WIPO Domain Name Decision D2020-2106 for feilivetv.com, feilivetv.net

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Fédération Equestre Internationale v. WhoisGuard Protected, WhoisGuard, Inc. / Rh Islam Case No. D2020-2106 1. The Parties

Complainant is Fédération Equestre Internationale, Switzerland, represented by BrandIT GmbH, Switzerland.

Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Rh Islam, Bangladesh.1 2. The Domain Names and Registrar

The disputed domain names and are registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2020. On August 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 10, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 13, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 18, 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 August 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 15, 2020.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on September 24, 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 Background

Complainant is a sport federation domiciled in Switzerland governing international equestrian disciplines with 137 affiliated national federations worldwide.

Complainant has provided evidence that it is the registered owner of numerous trademarks relating to Complainant’s company name (as an acronym) and brand “FEI”, inter alia, the following:

- Word/device mark FEI, Swiss Federal Institute of Intellectual Property (IPI), registration number: P-530603, registration date: February 11, 2005, status: active;

- Word/device mark FEI, International trademark, registration number: 1513016, registration date: June 25, 2019, status: active.

Moreover, Complainant has evidenced to own several domain names relating to its FEI trademark, inter alia, the domain names as well as which both resolve to Complainant’s official websites informing Internet users about the FEI trademark and related products and services.

Respondent, according to the disclosed WhoIs information for the disputed domain names, is a resident of Bangladesh who registered the disputed domain name on July 13, 2019, and the disputed domain name on September 10, 2019. Complainant has documented that on August 8, 2020, the disputed domain name resolved to a typical pay-per-click (PPC) website mainly displaying numerous sponsored links related to live streaming offers, while the disputed domain name by that time did – and still does – promote content related to numerous equestrian sport events, such as “The London International Horse Show 2019”, under the heading “FEI Live TV”.

Complainant requests that the disputed domain names be transferred to Complainant. 5. Parties’ Contentions A. Complainant

Complainant contends to be the sole authority for all international events in dressage, jumping, eventing, driving, endurance, and any other forms of equestrian sport, and that it manages broadcasting matters, including live tv and streaming services, relating to international equestrian events such as the FEI Nations cup. Furthermore, Complainant alleges that due to extensive use, advertising and revenue associated with its FEI trademarks worldwide, Complainant enjoys a high degree of renown around the world.

Complainant submits that the disputed domain names are confusingly similar to Complainant’s FEI trademark as they incorporate the latter in its entirety, simply added by the descriptive terms “live” and “tv”. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain names since (1) the disputed domain names were registered many years after the first registrations of Complainant’s FEI trademark, (2) Complainant has not licensed or authorized Respondent to use Complainant’s FEI trademark and Respondent is not affiliated with Complainant whatsoever, (3) using the disputed domain name for a PPC website attracts Internet users into believing that the content under the sponsored links may be associated with Complainant, while the website under the disputed domain name prominently displays the FEI trademark and also offers to watch live international equestrian events organized under Complainant’s authority such as “The London International Horse Show”. Finally, Complainant argues that Respondent registered and is using the disputed domain names in bad faith since (1) Respondent registered the disputed domain names many years after the first registrations of Complainant’s FEI trademarks which are widely known, especially with respect to services provided in the equestrian field, (2) given the structure of the disputed domain names which combine Complainant’s FEI trademark with the terms “live” and “tv”, it is inconceivable that Respondent was unaware of Complainant’s existence when it registered the disputed domain names, (3) the disputed domain name is used to generate revenues by displaying sponsored links comprising terms referring to Complainant’s “live tv” and “streaming” business, while the disputed domain name resolves to a website expressly referring to Complainant’s FEI trademark and international equestrian events which are under Complainant’s authority. B. Respondent

Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent’s failure to submit a Response as it considers appropriate. A. Identical or Confusingly Similar

The Panel concludes that the disputed domain names are confusingly similar to the FEI trademark in which Complainant has rights.

The disputed domain names both incorporate the FEI trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of other terms (whether e.g. descriptive or otherwise) would not prevent the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the descriptive terms “live” and “tv” does not dispel the confusing similarity arising from the incorporation of Complainant’s FEI trademark in the disputed domain names.

Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests

The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain names in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain names, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.

Respondent has not been authorized to use Complainant’s FEI trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain names and Respondent obviously has no trademark rights associated with the acronym “FEI” on its own. Finally, Respondent has neither used the disputed domain names for a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose. On the contrary, the disputed domain name , at the time of the filing of the Complaint, resolved to typical PPC website showing a variety of hyperlinks related to the live tv and streaming business, for the obvious purpose of generating PPC revenues. UDRP panels agree that using a domain name to host a PPC website does not present a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s trademark or otherwise mislead Internet users (see WIPO Overview 3.0, section 2.9). Besides, the disputed domain name resolves to a commercially active website at “www.feilivetv.net” offering live tv and streaming services in the field of equestrian sports which are identical with or at least confusingly similar to those offered by Complainant, and thereby prominently displaying the acronym “FEI” as it is reflected in Complainant’s FEI trademark. Such use of the disputed domain name neither qualifies as bona fide nor as legitimate noncommercial or fair within the meaning of paragraph 4(c) of the Policy.

Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain names. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, it has not met that burden.

Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith

The Panel finally holds that the disputed domain names were registered and are being used by Respondent in bad faith.

Resolving the disputed domain name , which is confusingly similar to Complainant’s FEI trademark due to the inclusion of said trademark in its entirety, to a typical PPC website showing a variety of hyperlinks related to live tv and streaming services which are part of Complainant’s core business, for the obvious purpose of generating PPC revenues, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant’s FEI trademark as to the source, sponsorship, affiliation or endorsement of this website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. Besides, using the disputed domain name to run a website offering live tv and streaming services in the field of equestrian sports which are identical with or at least confusingly similar to those offered by Complainant, and thereby prominently displaying the acronym “FEI” as it is reflected in Complainant’s FEI trademark, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusing with Complainant’s FEI trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

In this context, the Panel has also noted that Respondent not only made use of a WhoIs Privacy Service in order to conceal its true identity, but also provided fault or incomplete contact information in the WhoIs register for the disputed domain names since the Written Notice on the Notification of Complaint, could not be delivered due to a lack of address information. These facts at least throw a light on Respondent’s behavior which supports the Panel’s bad faith finding.

Therefore, Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii). 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 names and be transferred to Complainant.

Stephanie G. Hartung
Sole Panelist
Date: September 30, 2020

1 It is evident from the case file that WhoisGuard Protected, WhoisGuard, Inc., Panama, is a privacy protection service and that Rh Islam, Bangladesh, is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.

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