common law rights in the BEIN Marks, which enjoy a worldwide reputation. The BEIN Marks have been used extensively for its services such as exclusive access to sporting competitions including the Olympics, the FIFA World Cup, UEFA Champions League, Wimbledon, Tour de France and others. Complainant’s services under the BEIN Marks reach hundreds of millions of viewers in seven languages. The BEIN Marks have been extensively advertised and used on social media channels. The disputed domain name is identical to Complainant’s BEIN SPORT mark, and the Top-Level domain “.group” does not affect the confusing similarity. Therefore, the disputed domain name is identical and confusingly similar to Complainant’s Marks and trade name.
Under the second element, Complainant states that it has never authorized nor licensed Respondent to use the BEIN Marks nor to register any domain name incorporating said Marks. Respondent is not affiliated with Complainant in any way, nor has Respondent any prior rights or legitimate interests in the disputed domain name. The BEIN Marks have been registered since 2012, preceding the registration of the disputed domain name by seven years. Respondent registered the disputed domain name using a privacy service, therefore, there is no evidence that Respondent is commonly known by the disputed domain name. Respondent is not an authorized dealer, distributor or licensor of Complainant, nor is Respondent using the disputed domain name in connection with a bona fide offering of goods or services. The website to which the disputed domain name resolves offers services that compete directly with Complainant’s services and could be confused therewith. Respondent’s use of Complainant’s word and figural marks on its website indicate that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Therefore, Respondent lacks rights or legitimate interests in the disputed domain name.
Under the third element, Complainant states that the disputed domain name has been registered in bad faith as it is implausible that Respondent was unaware of Complainant’s BEIN Marks, which have been in use since 2012 and are well known throughout the world. The disputed domain name incorporates the mark BEIN SPORT in its entirety, and the website to which it resolves is an almost exact copy of Complainant’s website. Respondent is using the disputed domain name to attract users to Respondent’s website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website. This website prominently features the BEIN Marks in proximity to an offering of the same goods and services as those offered by Complainant. Respondent used a privacy service to shield its identity. The circumstances prove that Respondent has registered and used the disputed domain name in bad faith.
B. RespondentRespondent did not formally reply to Complainant’s contentions. In the email of March 20, 2020, Respondent stated “[…] Regarding the complaint filed regarding the domain, if I did not violate anyone's property, my blog is beinsport.group. I have seen and seen papers and documents saying that you own the intellectual property rights of bein sports and bein, but you do not own the rights to beinsport.”
6. Discussion and FindingsParagraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) Respondent has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly SimilarComplainant has provided voluminous, if unindexed, evidence establishing that it has trademark rights in the marks BEIN, BEIN SPORT and BEIN SPORTS, through registrations in jurisdictions around the world, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview 3.0, section 1.2.1.
In comparing Complainant’s BEIN Marks with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to Complainant’s Marks. In particular, the disputed domain name contains the verbal element “Bein Sport” in its entirety, therefore, Complainant’s trademark is clearly recognizable within the disputed domain name.
Section 1.7 of the WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”
It is the well-established view of UDRP panels that the addition of the TLD to the disputed domain name does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it 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 has been commonly known by the domain name, even if it has 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.
The circumstances stated in the Complaint and evidence in support set forth in the Annexes to the Complaint indicate that Respondent has no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, which entirely incorporates Complainant’s BEIN SPORT mark, cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.1.
Although the Respondent’s organization name includes “beinsport”, the Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name. See WIPO Overview 3.0, section 2.3. There is also no evidence that Respondent is using the BEIN SPORT mark with permission of Complainant. Rather, the record supports Complainant’s express assertion that such permission does not exist, and that Respondent has registered and is using the disputed domain name to mislead consumers. The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.
Respondent has not submitted any evidence demonstrating such rights or legitimate interests, nor has it successfully rebutted any of Complainant’s contentions. There is no information available that would support a finding of a legitimate noncommercial or fair use of the disputed domain name.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the disputed domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has 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 its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that 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) that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds bad faith registration and use under the Policy, paragraph 4(b)(iv). The record in the case demonstrates that Respondent registered the disputed domain name deliberately for the purpose of impersonating or attempting to create an association with Complainant. Complainant’s rights in the BEIN SPORT mark predate the registration of the disputed domain name. The disputed domain name contains Complainant’s BEIN SPORT mark in its entirety. The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith under the Policy, paragraph 4(b)(iv).
Further, the Panel finds that Respondent has demonstrated bad faith use in establishing and operating a website featuring services substantially identical to those of Complainant, and incorporating Complainant’s word and device marks.
Respondent has failed to provide any evidence of actual or contemplated good faith use, and the circumstances do not make any such use plausible.
The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy.
7. DecisionFor 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
Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: April 4, 2020