The Complainant is beIN Media Group LLC, Qatar, represented by Tmark Conseils, France.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Cranck YOYO, stream7hd, Morocco.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2021. On July 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 August 3, 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 August 5, 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 August 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2021. Aside from four informal communications, the Respondent did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on August 31, 2021.
The Center appointed Daniel Peña as the sole panelist in this matter on September 8, 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 BackgroundThe Complainant is a Qatari media group known for streaming sporting events and entertainment.
Created in 2003 under the “Al Jazeera Sport” trade name, the Complainant rebranded to “beIN SPORTS” in 2012.
The Complainant has registered the trademarks BEIN, BEIN SPORTS, and BEIN SPORT in many jurisdictions. For example, the Complainant owns the following registrations:
- Saudi Arabia registration No. 1438018368 for the trademark BEIN SPORTS filed on May 4, 2017;
- Saudi Arabia registration No. 1438018375 for the trademark BEIN (device mark) filed on May 4, 2017;
- United States of America (“United States”) registration No. 5273645 for the trademark BEIN SPORTS registered on August 29, 2017;
- Kuwaiti registration No. 138647 for the trademark BEIN SPORTS registered on August 4, 2014;
- European Union registration No. 010617082 for the trademark BEIN SPORT registered on May 24, 2013; and
- United States registration No. 5066623 for the trademark BEIN SPORT registered on October 24, 2016.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark.
The Complainant’s trademark BEIN is well-known as established by UDRP panels.
The Complainant owns a number of domain names comprising its trademarks.
The disputed domain name is almost identical to the Complainant’s trademark BEIN SPORT, trade name and domain names.
The disputed domain name consists of the words “bein”, “live” and “4u”.
The Top-Level Domain “.com” should generally be ignored when assessing confusing similarity as established by prior UDRP decisions.
The disputed domain name shows a clear visual, phonetical and conceptual similarity with 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. Specifically, the Respondent uses the same logo and color on the website attached to the disputed domain name as the one actually used by the Complainant on its genuine website.
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 interests 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 is used to promote sports programs. The Respondent is also using a sign that is highly similar to the Complainant’s trademark.
B. RespondentThe Respondent did not formally reply to the Complainant’s contentions. The Respondent sent various email communications to the Center asking about the proceeding, and stating that the website at the disputed domain name was no longer working.
6. Discussion and FindingsTo succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. The Respondent’s incorporation of the Complainant’s trademark in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s marks. Mere addition of the dictionary word “live” as well as the combination of the letter and number “4u” in the disputed domain name does not prevent a finding of confusing similarity with the Complainant’s marks. Furthermore, the addition of the gTLD “.com” is not sufficient to prevent the confusing similarity either.
The Panel is satisfied that the disputed domain name is confusingly similar to the Complainant’s mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsPursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth.
Refraining from submitting any formal Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name.
The Complainant claims that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner.
The Respondent did not submit a formal Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
Furthermore, the disputed domain name resolves to the Respondent’s website with a content and signs similar to the Complaints services. Such use for deliberately attracting Internet users to its website in the mistaken belief that it is a website of the Complainant, or otherwise linked to or authorized by the Complainant, supports a finding that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
In the Panel’s view, a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the Respondent must have been aware of the Complainant’s trademark BEIN as it includes in its website content similar to the Complainant’s services. Furthermore, the use of the descriptive terms “live” “4u” in the disputed domain name, which refers to the Complainant’s activities, particularly the term “live”, along with the Complainant’s trademark BEIN indicates that the Respondent was aware of the Complainant at the time it registered the disputed domain name.
The disputed domain name resolves to a website, which seems to offer content similar to 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. As such, the disputed domain name suggests affiliation with the Complainant in order to attract Internet users 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).
Thus, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
7. DecisionFor 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
Daniel Peña
Sole Panelist
Date: September 22, 2021