WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DAZN Limited. v. Alex Till
Case No. D2021-1551
1. The Parties
Complainant is DAZN Limited., United Kingdom, represented by SafeNames Ltd., United Kingdom.
Respondent is Alex Till, Germany.
2. The Domain Names and Registrar
The disputed domain names <dazn.bet> and <daznbet.com> are registered with GoDaddy.com, LLC
GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2021. On May 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 20, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 21, 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 May 21, 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 June 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2021. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on June 22, 2021.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on July 2, 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 operates an Internet sports subscription video streaming service under the DAZN mark. It is the proprietor of trademark registrations in several jurisdictions, including the following:
- Australian trademark No. 1892692 for DAZN (word mark), registered on December 8, 2016, for goods and services in classes 9, 38 and 41;
- International trademark No. 1335316 for DAZN (word mark), registered on March 2, 2016, for goods and services in classes 9, 16, 35, 36, 38, 41, 42, 45;
- International trademark No. 1318196 for DAZN (device mark), registered on March 2, 2016, for goods and services in classes 9, 16, 35, 36, 38, 41, 42, 45; and
- United States of America Trademark No. 5264263 for DAZN (word mark), registered on August 16, 2017, for goods and services in classes 9, 38 and 41.
Complainant operates websites at the domain names <dazn.com>, <dazn.fr>, <dazn.us>, <dazn.de> and others.
The disputed domain names were registered on October 17, 2018. They currently resolve to sites featuring pay-per-click links.
The record contains a copy of Complainant’s cease-and-desist letter dated April 13, 2021. The record does not contain Respondent’s response thereto.
5. Parties’ Contentions
Complainant’s contentions may be summarized as follows:
Complainant states that it was founded in 2015. Since 2016, Complainant operates a global Internet sports subscription video streaming service operating across a multitude of digital platforms. Initially focused on boxing, Complainant’s service offers a monthly subscription by which users can enjoy a multitude of sporting events such as UFC, soccer, American football and others. The service is available on several platforms and has become popular internationally. As of 2019, Complainant’s service had 8 million monthly subscribers. Complainant has registered the DAZN trademark and several domain names containing the mark DAZN. Additionally, Complainant has established a strong social media presence.
Under the first element, Complainant states that it has registered the DAZN trademark in numerous jurisdictions. The disputed domain name <dazn.bet> is identical to Complainant’s registered trademarks. The disputed domain name <daznbet.com> is confusingly similar to Complainants DAZN mark, which it contains in its entirety, with the addition of the descriptive term “bet.”
Under the second element, Complainant states that Respondent has not registered any marks containing DAZN and is not commonly known by this name. Complainant has not granted permission to Respondent to use its mark. The disputed domain names are used on parking sites and were chosen to divert Internet users seeking information about Complainant.
Under the third element, Complainant states that it had established rights in the DAZN mark prior to the registration of the disputed domain name. The DAZN mark is fanciful and was deliberately chosen by Respondent. The disputed domain names have never resolved to active websites but have only been used for pay-per-click sites.
Complainant requests transfer of the disputed domain names.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) Respondent has registered and is using the disputed domain names 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.”
A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the DAZN mark through trademark registrations in Australia, the United States and internationally. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
In comparing Complainant’s DAZN mark with the disputed domain names, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark. The disputed domain name <dazn.bet> is identical to Complainant’s DAZN mark. The disputed domain name <daznbet.com> is confusingly similar to Complainant’s DAZN mark, which is recognizable within the disputed domain name, with the addition of the dictionary term “bet.” It is the consensus view of UDRP panels that where a domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark. Moreover, 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. See WIPO Overview 3.0, sections 1.7 and 1.8.
It is the well-established view of UDRP panels that the generic Top-Level Domains (“gTLDs”) “.com” and “.bet” are viewed as a standard registration requirement and as such are disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, 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) respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) 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.
The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain names or is using the DAZN mark with the permission of Complainant. The nature of the disputed domain names cannot constitute fair use since they effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See, for example, Iflscience Limited v. Domains By Proxy LLC / Dr Chauncey Siemens, WIPO Case No. D2016-0909; B&B Hotels v. WhoisGuard Protected, WhoisGuard, Inc. / Soro Wonna, WIPO Case No. D2020-2837.
The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names.
Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.
Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. The circumstances of the case, in particular, the use of the disputed domain names for pay-per-click websites, prevent the inference of rights nor legitimate interests on the part of Respondent. There is no evidence that Respondent is known by the disputed domain names. Rather, the disputed domain names are used to redirect to pay-per-click websites. It is well-established that such use does not establish rights or legitimate interests. See, e.g., Harpo, Inc. and Oprah’s Farm, LLC v. Robert McDaniel, WIPO Case No. D2013-0585; The Knot, Inc. v. In Knot We Trust Ltd, WIPO Case No. D2006-0350; and Get Away Today.com., Inc. v. Warren Gilbert, WIPO Case No. DCO2010-0021. See also WIPO Overview 3.0, section 2.4, and cases cited thereunder.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) respondent has registered the disputed 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 respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or location or of a product or service on respondent’s website or location.
The Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain names. Complainant has provided evidence of registered trademark rights in the DAZN mark that predate the registration of the disputed domain names. Complainant contends, and Respondent has not denied, that the DAZN mark was in use for several years, and indeed registered as a trademark, prior to the registration of the disputed domain names. Respondent has not challenged Complainant’s assertion that the mark is fanciful, and the Panel concurs that the mark is at least distinctive, as the sign DAZN does not appear to have a meaning. It is unlikely that Respondent chose these domain names randomly. The selection of the “.bet” gTLD and the addition of the dictionary term “bet” indicate that Respondent aimed to create an association with sports betting.
The disputed domain names contain Complainant’s DAZN mark in an unaltered form, indicating bad faith on the part of Respondent. The use of the disputed domain names to redirect to pay-per-click websites is further evidence of bad faith. Respondent has provided no evidence of actual or contemplated good-faith use of the disputed domain names. See, for instance, Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.
The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy.
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 names <dazn.bet> and <daznbet.com> be transferred to Complainant.
Date: July 15, 2021