WIPO Arbitration and Mediation Center
Alternative Dispute Resolution Proceeding
Case No. DSE2017-0035
The Petitioner is beIN Media Group LLC of Qatar, represented by Tmark Conseils, France.
2. Domain Holder
The Domain Holder is Host Master, PrivActually Ltd, of Cyprus.
3. Domain Name and Procedural History
This Alternative Dispute Resolution proceeding relates to the domain name <beoutq.se>.
This Petition was filed under the Terms and Conditions of registration (the “.se Policy”) and the Instructions governing Alternative Dispute Resolution proceeding for domain names in the top-level domain .se (the “.se Rules”).
The WIPO Arbitration and Mediation Center (“the Center”) verified that the Petition satisfied the formal requirements of the .se Policy and the .se Rules. In accordance with Section 13 of the .se Rules, the Center formally notified the Domain Holder of the Petition on December 12, 2017. The Domain Holder did not submit any response and, accordingly, the Center notified the Domain Holder’s default on January 12, 2018. The Respondent sent an email communication to the Center on January 30, 2018, and the Center subsequently sent an email to the Parties on February 1, 2018, with information on how to proceed should they wish to settle the case. The Respondent sent a second email to the Center on February 5, 2018. The Parties were not able to settle and accordingly, on February 8, 2018, the Center informed the Parties that it would proceed to appoint the Arbitrator.
The Center appointed Peter Hedberg as the sole Arbitrator in this matter on February 15, 2018. The Arbitrator has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Section 1 of the .se Rules.
The Arbitrator issued an Arbitrator Procedural Order on March 6, 2018, which was transmitted to the Parties on the same day, requesting the Domain Holder to clarify its intention behind the email communication of January 30, 2018, by stating whether it was willing to transfer the domain name <beoutq.se> to the Petitioner without any kind of condition. The Domain Holder responded to this request on March 16, 2018, by stating:
“We do not want to transfer the domain beoutq.se (standing for Be Out Quit) since we don’t believe it violate their trademark and the domain is not in use.”
4. Factual Background
The Petitioner is a Qatari limited liability company within the business of media and broadcasting services of sports events and entertainment. For its business, the Petitioner has registered and uses the trademark BEIN, and variations thereof within the same “trademark family”. The trademarks are registered in various jurisdictions, including the European Union, with the earliest registration dating back to 2012.
The Domain Holder is the registrant for the domain name <beoutq.se> (the “Domain Name”), which was registered on August 1, 2017.
The Domain Holder has been served with the Petition for an alternative dispute resolution and been invited to respond, but has not submitted a formal response.
The Petitioner has claimed the transfer of the Domain Name to the Petitioner.
The Domain Holder has opposed the Petitioner’s claim.
6. Parties’ Contentions
The Petitioner is a worldwide well-known media group and an international leader in the media market. The Petitioner’s business includes broadcasting of major sports events and the Petitioner holds various exclusive TV rights to multiple major internationally recognized sports events across its broadcasting territories.
The Petitioner owns numerous trademark registrations with the term BEIN in several jurisdictions, and holds several domain names, under different top levels, containing the term “bein”.
The Domain Name is used for pirate broadcasting services, which re-transmits the Petitioner’s television channels without authorization.
The Domain Name is confusingly similar to the Petitioner’s trademarks consisting of or containing the word “bein”, as the Domain Name consists of the initial part, “be”, of the Petitioner’s registered rights, and the opposite of the term “in”, being “out”, and the added letter “q”. The Domain Holder has chosen to use “out” for the reason to be deceptively similar to the Petitioner’s well-known trademarks. The letter “q” is commonly used as an identifier of a television subscription product or a referral to the “Q-Box Android” which is a service provided by Q-Streaming Box.
The Domain Name has been registered in bad faith. The Petitioner’s trademarks are well-known and consumers consider the trademark BEIN as a prestigious trademark related only to the Petitioner’s activities and products. The Domain Holder is clearly aware of the Petitioner’s activities and seeks to appropriate the Petitioner’s copyright and trademarks. The Domain Holder is taking advantage of the confusion and possible link or association between the Domain Name and the Petitioner’s prior trademark rights.
The Domain Holder unlawfully uses the Petitioner’s channels and is imitating the Petitioner’s trademarks and uses the Domain Name to infringe the Petitioner’s rights related to broadcasting of sports events.
Access to the website has been “geolocked”, meaning that only users with an IP-address in Saudi Arabia or Bahrain may access the website. The Domain Holder has registered the Doman Name under the Swedish top level “.se” in bad faith and with the purpose of trying to prevent any contestation from other parties, or to establish a geographic link between the Domain Name, the user, the Domain Holder and the offered counterfeit products/services.
The Domain Holder does not have a right or legitimate interest in respect of the Domain Name. The Domain Holder holds no registered trademark right to justify the registration of the Domain Name, and the Petitioner’s trademark registrations pre-date the registration of the Domain Name.
B. Domain Holder
The Domain Holder sent two emails to the Center with the following text:
If we want to suspend the domain in question and close this case how can we proceed?
Kind regards, Oliver”
“Can you please explain.”
7. Discussion and Findings
In accordance with Section 7.2 of the .se Policy, a domain name may be deregistered or transferred to the petitioner if the domain name
- is identical or similar to e.g., a distinguishing product feature, a distinguishing business feature, which is legally binding in Sweden and to which the petitioner can prove its rights,
- the domain name has been registered or used in bad faith, and
- the domain holder has no rights or justified interest.
The three prerequisites are cumulative, meaning that all of them must be met in order for a deregistration or transfer to be possible.
A. The Domain Name is identical or similar to a name which is legally binding in Sweden and to which the Petitioner can prove its rights
The Petitioner has proven that it is the registered owner of five trademarks containing the element BEIN which are legally binding in Sweden. However, the referred to trademark registrations have not been proven to be identical or similar to the Domain Name.
It should be noted in this regard that the examination made under the Alternative Dispute Resolution is not equivalent to intellectual property infringement assessments available through other institutions, such as courts and other administrative authorities.
Given that the first prerequisite is not met, there is no need to examine bad faith or rights and justified interests.
The Domain Name shall not be transferred to the Petitioner.
The Petitioner is the holder of EU trademark registrations consisting of or containing BEIN. However, these rights have not been proven to be identical with or similar to the Domain Name.
Date: March 20, 2018