WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
beIN Media Group LLC v. Privacy Service Provided by Withheld for Privacy ehf / Abderrahmane Boufim
Case No. D2021-3959
1. The Parties
The Complainant is beIN Media Group LLC, Qatar, represented by Tmark Conseils, France.
The Respondent is Privacy Service Provided by Withheld for Privacy ehf / Abderrahmane Boufim, Morocco.
2. The Domain Name and Registrar
The disputed domain name <bein-live.net> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2021. On November 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 2021, 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 November 29, 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 November 29, 2021. The Respondent sent the Center an informal email on November 29, 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 December 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2022. Pursuant to paragraph 6 of the Rules, on January 13, 2022, the Center informed the Parties that it would proceed with panel appointment.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on January 27, 2022. 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 created in 2003 under the Al Jazeera Sport trade name, becoming beIN Sports in 2012. The Complainant is leader in the international media market, particularly for broadcasting of major sport events and entertainment, which offers subscriptions to TV channels, websites and mobile apps in its broadcasting territories in the Middle East, North Africa, Europe, South East Asia, Australasia (Australia and New Zeland) and North America (United States of America and Canada).
The Complainant is the owner of numerous trademark registrations for or that include the word “bein”, including the following:
European Union Trademark Registration No. 010617058 BEIN, registered on June 15, 2012, in classes 9, 16, 35, 38, and 41;
European Union Trademark Registration No. 010617082 BEIN SPORTS, registered on February 6, 2012, in classes 9, 16, 35, 38, and 41;
United States of America Trademark Registration No. 5273645 BEIN SPORTS, registered on January 23, 2015, in classes 9, 16, 18, 21, 24, 25, 28, 35, 38, 41, and 43;
OAPI Trademark Registration No. M81603 BEIN, registered on November 19, 2014, in classes 9, 16, 18, 21, 24, 25, and 28.
The Complainant also owns the domain names <beinsports.com> registered on October 7, 2010, and <beinmediagroup.com.fr> registered on June 21, 2014, which resolve to its main websites, and others such as: < bein.net>, <bein.team>, <beinsports.team>, among many more which include the word “bein”.
The disputed domain name was registered on November 11, 2019, and resolves to a website that is dedicated to live broadcasting of sport games, especially football, both in Arabic and English languages.
5. Parties’ Contentions
The Complainant contends that its trademarks BEIN and BEIN SPORT, including the domain name family, are well known in the world and that consumers consider BEIN as a famous trademark related exclusively to the Complainant’s activities and products.
The Complainant claims that the disputed domain name is confusingly similar with the trademark BEIN in which the Complainant has rights and that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.
More specifically, at the time of registration of the disputed domain name on November 11, 2019, the Respondent was not known as “Bein” and had no trademark to justify the registration of the disputed domain name, whereas the Complainant has long standing rights in the trademarks BEIN which predate the registration of the disputed domain name.
While the registration of the BEIN mark was not authorized by the Complainant, the registration of the disputed domain name is destined to create a confusion for worldwide Internet users.
The disputed domain name points directly to the website “www.m.bein-live.net”, which is used as a webpage with sport -football- related content including reproduction of BEIN trademarks. Moreover, the Respondent’s website refers to another sports channel that is competing with the Complainant namely BT SPORT (Annex 3).
The Respondent selected the disputed domain name with the intention to take advantage of the Complainant’s reputation by registering a domain name fully containing the Complainant’s trademark and trade name with the intent to attract Internet users for commercial gain.
Finally, the Complainant requests the Panel to issue a decision ordering that the disputed domain name be transferred to the Complainant.
The Respondent failed to answer the Complainant’s contentions and, as indicated above, sent an informal email to the Center on November 29, 2021, which expressed a lack of awareness of the dispute and the nature of the dispute. Following, the Center proceeded with the commencement of this administrative proceeding, providing the Respondent with the Complaint. No further communications were received from the Respondent.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
The Panel considers that the disputed domain name is confusingly similar with the Complainant’s BEIN trademark.
The disputed domain name incorporates the Complainant’s trademark BEIN in its entirety, with the addition of the word “live” separated by a hyphen, which does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.
The “.net” generic Top-Level Domain (“gTLD”) is viewed as a standard registration requirement and is generally disregarded under the first element confusing similarity test, as set forth in section 1.11 of WIPO Overview 3.0.
Accordingly, the Panel finds that the disputed domain name is confusingly similar with the BEIN trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.
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, 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
(ii) the respondent has been commonly known by the domain name, even if it 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.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The disputed domain name resolves to a website that is dedicated to live broadcasting of sport games, especially football, which directly competes with the Complainant`s activities.
There is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests therein. Moreover, the name of the Respondent does not resemble the disputed domain name in any manner.
Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other element to prove that the Respondent has legitimate interests or that it has established rights in the disputed domain name.
Likewise, and as further discussed under section 6.C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name – which is confusingly similar with the Complainant’s trademark BEIN – but rather that it intends to use the disputed domain name for the purpose of deriving unfair monitory advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name relates is a site associated with the Complainant.
As established in section 2.5 of WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry”.
As indicated in paragraph 6.A above, the disputed domain name is confusingly similar with the Complainant’s trademark BEIN and the Respondent is not using the disputed domain name in any way that may be considered fair use. Moreover, the addition of the term “live” is descriptive of the streaming and live-broadcasting services offered by the Complainant, suggesting endorsement or sponsorship by the Complainant, which is contrary to the fact.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not substantively responded to the Complainant’s contentions and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent must have been aware of the Complainant’s trademark BEIN mentioned in paragraph 4 above (Factual Background) when it registered the disputed domain name on November 11, 2019.
The Complainant has submitted evidence to support its claim that the trademarks mentioned in paragraph 4 above are widely known and were registered and used many years before the Respondent registered the disputed domain name.
Likewise, the Respondent registered the disputed domain name many years after the Complainant registered and used its large family of “bein” domain names, which are used to promote the Complainant’s goods and services.
The Respondent when registering the disputed domain name on November 19, 2019, has targeted the Complainant’s famous trademark BEIN by adding the descriptive word “live” which simply indicates that the website provides live content in relation to football and other sports with the intention to confuse Internet users and capitalize on the fame of the Complainant’s name and trademark for its own monetary benefit.
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0).
The Panel finds that the Respondent has registered and uses the disputed domain intentionally to attempt to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s famous and widely used BEIN trademark as to the source, sponsorship, affiliation, or endorsement. This amounts to bad faith under paragraph 4(b)(iv) 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 <bein-live.net> be transferred to the Complainant.
Miguel B. O’Farrell
Date: February 7, 2022