Complainant is beIN Media Group L.L.C, Qatar, represented by Gevers & Ores, France.
Respondent is Rima Muliawati, Indonesia. 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 Domain Name. On April 9, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 16, 2021, 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 April 19, 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 Respondent of the Complaint, and the proceedings commenced on April 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2021. Respondent sent an email communication on April 21, 2021 stating its willingness to sell the Domain Name. On April 21, 2021, the Center sent an email to the Parties informing them of the possibility of suspending the proceeding to explore a settlement agreement between the Parties. The parties did not settle their dispute. The Center notified the parties of the commencement of the Panel appointment process on June 4, 2021. The Center appointed Clive L. Elliott Q.C., as the sole panelist in this matter on June 11, 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 Complainant is a Qatari media group. It distributes broadcasting worldwide and streams major live sporting events and entertainment to over 43 countries in 7 different languages including Europe, North America, Asia, Australia, the Middle East and North Africa. Created in 2003 under the “Al Jazeera Sport” trade name, Complainant rebranded to “beIN SPORTS” in 2012. Complainant is the owner of trade mark registrations for both word and device marks incorporating the word and device marks BEIN, BEIN SPORT and BEIN SPORTS (“Complainant’s Trade Marks”) in numerous jurisdictions around the world, including Indonesia where Respondent resides. Complainant’s other registered trade marks include the following: Trade Mark / Word Mark Jurisdiction Registration No. Classes Date Registration/ Qatar 134679, 134680 38, 41 September 26, 2019 BEIN SPORTS Saudi Arabia 1438018368 38 May 04,2017 BEIN SPORTS United Kingdom 00003264901 09,16,35,38,41 October 20,2017 BEIN SPORTS United States of America (“US”) 5,273,645 09, 16, 18, 21, 24, 25, 28, 35, 38, 41, 43 August 29,2017 BEIN CONNECT US 5,273,646 09, 16, 18, 21, 24, 25, 28, 35, 38, 41, 43 August 28,2017 BEIN US 4,665,444 09, 16, 35, 38, 41 January 62015 BEIN SPORT US 5,066,623 09, 16, 35, 38, 41 October 25,2016 BEIN European Union (“EU”) 010617058 09, 16, 35, 38, 41 June 15,.2012 BEIN SPORT EU 010617082 09, 16, 35, 38, 41 May 24, 2013 BEIN SPORTS Canada TMA977639 09, 16, 25, 35, 38, 41 August 3, 2017 BEIN SPORTS Indonesia IDM000573154 35 April 6,.2017 BEIN SPORTS Indonesia IDM000573163 41 April 6,2017 Turkey 2016 107400 16, 28, 41 December 29,2016 Turkey 2018 112902 16, 28, 41 December 11,2018 Complainant is also the owner of the trade name BEIN MEDIA GROUP. Complainant operates its primary websites at “www.beinsportgroup.com” and “www.beinmediagroup.com” and has registered numerous other domain names, all of which contain the “beinsports” element. According to publicly available WhoIs, the Domain Name was registered on January 7, 2021. 5. Parties’ Contentions A. Complainant Complainant states that Complainant’s Trade Marks are used in various countries, including several English speaking countries, which is the language used on the website linked to the Domain Name. Complainant contends that the Domain Name is identical to Complainant’s Trade Marks in that it contains the words BEIN and SPORTS, both words which form Complainant’s Trade Marks. Further, the Domain Name is identical to Complainant’s particular Trade Mark BEINSPORTS4K registered in Turkey, as it also contains the number 4 and the letter K. Complainant points out that the addition of the reference “4K” is a reference to the dominant resolution in the consumer media and display industries and an indication that the services proposed on the website linked to the Domain Name would be of high quality. Because of the high similarities to Complainant’s Trade Marks, Complainant contends that there is a likelihood of confusion for the internet user believing that it is a domain name belonging to Complainant or could wrongly convince the internet user that the Domain Name has some association with Complainant’s Trade Marks when in fact it does not. Complainant asserts that Respondent has no connection or affiliation with Complainant and has not received any license and has never been permitted in any way by Complainant to register or use Complainant’s Trade Marks, or to apply for or use any domain name incorporating Complainant’s Trade Marks. Further, to Complainant’s knowledge, Respondent does not own any valid trade mark or trade name rights over Complainant’s Trade Marks or indeed BEIN SPORTS 4K. Finally, to the best of Complainant’s knowledge, Respondent has never been, an authorized reseller, service provider or distributor of Complainant. Complainant submits that the Domain Name gives the false impression that it is a genuine site for the activities of Complainant. Complainant asserts that as Respondent is using the Domain Name to propose similar programs to Complainant, i.e. programs related to sports and especially football, and using an identical representation of Complainant’s Trade Marks (including identical background purple color and representation of Complainant’s Trade Marks at the bottom), it is fraudulently identifying itself as Complainant or related to Complainant. This, Complainant asserts, is proof of Respondent impersonating Complainant and passing itself off. Additionally, Complainant claims that the use of the Domain Name cannot be considered a bona fide offering of goods or services and Respondent is using the same trade mark and logo on the website attached to the Domain Name as the one used by Complainant on its genuine website. Complainant maintains that a cursory Internet search at the time of registration of the Domain Name would have made it clear to Respondent that Complainant had rights in at least Complainant’s Trade Marks. Complainant also views the use of an anonymization service by Respondent as further evidence of bad faith registration. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Complainant has established it has rights in Complainant’s Trade Marks. It distributes broadcasting worldwide and streams major live sporting events and entertainment to over 43 countries. Complainant also shows it has secured trade mark rights in a number of jurisdictions around the world, including Indonesia where Respondent resides. Further, Complainant has registered the trade mark BEINSPORTS4K in Turkey. This trade mark is the same as the Domain Name insofar as it contains, in addition to the wording of Complainant’s Trade Marks, the number “4” and the letter “K”. The Domain Name reproduces Complainant’s Trade Marks, along with the number “4” and the letter “K”. The addition of “4K”, does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. Therefore, the Domain Name is identical to the trade mark BEINSPORTS4K registered by Complainant in Turkey and confusingly similar to Complainant’s Trade Marks. Accordingly, the first ground under the Policy is made out. B. Rights or Legitimate Interests Complainant contends that Respondent is using the Domain Name to propose similar programs to Complainant. That is, programs related to sports. In addition, Complainant contends that Respondent is using an identical representation of Complainant’s Trade Marks, including an identical background colour. Complainant submits that and that this will give the false impression that members of the public are accessing a genuine site, associated with Complainant, when that is not the case. Respondent has made no effort to challenge or refute these allegations. The Panel is satisfied that they have merit. On the basis of the record, the Panel draws the inference that Respondent is benefiting, either directly or indirectly, from wrongly associating itself with Complainant. This establishes a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Further, Respondent appears to have no rights or legitimate interests in the Domain Name, given that Complainant has not authorized or permitted Respondent to register or use the Domain Name. Under the circumstances, the Panel concludes that the Domain Name was not registered and has not been used for any legitimate or fair purpose. Accordingly, the second ground under the Policy is made out. C. Registered and Used in Bad Faith Complainant raises two points in support of its argument that the Domain Name was registered and used in bad faith. First, that a cursory Internet search at the time of registration of the Domain Name would have shown that Complainant had rights in Complainant’s Trade Marks. Secondly, that Respondent’s use of an anonymization service points towards bad faith registration. Taking this submission into account and under the particular circumstances as described above, the Panel concludes that the Domain Name was registered and used for the purpose of taking advantage of Complainant’s reputation and Complainant’s Trade Marks to misleadingly attract Internet users to webpages and to do so for profit. This amounts to bad faith conduct under the Policy. Complainant has therefore clearly established the third ground under 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 Domain Name, Clive Elliott QC
Filing
Sole Panelist
Date: June 25, 2021
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