The Complainant is beIN Media Group L.L.C, Qatar, represented by Gevers & Ores, France.
The Respondent is Amjad Alneama, bein sport kuwait, Kuwait. 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 9, 2021, 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 the Complainant on April 13, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 14, 2021. 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 April 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2021. 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: - Saudi Arabia trademark registration no. 1438018368 for the trademark BEIN SPORTS filed on May 4, 2017; The disputed domain name was registered on August 8, 2019 and resolves to a website, which offers subscriptions in the services offered by the Complainant. 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 confusingly similar to the Complainant’s trademark, trade name and domain name rights. The disputed domain name consists of the words “ben” and “sport” combined with the geographical abbreviation of the country of Kuwait used for the country code Top-Level Domain (“ccTLD”) “.kw”. The letters “ben” represent a typo of the Complainant’s trademark BEIN. The generic 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 colour identical to the colour used by the Complainant on its own website and the website to which the disputed domain name resolves is used to promote sports programs. The Respondent is also using a sign that is highly similar to the Complainant’s trademark. A cursory Internet search would have demonstrated to the Respondent that the Complainant owns several registrations for the trademark BEIN and domain names containing BEINSPORTS. The Respondent is attempting to attract Internet users to its website for commercial gain and 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 reply to the Complainant’s contentions. 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 with a typo. The letter “i” is eliminated, which makes it a case of typosquatting. It is established by prior UDRP decisions that a domain name, which consists of an intentional misspelling of a trademark is considered to be confusingly similar to the relevant mark for the purposes of the first element. (See Contentful GmbH v. Jan Everno, The Management Group II,WIPO Case No. D2020-0761). The letters “kw” do not alter the fact that the disputed domain name is confusingly similar to the Complainant’s trademark. Instead, given that these letters are the country code for Kuwait, the nature of these letters 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. Therefore, it is for the Respondent to 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. The website to which the disputed domain name resolves offers subscriptions in the services offered by the Complainant. Therefore, there may be an argument that the disputed domain name is being used with a bona fide offering of services and the current dispute should be analyzed in line with Oki Data Americas, Inc v. ASD, Inc.,WIPO Case No. D2001-0903 (the “Oki Data test”). This test has been expanded to apply to non-authorized distributors. In this respect, the Panel notes that the website to which the disputed domain name resolves includes a statement that the Respondent is a distributor of the Complainant. However, the website of the Complainant does not list the name of the Respondent amongst its distributors in Kuwait. According to the Oki Data test, the following requirements have to be met; 1. “Respondent must actually be offering the goods or services at issue”; The Panel analyzes 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. b. Requirement no. 2: When the Panel visited the website to which the disputed domain name resolves, subscription services in the Complainant’s services seemed to be offered. But logos of other TV channels such as Star World and Fox Networks appear on the website. None of these channels are owned by the Complainant. As a result, it appears that the disputed domain name resolves to a website that promotes services of competitors of the Complainant. 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: The website to which the disputed domain name resolves states that the Respondent is the Complainant’s agent in Kuwait for 10 years. However, this statement only appears if one clicks on the button “who are we”. Not every Internet user will click on that button. Instead, users who are directed to the website will see the main page of the website, where there is no mention of the nature of the relationship between the parties. On the contrary, one gets the impression that the website is the official site of the Complainant as its trademark is placed at the top of the website and appears on every page and the purple colour of the Complainant is the dominant colour of the website. d. Requirement no. 4: This requirement is met as there are no numerous registrations by the Respondent of domain names containing the trademark of the Complainant. Given that some of the requirements were not met, the Respondent has not been able to prove any rights or legitimate interests in the disputed domain name. 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 must have been aware of the Complainant’s trademark as it provides the Complainant’s services to customers. The disputed domain name suggests affiliation with the Complainant as it incorporates the Complainant’s trademark with a typo. The use of the letters “kw” reinforces the impression that the disputed domain name is the Complainant’s website for the Kuwaiti market. Additionally, it is held by prior UDRP panels that typosquatting is obvious evidence of bad faith (see Moneyweek Limited v. he jianyi,WIPO Case No. D2015-1700). The disputed domain name resolves to a website, which seems to offer subscription in the Complainant’s services. It also seems to offer services of competitors. 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, which 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) 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. 1438018375 for the trademark BEIN (device mark) filed on May 4, 2017;
- United States of America trademark registration no. 5273645 for the trademark BEIN SPORTS filed on January 23, 2015 and registered on August 29, 2017;
- Kuwaiti trademark registration no. 138647 for the trademark BEIN SPORTS registered on
August 4, 2014.
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.
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” (see Oki Data Americas, Inc v. ASD, Inc., supra).
Sole Panelist
Date: May 28, 2021
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