The Complainant is Eurosport, France, represented by Inlex IP Expertise, France.
The Respondents are Domain Admin, Whois Privacy Corp., Bahamas, and Kindred France, Malta, internally represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2021. On May 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 10, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent, Domain Admin, Whois Privacy Corp., 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 Respondents of the Complaint, and the proceedings commenced on May 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2021. On May 26, 2021, the Center received an email communication from the Respondent Kindred France requesting for an extension of the Response due date. The Center notified the Parties on May 27, 2021 that the due date for Response was June 7, 2021. The Respondent Kindred France filed a Response with the Center on June 7, 2021. The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 14, 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. On June 15, 2021, the Complainant submitted a Supplemental Filing by email to the Center, replying to the argument by the Respondent Kindred France that the Complaint should be dismissed for lack of a proper party Respondent. 4. Factual Background The Complainant is a simplified joint-stock company established under French law and headquartered in Issy-les-Moulineaux, France. The Complainant’s pan-European television sports network channel “Eurosport” was launched via European satellites in 1989 and is now viewed by 246 million subscribers across 75 countries in Europe, Asia Pacific, Africa, and the Middle East. The Complainant’s website at “www.eurosport.com” (in operation since 1997) is Europe’s leading online sports news website with an average of 30 million unique users per month, and its Eurosport Player (launched in 2008) is the only European-wide sports streaming service over the Internet, available in 52 markets and in 14 languages. The Complainant holds several EUROSPORT trademark registrations, including those listed below, and figurative marks with the textual element EUROSPORT BET, as follows: MARK JURISDICTION REGISTRATION NUMBER REGISTRATION DATE EUROSPORT International Trademark (multiple country designations) 626733 November 14, 1994 EUROSPORT International Trademark (multiple country designations) 732747 February 24, 2000 EUROSPORT BET European Union 008172661 August 25, 2011 EUROSPORT BET (figurative) European Union 008172603 November 13, 2011 The Complainant originally owned the Domain Name and registered the figurative marks listed above with the corresponding textual element EUROSPORT BET. Both were used in the context of a 2011 license agreement with a French company then called SPS to facilitate online gambling on sporting events presented over the Complainant’s media. As shown by official records attached to the Complaint, SPS changed its name to Kindred France in 2017. The license agreement ended in 2014. It may be inferred that the Complainant allowed its registration of the Domain Name to lapse. The Registrar reports that the Domain Name was registered on March 27, 2016, in the name of the domain privacy service identified as the Respondent Domain Admin, Whois Privacy Corp. The privacy service has neither expressed an interest in the Domain Name nor identified the beneficial owner. The Complainant surmises from events that it is Kindred France or a related party. Kindred France was ultimately notified of this proceeding, filed a Response, and named as a Respondent. Screenshots attached to the Complaint or recorded by the Internet Archive’s Wayback Machine show that the Domain Name redirected to an online sports gambling website operated by Unibet. The Panel notes that Unibet is part of the Kindred Group (which includes Kindred France), according to the official websites of both entities at “www.unibet.com” and “www.kindredgroup.com”, respectively. In 2020, the website displayed the Complainant’s earlier EUROSPORT BET logo, a figurative trademark featuring the words “EUROSPORT BET”. At the time of this Decision, the Domain Name redirects to a similar sports gambling website operated by Unibet and headed “UKSportsBet”. When the Complainant became aware of the use of the Domain Name in 2020 to redirect visitors to a gambling website at “www.unibet.co.uk”, the Complainant contacted SPS, its former partner. Writing on behalf of SPS Betting France Limited, on “Kindred” letterhead, an executive of the Kindred Group responded in part as follows on July 17, 2020: “After research, we can confirm to you that we are not the owner of the domain name ‘eurosportbet.com’. In subsequent correspondence, the Kindred executive declined to identify the “affiliate” in question but reported that Kindred had terminated its commercial relationship with the affiliate. In the current proceeding, Kindred France contacted the Center by email, furnished its contact details, requested an extension of time to file a Response, and ultimately submitted a Response to the Complaint in this proceeding. 5. Parties’ Contentions A. Complainant The Complainant asserts that the Domain Name is identical or confusingly similar to its registered EUROSPORT and EUROSPORT BET trademarks, and that any licensed rights or legitimate interests that the Respondent Kindred France had with respect to those marks terminated when the SPS license agreement ended in 2014, three years before the relevant registration of the Domain Name. The Complainant observes that the EUROSPORT mark is well known, and the website associated with the Domain Name for some time displayed one of the Complainant’s former logo “EUROSPORT”, clearly revealing an intent to exploit the Complainant’s reputation. Moreover, the websites to which the Domain Name has resolved or redirected are operated by companies affiliated with the Respondent Kindred France. The Respondent has not taken effective measures to prevent this continuing misdirection of Internet users for commercial gain, which amounts to bad faith under the Policy. B. Respondent Kindred France submitted a Response and is therefore referred to as a Respondent. Its status as a party is discussed further below. The Respondent Kindred France does not deny knowledge of the Complainant’s mark or its own connection with Unibet, which has been operating websites to which the Domain Name resolves. The Respondent Kindred France offers no explanation for the former display of one of the Complainant’s marks on one of those websites. The Respondent argues instead that it is not responsible for the Domain Name because it is not the registrant, not is any company in the Kindred Group. According to the Respondent, when its executive referred in the letter of July 17, 2020 to an “affiliate” as being responsible for the Domain Name, he did not mean a corporate affiliate that is “part of the Kindred Group” but a member of Kindred’s “affiliate program”. The Respondent states that it contacted that person concerning the Complainant’s demands but declines to identify the person, citing the European Union General Data Protection Regulation. In addition, according to the Respondent, it has terminated the affiliation agreement with that person in February 2021. The Respondent suggests that the Complainant should have been able to identify the registrant through the Registrar and that the Complaint should be dismissed because the true registrant has not been identified. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. 6.1. Preliminary Matter: Identification of Respondent, Supplemental Filing The Response argues that the Complaint should be dismissed, or the Complainant should be obliged to amend the Complaint, because the Complainant has not identified a proper Respondent party. The Complainant submitted a Supplemental Filing on this point. The Panel has discretion to request or accept supplemental filings (see Rules paragraphs 10 and 12), and UDRP panels have done so to allow parties to address new or unanticipated relevant evidence and arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6. The Panel accepts the Complainant’s Supplemental Filing in this case for the limited purpose of assessing the Respondent’s argument for dismissal. The Policy defines “you” or “your” to refer to “the domain-name holder” (see Policy, Note 3). Paragraph 1 of the Rules defines the “respondent” in a UDRP proceeding as “the holder of a domain name registration against which a complaint is initiated”. As confirmed by the Registrar, Domain Admin, WhoIs Privacy Corp. is the current holder of the Domain Name registration and is named as a Respondent. Thus, this proceeding was properly initiated against the Respondent Domain Admin, WhoIs Privacy Corp. In cases involving a domain privacy service, particularly if the privacy service is connected to the Registrar, it is customary for the Registrar providing the service, on receiving notice of a UDRP complaint, to identify the underlying or beneficial registrant, whose name is then substituted or added as a respondent. See Rules 4(b), and WIPO Overview 3.0, section 4.4. “In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.” WIPO Overview 3.0, section 4.4.5. UDRP panels have added as respondents the underlying registrants or the persons found to be controlling them. See id., section 4.4.2. As the panel reasoned in The Royal Bank of Scotland Group plc v. Reserved Bench of Strategic Geographers / Domain ID Shield Service,WIPO Case No. D2012-1733, “the ‘Respondent’ must be the person or entity whose potential rights or legitimate interests in the disputed domain name, registration, and alleged bad faith are at stake”. But where that stakeholder seeks to avoid accountability under the registration agreement, and the domain privacy service abets this evasion by refusing to identify the underlying registrant, some UDRP panels also have held the domain privacy service responsible for the underlying registrant’s conduct, pointing to paragraph 3.7.7.3 of the ICANN Registrar Accreditation Agreement. “[This] states that a WhoIs-listed registrant (referred to as the ‘Registered Name Holder’) accepts liability for any use of the relevant domain name unless it timely discloses the contact information of any underlying beneficial registrant.” WIPO Overview 3.0 section 4.4.6. The Panel in this proceeding adopts this rationale. The Respondent Domain Admin, WhoIs Privacy Corp. shares an address with the Registrar, and the Registrar acts as a reseller of its services, according to the WhoIs Privacy Service Agreement. Domain Admin, WhoIs Privacy Corp. remains the registrant of record for the Domain Name. It has not asked to be dismissed from this proceeding. It has not disclosed the underlying registrant, and under the ICANN Registrar Accreditation Agreement, it remains liable for use of the Domain Name. Therefore, the Panel denies the Respondent’s request to dismiss the proceeding or require amendment of the Complaint. Domain Admin, WhoIs Privacy Corp. will continue as a party Respondent in this proceeding. Kindred France is named as a Respondent in the first instance because it has filed a Response, although it does not address the substantive issues of the Complaint but only seeks to dismiss the Complaint on the grounds that the final controller or “true registrant” of the Domain Names is not identified. However, the Panel notes that the identity of the final controller is information that is not necessarily within the knowledge of the Complainant. In addition, the operator of the online gambling websites associated with the Domain Name, Unibet, is indisputably a part of the Kindred Group. Moreover, Kindred France stated that the undisclosed registrant of the Domain Name was its “affiliate” or, as later described, a member of its “affiliate program”. These facts indicate that Kindred France has interests in the Domain Name and benefits from its use (even if indirectly). Thus, it will continue to be treated as a party Respondent in this proceeding. A. Identical or Confusingly Similar The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7. The Complainant holds registered EUROSPORT and EUROSPORT BET trademarks. The Domain Name incorporates these marks in their entirety (omitting the space between “eurosport” and “bet”, which cannot be included in the DNS address system). As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See id. section 1.11.1. The Panel concludes that the first Policy element is established on these facts. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following: (i) before any notice to it of the dispute, the 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the 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. Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights, the lack of permission to use its mark at the time of the Domain Name registration, and the use of the Domain Names only for online gambling websites, in some instances displaying the Complainant’s trademarked logo and falsely implying an association with the Complainant. This suggests trademark abuse, not evidence of a “bona fide” commercial activity. Therefore, the burden shifts to the Respondents to produce evidence of rights or legitimate interests. The Respondents have not done so. The Panel concludes, therefore, that the Complainant prevails on the second element of the Policy. C. Registered and Used in Bad Faith The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name): “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” The record is consistent with this example of bad faith. The Complainant’s EUROSPORT mark is well known, as recognized by earlier UDRP panels. See, e.g., Eurosport v. Bernd Bindreiter,WIPO Case No. D2018-2880. The Respondent Kindred France (formerly known as SPS) was previously licensed to use the Complainant’s EUROSPORT and EUROSPORT BET marks in an online gambling venture, but that license expired before the Domain Name was registered by an undisclosed “affiliate” of the Respondent Kindred France (or a member of its “affiliate program”) and was put to commercial use by a corporate affiliate of Kindred France, Unibet, for online sports gambling websites not sanctioned or associated with the Complainant. Irrespective of the identity of the final controller of the Domain Names, the Panel notes that the false association with the Complainant was reinforced for a time by placing the Complainant’s former EUROSPORT BET logo on a website to which the Domain Name redirected. The Respondents’ conduct in concealing the identity of the actual Domain Name registrant, even in the context of this dispute, must also be considered an indication of bad faith. See WIPO Overview 3.0, section 3.6. The Respondent Kindred France suggests that the Complainant or the Center should be faulted for not attempting to notify the underlying registrant using one of the email addresses that appeared on a website linked to the Domain Name. This is disingenuous. Kindred France is affiliated with Unibet. Kindred France was, in fact, informed of this proceeding and was granted an extension to file a Response, after refusing to identify the underlying registrant. The domain privacy service was also notified and declined to identify the underlying registrant or submit a Response on its own behalf. Also, the Center has notified the Complaint via the online contact form at the website “uksportbet.co.uk” that is linked to the Domain Name. The interested parties have been given an opportunity to advance legitimate reasons for choosing a Domain Name that incorporates the Complainant’s trademarks and displays one of the Complainant’s trademarked logo on an associated website. They have not done so. The inference of bad faith registration and use for commercial gain is well grounded. The Panel concludes on this record that the Complainant has established bad faith in the registration and use of the Domain Name. 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, W. Scott Blackmer
(word mark)
(word mark)
(figurative)
We cannot confirm the materiality of the facts. Indeed, we do not directly use the domain name ‘eurosportbet.com’. However, it turned out that it could be used by one of our affiliates and we contacted them in this regard.
Besides, we did not reproduce any of your registered trademark nor use your former logo.”
Sole Panelist
Date: June 24, 2021
Full & Egal Universal Law Academy