The Complainant is beIN Media Group L.L.C, Qatar, represented by Gevers & Ores, France.
The Respondent is Taha Ahmed, Oud Soft, Egypt. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2021. On April 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 April 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2021. The Respondent sent two email communications on April 22 and April 25, 2021. On May 10, 2021, the Center informed the Parties that it would proceed to appoint a panel. The Center appointed Nayiri Boghossian as the sole panelist in this matter on May 21, 2021. 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 The Complainant is a Qatari media group known for streaming sporting events and entertainment. The Complainant has registered the trademark BEIN and BEIN SPORT in many jurisdictions including Kuwait. For example, the Complainant owns the following registrations: - Kuwaiti trademark registration no. 138647 for the trademark BEIN SPORTS registered on August 4, 2014 ; The website of the Complainant “www.beinsports.com/ar” shows amongst its distributors for Kuwait and Saudi Arabia the following two companies: “Danat Alzahra Co. One” and “Dana Alzahra Two”. The disputed domain name was registered on November 20, 2016 and resolves to a website, which seems to offer subscription in the Complainant’s services. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. The Complainant’s trademark BEIN is well-known as established by UDRP panels. It is very likely that the Respondent used the disputed domain name in order to attract Internet traffic. The Complainant owns a number of domain names using its trademark BEINSPORTS or BEINSPORT. The disputed domain name is almost identical or at least confusingly similar to the Complainant’s trademark, trade name and domain name rights. The disputed domain name consists of the Complainant’s trademark BEINSPORT combined with the geographical indication of the country of Kuwait, which is merely descriptive. The generic Top-Level Domain (“gTLD”) “.com” should generally be ignored when assessing confusing similarity as established by prior UDRP decisions. The disputed domain name bears a visual, phonetical and conceptual resemblance to the Complainant’s trademark creating the likelihood of confusion. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with nor authorized by the Complainant to use its trademark. The use of the disputed domain name cannot be considered a bona fide offering of goods or services. The Respondent is not making any legitimate noncommercial or fair use of the disputed domain name. The disputed domain name is used to propose sports programs. Legitimate rights or bona fide use cannot exist where there is an illegitimate use of another’s rights. The Respondent must have been aware of the Complainant’s trademark. The Complainant contends that the disputed domain name was registered and is being used in bad faith. As per prior UDRP decisions, the mere registration of a domain name that is identical or confusingly similar to a well-known trademark creates a presumption of bad faith. The Respondent must have been aware of the Complainant’s trademark. The website to which the disputed domain name resolves uses a color identical to the color used by the Complainant on its own website and the website to which the disputed domain name resolves is used to promote sports activities. The Respondent is also using a sign that is almost identical to the Complainant’s trademark BEIN SPORT. A cursory Internet search would have demonstrated to the Respondent that the Complainant owns the trademark BEIN and domain names containing BEINSPORT. The Respondent is attempting to attract Internet users to its website for commercial gain by creating confusion with the Complainant and its trademark. The use of a privacy service may be a further sign of bad faith conduct in the circumstances. B. Respondent The Respondent did not submit a reply to the Complainant’s contentions in the manner provided for under the Rules. Instead, the Respondent sent an email on April 22, 2021. in response to the Notification of Complaint explaining that they are “official distributors for Bein Sport”. The Respondent explains that they work in an official capacity and collect subscriptions. The Respondent produced a print out of what seems to be the Complainant’s website, which shows Danat AlZahraa General Trading as being an authorized distributor. A letter is issued by the same company stating that the disputed domain name belongs to them, that they are an authorized distributor of the company Bein Sport and that they offer subscription services. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant owns trademark registrations for the trademark BEIN and BEIN SPORTS, which is also sometimes registered as BEIN SPORT. The Panel is satisfied that the Complainant has established its ownership of the trademark BEIN and BEIN SPORT written with an “s” or without. The disputed domain name incorporates the Complainant’s trademark BEIN SPORT in its entirety. It is established by prior UDRP panels that when a domain name incorporates a complainant’s registered trademark, such incorporation is sufficient to establish identity or confusing similarity for the purposes of the Policy even if other words are added as part of the disputed domain name. E.g., Oki Data Americas, Inc v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”). The word “kuwait” does not alter the fact that the disputed domain name is confusingly similar to the Complainant’s trademark. Instead, the nature of such additional words supports the Panel’s findings under the third element that they reinforce an impression of the disputed domain name being connected with the Complainant and its trademark. The gTLD “.com” should generally be ignored when assessing confusing similarity as established by prior UDRP decisions. Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent. In the instant case, the Complainant asserts that the Respondent is not affiliated with nor authorized by the Complainant to use its trademark. The Respondent should prove that it has rights or legitimate interests. According to the Policy, the use of the disputed domain name would be legitimate if it is used in connection with a bona fide offering of goods or services. It appears from the website of the Complainant that the company Danat Al Zahra Co. One and Dana Alzahra Two are authorized distributors. The website to which the disputed domain name resolves offers subscriptions in the services offered by the Complainant and claims to be the authorized agent/distributor of the Complainant. Furthermore, a letter is issued as explained above by Danat AlZahraa General Trading stating that they are the authorized distributor of the Complainant. Therefore, there may be an argument that the disputed domain name is being used in connection with a bona fide offering of services. In line with the Oki Data test, a number of requirements have to be met (see Oki Data,supra): 1. “Respondent must actually be offering the goods or services at issue”; We analyze each of these requirements below: a. Requirement no. 1: This requirement is met in the instant case as the disputed domain name resolves to a website which offers subscription in the Complainant’s TV Channel for customers in Kuwait and Saudi Arabia. b. Requirement no. 2: When the Panel visited the website to which the disputed domain name resolves, only subscription services in the Complainant’s services seemed to be offered. However, print outs of the website submitted by the Complainant seem to show that services competing to those of the Complainant are also being offered. Such use has been found by prior UDRP panels as not being bona fide (see Experian Information Solutions, Inc v. Credit Research, Inc.,WIPO Case No. D2002-0095) c. Requirement no. 3: This requirement is met as the website states that it is a distributor of the Complainant in Kuwait and Saudi Arabia. The statement is made in a very prominent manner. d. Requirement no. 4: This requirement is also met as there are no numerous registrations by the Respondent of domain names containing the trademark of the Complainant. Contrary to the Oki Data case, the disputed domain name is not registered in the name of any of the companies, which are listed as distributors on the Complainant’s website. The relationship between the said companies and the Respondent is not clear. In other words, the Respondent is not necessarily himself the authorized distributor of the Complainant and his relationship with the authorized distributor(s) is not clear. Furthermore, and as explained above, the evidence in the casefile shows that Requirement no. 2 was not met. Therefore, it is the Panel’s view that the requirements of the Oki Data test have not been met. In fact, it is possible to conclude that the Oki Data test should not be applied to the instant case as the Respondent does not seem to be itself the distributor of the Complainant and the nature of the relationship between the Respondent and the distributor(s) is not clear as explained above. Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Respondent acknowledges that it is aware of the Complainant’s trademark as it states that it is the authorized distributor of the Complainant’s services. The Complainant’s trademark is well-known in its field. The nature of the disputed domain name suggests affiliation with the Complainant as it incorporates the Complainant’s trademark in full. The use of the geographical indication “kuwait” reinforces the impression that the disputed domain name is the Complainant’s website for the Kuwaiti market. The disputed domain name resolves to a website, which seems to offer subscription in the Complainant’s services. It also offers other programs, whether sports related or otherwise. The fact that it offers competing services is an indication of bad faith use. As such, the disputed domain name suggests affiliation with the Complainant in order to attract consumers and offer competing services. This is an act of bad faith (see Intex Recreation Corp. v. RBT, Inc., Ira Weinstein,WIPO Case No. D2010-0119; MasterCard International Incorporated v. Global Access,WIPO Case No. D2008-1940). The use of a privacy service is a further indication of bad faith in the current circumstances. Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied 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 Nayiri Boghossian
- Saudi Arabia trademark registration no. 1438018368 for the trademark BEIN SPORTS filed on May 4, 2017;
- Saudi Arabia trademark registration no. 1438018375 for the trademark BEIN (device mark) filed on May 4, 2017; and
- United States of America trademark registration no. 5273645 for the trademark BEIN SPORTS registered on August 29, 2017
2. “Respondent must use the site to sell only the trademarked goods”;
3. “The site must accurately disclose the registrant’s relationship with the trademark owner”; and
4. “The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name”.
Sole Panelist
Date: May 28, 2021
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