The Complainant is Streamotion Pty Ltd, Australia, represented by Allens Linklaters, Australia.
The Respondent is Sahadat Hossain, Pakistan. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2021. On September 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 18, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 27, 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 amendment to the Complaint on September 30, 2021. The Center verified that the Complaint together with the amendment to 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 October 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2021. The Center appointed Olga Zalomiy as the sole panelist in this matter on November 10, 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 the owner and operator of a sports-streaming service in Australia. The Complainant owns the following trademark registrations: - Australian trademark registration No. 1949995 for the KAYO SPORTS trademark, registered on August 22, 2018; The Respondent registered the Domain Name on June 29, 2021. Currently, the Domain Name does not resolve to any active websites. At the time the Complaint was filed, the Domain Name resolved to a website that featured the KAYO and the KAYO SPORTS trademarks prominently in various forms throughout the website. The website at the Domain Name that replicated the Complainant’s website content and color scheme, offered purported subscriptions to the Complainant’s streaming services. Under the tab “About Kayo” on the website, the following information was provided: “Kayo is home to the biggest line-up of sports including all the big Aussie sports and the best from overseas.” 5. Parties’ Contentions A. Complainant The Complainant’s contentions can be summarized as follows: The Complainant contends that it is the owner and operator of a sports-streaming service in Australia, which is provided under the KAYO and KAYO SPORTS trademarks. The Complainant claims that the Domain Name, which incorporates the Complainant's KAYO trademark, is confusingly similar to the trademarks in which the Complainant has rights, because the Domain Name consists of the Complainant's trademark, KAYO SPORTS, with the additional descriptive word “live”. The Complainant contends that the Respondent has no rights or legitimate interest in the Domain Name because of the following circumstances: - The website located at the Domain Name displays content that replicates, is highly similar to, and/or links to the content displayed by the Complainant at its website; - The Respondent appears to be using the Domain Name to intentionally mislead Australian consumers into thinking that the Domain Name is associated with the Complainant's KAYO SPORTS streaming service and that subscriptions and memberships registered through the Domain Name are a legitimate way for consumers to access the Complainant's KAYO SPORTS streaming service when that is not the case. The Complainant contends that the Respondent registered and is using the Domain Name in bad faith because by using the Domain Name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website or other on-line 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 the Respondent’s website or location. The Complainant claims that the Respondent registered the Domain Name two and a half years after the Complainant's KAYO SPORTS streaming service was launched and after the Complainant had accrued a reputation in the KAYO SPORTS streaming service. The Complainant submits that the content of the website at the Domain Name is drawn directly from the Complainant's website and seeks to replicate the look and feel of the Complainant's website to mislead consumers into thinking that it is the Complainant's legitimate website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and Pursuant to paragraph 4(a)(i) of the UDRP, the Complainant must prove that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights. The submitted evidence shows that the Complainant owns several trademark registrations for the KAYO and KAYO SPORTS trademarks. Pursuant to section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), this satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”1 It is well-established that the applicable gTLD should be disregarded under the confusingly similarity test as a standard registration requirement.2 The Domain Name consists of the Complainant’s KAYO SPORTS trademark, the word “live” interposed between the words “KAYO” and “SPORTS” and the gTLD “.com”. Because the Complainant’s KAYO SPORTS trademark is recognizable within the Domain Name, the addition of the word “live” does not prevent a finding of confusing similarity. The gTLD “.com” is disregarded as a standard registration requirement. Therefore, the Domain Name is confusingly similar to the Complainant’s KAYO SPORTS trademark. The Complainant has satisfied the first element of the UDRP. B. Rights or Legitimate Interests To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under the UDRP, paragraph 4(c) include the following: (i) before any notice 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 The evidence on file shows that the Complainant has not licensed or permitted the Respondent to use the Complainant’s KAYO SPORTS or KAYO trademarks in domain names, or for any other purpose. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name. The evidence on file also shows that the Respondent has not been commonly known by the Domain Name because the Respondent’s name Sahadat Hossain is different from the Domain Name. The Respondent used the Domain Name to direct to a website in English that purported to look like a Complainant’s website. The website at the Domain Name prominently displayed the KAYO and the KAYO SPORTS trademarks, the Complainant website’s color scheme and content. Under the tab “About Kayo” on the website, it stated the following: “Kayo is home to the biggest line-up of sports including all the big Aussie sports and the best from overseas.” It appears likely that the Respondent attempted to obtain Internet users financial information by posing as the Complainant. The Panel finds that the Complainant has made out the prima facie case3 in respect of the lack of rights or legitimate interests of the Respondent and the burden of producing evidence demonstrating it has rights or legitimate interests in the Domain Name has shifted to the Respondent. The Respondent has failed to do so, thus, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the UDRP. C. Registered and Used in Bad Faith Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name was registered and is being used in bad faith. The UDRP establishes that, for purposes of paragraph 4(a)(iii), “bad faith” registration and use of a domain name can be established by a showing of circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation or endorsement of the respondent’s website or location, or of a product or service on the respondent’s website or location. See Policy, paragraph 4(b)(iv). Given the Respondent’s prior use of the Domain Name for a website attempting to look like a Complainant’s website, the Respondent could not plausibly assert that he was not aware of the Complainant’s rights in the KAYO and KAYO SPORTS trademarks. It is likely that the Respondent registered the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the Respondent’s website or location, or of a product or service on the Respondent’s website or location. By offering fake subscriptions to the Complainant’s services, it is likely that the Respondent used the Domain Name to obtain financial information of Internet users that could be used to steal money from potential customers, which is an indication of bad faith use of the Domain Name. Furthermore, prior UDRP panels have found that “the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.”4 Among factors indicating bad faith use of a domain name, the implausibility of any good faith use is relevant in this case. The Respondent’s prior use of the Domain Name for a website purportedly selling subscriptions to the Complainant’s streaming services makes any good faith use of the Domain Name implausible. Therefore, the Respondent is using the Domain Name in bad faith. The Complainant has satisfied the third element of the UDRP. 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 Olga Zalomiy 1 Section 1.8., WIPO Overview 3.0. 2 Section 1.11.1, WIPO Overview 3.0 3 Section 2.1, WIPO Overview 3.0. 4 Section 3.3, WIPO Overview 3.0.
- Australian trademark registration No. 2000335 for the KAYO trademark, registered from April 2, 2019; and
- Australian trademark registration No. 2000336 for the KAYO trademark, registered on April 2, 2019.
- The Respondent has no association with the Complainant and is not authorized to use its KAYO or KAYO SPORTS trademarks.
- The Complainant has never licensed or otherwise permitted or authorized the Respondent to use the KAYO or KAYO SPORTS trademarks.
(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. A. Identical or Confusingly Similar
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent 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.
Sole Panelist
Date: November 18, 2021
Full & Egal Universal Law Academy