WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Eurosport v. Bernd Bindreiter

Case No. D2018-2880

1. The Parties

The Complainant is Eurosport of Issy-les-Moulineaux, France, represented by Inlex IP Expertise, France.

The Respondent is Bernd Bindreiter of Marchtrenk, Austria, self-represented.

2. The Domain Name and Registrar

The disputed domain name <eurosportplayer.app> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2018. On December 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 December 21, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center received two email communications from the Respondent but no formal response. The Complainant filed an amended Complaint on December 21, 2018.

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 January 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2019. The Respondent submitted an email communication on December 21, 2018. On January 24, 2019, the Center notified the Parties that it would proceed to panel appointment.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on February 7, 2019. 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 French sports network founded in 1992 under the name EUROSPORT, which broadcasts sports contents in more than 50 countries. The Complainant’s online content is available in 16 websites, and a free mobile application.

The Complainant holds among others, the following trademark registrations:

Also, the Complainant holds several domains name registrations, including the following:

- <eurosportplayer.com>, registered on February 15, 2007;

- <eurosportplayer.fr>, registered on March 9, 2007.

The disputed domain name was registered on May 9, 2018. The website to which the disputed domain name resolves is inactive.

5. Parties’ Contentions

A. Complainant

The Complainant states the following:

(i) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights:

That the Complainant is the owner of trademark registrations for EUROSPORT, which cover products and services related to sports broadcasting.

That the Complainant is a well-known television sports network channel that makes available different official websites including the one to which the domain name <eurosportplayer.fr> resolves.

That the disputed domain name is identical to the Complainant’s trademark EUROSPORT, and that the addition of the term “player” fails to distinguish the disputed domain name from said trademark. That the term “player” refers to a descriptive accessory of the dominant element EUROSPORT, which reinforces the link between the Complainant’s trademark and the disputed domain name.

That the arguments of the Respondent stating that the Complainant does not own a trademark registration for EUROSPORTPLAYER are irrelevant.

That the inclusion of the generic Top-Level Domain (“gTLD”) “.app” does not prevent the disputed domain name from being identical or confusingly similar to the Complainant’s trademark EUROSPORT.

That the Second-Level Domain (“SLD”) “eurosportplayer” of the disputed domain name is identical to SLD of the Complainant’s domain names <eurosportplayer.com> and <eurosportplayer.fr>.

That the addition of the generic Top-Level Domain (“gTLD”) “.app” does not prevent the disputed domain name from being identical or confusingly similar to the Complainant’s trademark and domain names, as the disputed domain name may be perceived as referring to mobile applications associated to the Complainant.

(ii) The Respondent has no rights or legitimate interests in the disputed domain name:

That the Respondent has no rights or legitimate interests in the disputed domain name. That the Respondent has no relationship to the Complainant of any nature, and that it has not been authorized by the Complainant to use the trademark EUROSPORT.

That the Respondent is not commonly known by the disputed domain name, nor acts on behalf of a company with a name composed of the trademark EUROSPORT.

That the Respondent is not making a legitimate, noncommercial, or fair use of the disputed domain name, as it is inactive.

That even when the Complainant did not register the disputed domain name during the Sunrise period, such omission did not grant to the Respondent any legitimate interests to register the disputed domain name.

That in his communication dated December 21, 2018, the Respondent did not prove to have any rights to the disputed domain name, but merely argued that it is his decision not to use the disputed domain name, and that said disputed domain name does not violate the Complainant’s trademark rights.

(iii) Registration and Use in Bad Faith:

That it is unlikely that the Respondent was unaware of the Complainant’s trademark EUROSPORT and the Complainant’s activities at the time of registration of the disputed domain name, since the Complainant’s trademark EUROSPORT is well-known, especially in Europe.

That the notoriety of the EUROSPORT trademark in several countries is evidenced by the number of the countries and languages in which the EUROSPORT channels are broadcasted and made available to millions of viewers through the Complainant’s channels, websites and mobile application.

That the registration of the disputed domain name cannot be coincidental as it reproduces the name of the Complainant’s dedicated media network, and two of the Complainant’s domain names.

That the Respondent has intentionally attempted to attract Internet users for commercial gain, and to create confusion in the mind of the consumers, as they might associate the Respondent’s website with the Complainant’s websites and mobile application.

That the passive holding to which the disputed domain name has been subject cannot be considered a legitimate, noncommercial or fair use.

That the disputed domain name disrupts the business of, and causes harm to the trademark of the Complainant, because consumers who are exposed to the disputed domain name and find that it is inactive, may incorrectly believe that the Complainant’s website is not functioning.

That the Complainant took several measures to reach a settlement with the Respondent, but that the informal communication of the Respondent constitutes further proof of bad faith.

B. Respondent

The Respondent did not submit a formal Response. In his informal email communications of December 21, 2018, the Respondent argued the following:

That the Complainant does not own any trademark registration for EUROSPORTPLAYER.

That the Respondent acquired the disputed domain name after the expiration of a Sunrise period that ended in 2018, during which the Complainant did not claim it.

That it is the Respondent’s prerogative to maintain the disputed domain name inactive, as long as he does not violate the Complainant’s trademarks.

That the Respondent did not have any notice of the Complainant’s attempts to settle this matter.

That the Respondent would like to start a dialogue with the Complainant.

6. Discussion and Findings

Preliminary discussion

As a preliminary matter, the Panel will analyze the Respondent’s allegation about the Complainant not having claimed the disputed domain name during the Sunrise period regarding the gTLD “.app”,

This Panel considers that the Complainant had no obligation to claim rights during the Sunrise period, and thus the fact that the Complainant did not do so is irrelevant in the present proceeding.

To succeed in this Complaint, the Complainant must prove that the three elements set forth in Paragraph 4(a) of the Policy have been met:

(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 with respect to the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has proven to be the owner of registrations for the trademark EUROSPORT in several jurisdictions, particularly in Europe, where the Respondent is domiciled.

The disputed domain name <eurosportplayer.app> is confusingly similar to the Complainant’s trademark EUROSPORT, as it includes said trademark in its entirety.

The addition of the term “player” to the trademark EUROSPORT in the disputed domain name <eurosportplayer.app> targets the Complainant, which operates its business in connection to the broadcasting and making available of sports contents (see Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale, WIPO Case No. D2005-0755; Wal-Mart Stores, Inc. v. Walsucks & Walmarket Puerto Rico, WIPO Case No. D2000-0477; and Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615).

The addition of the gTLD “.app” to the disputed domain name is irrelevant and immaterial for the purposes of assessing confusing similarity with the Complainant’s trademark EUROSPORT (see SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services, WIPO Case No. D2015-0565, and The Johns Hopkins University (“JHU”), The Johns Hopkins Health System Corporation (“JHHS”), Johns Hopkins Medicine International, L.L.C. (“JHI”) v. Marketing Express, WIPO Case No. D2013-0148).

The first requirement of the Policy has been met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, the use by the respondent 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 (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.

The Complainant argues that it has not licensed or authorized the Respondent to use the trademark EUROSPORT. This allegation has not been contested by the Respondent.

The disputed domain name resolves to an inactive website. In its informal email communications submitted to the Center, the Respondent argued that it is its prerogative not to use the disputed domain name. However, the Respondent did not submit evidence of use or preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

The Respondent has not proven to have been commonly known by the disputed domain name.

Consequently, there is no evidence in the docket showing that the Respondent could have chosen or used the disputed domain name in a legitimate manner, or that the Respondent has any rights or legitimate interests in the disputed domain name. The simple registration of a domain name is not sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy (see SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092).

Since the Respondent has not proven to have rights or legitimate interests in the disputed domain name, the second element of the Policy has been met.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, without limitation, shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location.

The Complainant has filed enough evidence to support its allegation that the trademark EUROSPORT is well-known as found by previous panels (see Eurosport v. Jakub Tomczyk, WIPO Case No. D2005-0496, and Eurosport v. Belize Domain WHOIS Service Lt, WIPO Case No. D2010-0077).

Previous panels have held that the use and/or registration of a domain name which is evidently connected with a well-known trademark, by someone with no connection with said trademark, suggests opportunistic bad faith (see Sanofi-aventis, Aventis Inc. v. Hostmaster, Domain Park Limited, WIPO Case No. D2007-1641).

The mere fact that a trademark owner has not exercised the preferential registration of its trademark as a domain name under the Sunrise period of the gTLD “.app”, does not preclude the Panel from finding a bad faith registration and use of the disputed domain name (see Virgin Enterprises Limited v. Cesar Alvarez, WIPO Case No. D2016-2140).

In the Respondent’s email communications sent to the Center, the Respondent did not explain why it chose to entirely incorporate the Complainant’s renowned and widely used trademark EUROSPORT in the disputed domain name, especially taking into account that as a result of the registration of said trademark by the Complainant internationally and in Europe, where the Respondent lives, the Respondent had constructive notice of such registration when it obtained the disputed domain name (see Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, supra). This fact leads to a presumption of bad faith registration of the disputed domain name.

Also, the disputed domain name <eurosportplayer.app> is almost identical to the Complainant’s domain names <eurosportplayer.com> and <eurosportplayer.fr>, as the SLD “eurosportplayer” is identical in these three domain names.

The evidence submitted by the Complainant shows that the disputed domain name <eurosportplayer.app> resolves to an inactive webpage. According to section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Polaroid Corporation v. Jay Strommen, WIPO Case No. D2005-1005).

The case file shows that: (i) the Complainant’s trademark is well-known and has a strong reputation worldwide and in Europe, where the Respondent is domiciled; (ii) the Respondent has provided no evidence to prove an actual or contemplated bona fide use of the disputed domain name; and (iii) the Respondent has not provided any evidence or convincing arguments explaining why it entirely incorporated in the disputed domain name the Complainant’s well-known trademark EUROSPORT, which has a widespread exposure and public recognition internationally. These facts are enough to support a finding of passive holding, and therefore of bad faith registration and use of the disputed domain name (see Virgin Enterprises Limited v. Cesar Alvarez, supra).

The Panel concludes that it is not feasible to consider that the Respondent, at the time of the registration of the disputed domain name, could not have been aware of the Complainant’s trademark, as well as that the adoption of the expression “eurosportplayer” together with the gTLD extension “.app” could be a mere coincidence (see Virgin Enterprises Limited v. Cesar Alvarez, supra).

The third element of the Policy has been met.

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 <eurosportplayer.app> be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Date: February 26, 2019