WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
beIN Media Group LLC v. Ayoub Daibouch
Case No. D2021-2483
1. The Parties
The Complainant is beIN Media Group LLC, Qatar, represented by Tmark Conseils, France.
The Respondent is Ayoub Daibouch, Morocco.
2. The Domain Name and Registrar(s)
The disputed domain name <beinlive4u.net> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2021. On August 3, 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 4, 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 one informal communication, the Respondent did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on September 1, 2021.
The Center appointed Taras Kyslyy 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 Background
The Complainant is a media group registered under the Qatari law. The Complainant was created in 2003 under the Al Jazeera Sport trade name, and since then has developed its business becoming beIN Sport in 2012. The Complainant is particularly known for broadcasting of major sport events and entertainment. The Complainant offers subscriptions to TV channels, websites, and mobile apps in its broadcasting territories, which comprise countries in the Middle East and North Africa (including Qatar, Saudi Arabia, United Arab Emirates (the), Bahrain, Kuwait, Egypt, Algeria, Tunisia, and Morocco), Europe, South East Asia (including Thailand, Indonesia, Singapore and Malaysia), Australasia (Australia and New Zealand), North America (United States of America and Canada) and Turkey.
The Complainant owns numerous registrations of its BEIN trademark in various jurisdictions, including for instance, Morocco trademark No. 142622 registered on February 7, 2012.
The Complainant owns numerous domain names featuring its BEIN trademark. The main ones are <beinsports.com> and <beinmediagroup.com>.
The disputed domain name was registered on August 29, 2018 and resolved to a website with sports related content available in Arabic and English languages. It was dedicated to live broadcasting of sport games and specifically for football. At the time of the decision the disputed domain name does not resolve to any active website.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the earlier Complainant’s trademark in its entirety. The Respondent’s use of the Complainant’s trademark when followed by the word “live” and by the number and letter combination “4u” only serves to exacerbate, rather than diminish, the confusion between the disputed domain name and the Complainant’s trademark. The addition of the term “live” acts to describe that it will provide live content in relation to football. Concerning the other term “4u”, which is a common shorthand for the words “for you”, its addition immediately after the word “live” only enhances, rather than lessens, the risk of confusing similarity by inviting the relevant public to follow the matches live. The addition of the generic Top-Level Domain (“gTLD”) “.net” does not diminish the confusing similarity and cannot serve to distinguish the disputed domain name from the Complainant’s trademark.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent was not known by the disputed domain name and has no trademark to justify the registration of the disputed domain name, whereas the Complainant has long standing rights in its trademark which predate the registration of the disputed domain name. The Complainant never authorized the registration of the disputed domain name featuring its well-known trademark. There appears to be no legitimate reason why the Respondent would incorporate the Complainant’s well-known trademark in the disputed domain name. The Respondent seeks to take advantage of the notoriety and prestige of the Complainant’s trademark, products and activities. The Respondent has acquired the disputed domain name in order to sell it to the Complainant or to a third party. The initial use of the disputed domain name includes sport content – namely activities that the Complainant’s trademarks are reputed for – and it is not fair use of the disputed domain name and at least does not establish rights or legitimate interests.
The disputed domain name was registered and is being used in bad faith. Given the distinctiveness and the notoriety of the Complainant’s marks and activities it is reasonable to infer that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademark and for the purpose of attracting, for commercial gain, Internet users. The Respondent uses the disputed domain name to attract Internet users on its own competitive website, which also features links to competitive websites, paid services and pornographic sites. The Respondent’s registration and use of the disputed domain name in connection with sexual material can tarnish the Complainant and its trademark. The use of the Complainant’s trademark both in the disputed domain name and on the website is destined to make the Internet users believing that it is an official website of the Complainant or that there is a partnership with the Complainant.
The Respondent did not formally reply to the Complainant’s contentions. In its email communication of August 6, 2021, the Respondent stated that it does not have any website.
6. Discussion and Findings
A. Identical or Confusingly Similar
According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards gTLD “.net” for the purposes of the confusing similarity test.
According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. In the present case the disputed domain name incorporates the entirety of the Complainant’s trademark.
According to section 1.8 of the WIPO Overview 3.0 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. The Panel finds that in the present case the addition of “live4u” does not prevent finding of the confusing similarity.
Considering the above the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
Furthermore, the Respondent provided no evidence that it holds rights or legitimate interests in the disputed domain name.
The Respondent is not commonly known by the disputed domain name, which could demonstrate its rights or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones, TheDotCafe/ Victoria McCann / Robert Hope, WIPO Case No. D2008-0642).
The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, and noting the composition of the disputed domain name, no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPOCase No. D2014-1875).
The disputed domain name used to redirect Internet users to a website with a logo similar to the Complainant’s, offering services similar to the Complainant’s presumably to make the Internet users believe that they actually accessed the website owned or authorized by the Complainant. Past UDRP panels confirmed that such actions prove the registrant has no rights or legitimate interests in a disputed domain name (see Daniel C. Marino, Jr. v. Video Images Productions / Edgar Carrillo / Greg Rice, WIPO Case No. D2000-0598, Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211).
The disputed domain name incorporates the BEIN trademark of the Complainant in its entirety. Since BEIN is a well-known trademark, and the disputed domain name was associated with the website offering services similar to the Complainant’s, the Panel finds that the Respondent must have been aware of the BEIN trademark when it registered the disputed domain name, and that it chose to target the BEIN trademark because of the likelihood that it will attract traffic to the Respondent’s website. In the Panel’s view, such conduct cannot be regarded as giving rise to rights or legitimate interests on the part of the Respondent to register and use the disputed domain name (see, e.g., LEGO Juris A/S v. Andrei Novakovich, WIPO Case No. D2016-1513).
The Respondent has no right or legitimate interests in the disputed domain name which resolves to an inactive website at the time of the Complaint review (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore, WIPO Case No. D2016-1302).
Noting the risk of implied affiliation between the disputed domain name and the well-known trademark of the Complainant, the Panel finds that there is no plausible fair use to which the disputed domain name could be put that would not have the effect of being somehow connected to the Complainant (see, e.g., Instagram, LLC v. Super Privacy Service LTD c/o Dynadot / Zayed, WIPO Case No. D2019-2897).
Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
According to section 3.1.4 of the WIPO Overview 3.0 the mere registration of a domain name that is identical or confusingly similar to a well-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in Qatar and internationally. Thus, the Panel finds that the disputed domain name confusingly similar to the Complainant’s trademark was registered in bad faith.
According to paragraph 4(b)(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: 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. In this case, the disputed domain name was resolving to a website featuring the Complainant’s trademark and making a false impression it is owned or authorized by the Complainant, to intentionally attract Internet users by creating likelihood of confusion with the Complainant’s trademark as to the source of the website and its services. The Panel finds the above confirms the disputed domain name was registered and used in bad faith.
Although at the time of this decision the disputed domain name resolves to inactive webpage, its previous bad faith use and lack of explanation of possible good faith use from the Respondent makes any good faith use of the disputed domain name implausible. Thus, the current passive holding of the disputed domain name does not prevent a finding of bad faith (see, e.g., Abbott Diabetes Care Inc. v. Privacy Protection, Hosting Ukraaine LLC / Виталий Броцман (Vitalii Brocman), WIPO Case No. DPW2017-0003).
Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) 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 name <beinlive4u.net> be transferred to the Complainant.
Date: September 22, 2021