beIN Media Group LLC v Salah Sabili

WIPO Case No. D2024-2292

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

beIN Media Group LLC v. Salah Sabili

Case No. D2024-2292

1. The Parties

The Complainant is beIN Media Group LLC, Qatar, represented by TMark Conseils, France.

The Respondent is Salah Sabili, Morocco.

2. The Domain Name and Registrar

The disputed domain name <beinsportslive.com> is registered with Namecheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2024. On
June 5, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On June 5, 2024, 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 (Redacted for Privacy, Privacy service provided by Withheld for
Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the
Complainant on June 6, 2024, 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 June 11, 2024.

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 the due date for Response was July 3, 2024. The Respondent sent email communications to the Center on June 27, 2024, July 5, 2024 and on July 8, 2024. On July 8, 2024, the Complainant requested a suspension of the proceedings. On July 16, 2024, the Center notified both parties of the suspension of the proceedings. Despite numerous reminders from the Complainant, the suspension did not result in voluntary transfer of the disputed domain name to the Complainant. Consequently, the proceedings were reinstated on September 9,

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The Center appointed David Taylor as the sole panelist in this matter on September 18, 2024. 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

First established in 2003 under the Al Jazeera Sport trade name, the Complainant is a Qatar-based media group engaged in the broadcasting of major sports events and entertainment. The Complainant offers subscriptions to television channels, websites, and mobile applications in its broadcasting territories, which include over 40 countries across Asia, Australasia, Europe, the Middle East and North Africa, and North America.

The Complainant is the owner of trademark registrations for BEIN and BEIN SPORT, including the following:

- Moroccan Trademark Registration No. 142622, BEIN, registered on February 7, 2012;

- Moroccan Trademark Registration No. 142623, BEIN SPORT, registered on February 7, 2012

- European Union Trade Mark No. 010617058, BEIN, registered on June 15, 2012; and

- International Trademark Registration No. 1195099, BEIN SPORT (figurative), registered on October
14, 2013, designating Algeria, Bahrain, Egypt, the European Union, Iran (Islamic Republic of),
Morocco, Oman, and Sudan.

The Complainant is also the registrant of a number of domain names comprising its trademarks, including
<beinsports.com>, which resolves to a public-facing website displaying sports content provided by the
Complainant.

The disputed domain name was registered on April 4, 2024. The Complainant has included screen captures as annexes to the Complaint that show that the disputed domain name previously resolved to a website in Arabic that provided information about sports, including sports news and information regarding upcoming sporting events, with a particular focus on football (the “Respondent’s website”). The Respondent’s website made use of the same purple and white color scheme used by the Complainant on its official website and featured a variation of the Complainant’s figurative BEIN SPORT trademark in its header and as a favicon. At the time of this decision, the disputed domain name no longer resolves to an active web page.

5. Parties’ Contentions
A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

The Complainant asserts rights in the BEIN and BEIN SPORT trademarks. The Complainant submits that the disputed domain name is confusingly similar to its trademarks.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent has received no license to use the Complainant’s trademarks, is not commonly known by any name corresponding to the disputed domain name. The Complainant argues the Respondent has sought to take advantage of the Complainant’s trademarks by attracting Internet users to its website in order to obtain an offer for purchase of the disputed domain name from the Complainant. The Complainant asserts that the Respondent’s use of the disputed domain name in connection with a website displaying sports-related content does not establish rights or legitimate interests.

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The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that its BEIN and BEIN SPORT trademarks are well known and exclusively associated with the Complainant, and that the Respondent was well aware of the Complainant’s trademarks at the time that the disputed domain name was registered. The Complainant submits that the Respondent’s use of the disputed domain name, to resolve to a website displaying sports-related content, creates the erroneous

impression that the Respondent’s website is operated by or affiliated with the Complainant. The Complainant, thereby disrupting the Complainant’s business. The Complainant observes that Mail Exchange records have been configured for the disputed domain name and submits that the disputed domain name may be used for sending and receiving emails in a manner that could mislead unsuspecting Internet users.

The Complainant requests transfer of the disputed domain name.

B. Respondent

In an email communication to the Center dated June 27, 2024, the Respondent wrote:

“I have received messages via e-mail and home mail regarding the site’s domain name beinsportslive.com. I
searched and found the domain available and I purchased it, but I did not know that the domain had
intellectual property rights. Knowing that I had no bad intentions in using it, I have no problem transferring

the domain name to you.”

On July 5, 2024, the Respondent wrote:

“hello I am ready to submit the waiver on the website. Please contact me as soon as possible. Thank you”

On July 9, 2024, the Respondent wrote:

“I hereby confirm that I wish to reach an amicable agreement with the Respondent [sic]”

6. Discussion and Findings
6.1. Procedural Matter: The Respondent’s Consent to Remedy

Where parties to a UDRP proceeding have not been able to settle their dispute prior to the issuance of a panel decision using the “standard settlement process” described in paragraph 17 of the Rules, but where the respondent has nevertheless given its consent on the record to the transfer remedy sought by the

complainant, many panels will order the requested remedy solely on the basis of such consent. In such cases, the panel gives effect to an understood party agreement as to the disposition of their case (whether by virtue of deemed admission, or on a no-fault basis).

In some cases, despite such respondent consent, a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits. Scenarios in which a panel may find it appropriate to do so include (i) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, or (ii) where there is ambiguity as to the scope of the respondent’s consent. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.10.

In the present case, the Panel notes that the Respondent did express its willingness to transfer the disputed domain name to the Complainant, at the same time denying bad faith registration of the disputed domain name. The suspension of the proceeding did not result in transfer of the disputed domain name, due to the failure of the Respondent to participate in the settlement process.

In the surrounding circumstances, the Panel considers it appropriate to proceed to a decision on the merits.

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6.2. Substantive Matters

In order to prevail the Complainant must demonstrate on the balance of probabilities that it has satisfied the requirements of paragraph 4(a) of the Policy:

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

(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

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of the trademarks BEIN and BEIN SPORT for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The disputed domain name comprises the Complainant’s BEIN trademark as its leading element, as well as a variation of the Complainant’s BEIN SPORT trademark, here “beinsports”, followed by the term “live”. The Panel finds that the Complainant’s trademarks are recognizable in the disputed domain name, and that the disputed domain name is confusingly similar to the Complainant’s marks. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here “live” may bear on assessment of the second and third elements, the Panel finds the addition of such a term does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant

evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.

As noted above, the Respondent’s website made use of a similar color scheme as that used by the Complainant, included a variant of the Complainant’s figurative trademark in its header and as a favicon, and provided information regarding sports including sports news and information regarding upcoming sporting events, with a particular focus on football. The Respondent has, in effect, been holding itself out as the Complainant. There is no evidence of any prior business relationship between the Parties, nor has the Respondent been granted any authorization for the use of the Complainant’s trademarks. Internet users who arrived at the Respondent’s website were likely to be misled into believing that they had arrived at a website operated by or otherwise affiliated with the Complainant. Such use of the disputed domain name does not amount to a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy.

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The Respondent has been identified as “Salah Sabili”, whose name bears no resemblance to the disputed domain name. There is no other evidence to support a finding that the Respondent is commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. Nor is the Respondent making legitimate noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy. Indeed, the Panel finds that the composition of the disputed domain name is such that it carries a risk of implied affiliation with the Complainant, which does not support a finding of fair use.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

As noted above, the Respondent has sought to create confusion with the Complainant by operating a website offering sports-related content while making active use of the Complainant’s trademarks. It is clear from the nature of the Respondent’s website that Respondent was well aware of the Complainant and its trademarks when registering the disputed domain name and did so with a view to creating a misleading impression of association between the disputed domain name and the Complainant’s trademarks. The Panel finds that the disputed domain name was registered in bad faith.

The Panel further finds that by using the disputed domain name, as described above, the Respondent has effectively sought to impersonate the Complainant. Prior UDRP panels have held that given that the use of a domain name for per se illegitimate activity such as impersonation can never confer rights or legitimate

interests on a respondent, such behavior is manifestly considered evidence of bad faith. The Panel finds that the disputed domain name has been used by the Respondent in bad faith. The fact that the disputed domain name no longer resolves to an active web page does not materially affect the Panel’s conclusions in this regard.

The Panel finds that the Complainant has established the third element of the Policy.

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 <beinsportslive.com> be transferred to the Complainant.

/David Taylor/ David Taylor Sole Panelist Date: October 2. 2024