WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

EUROSPORT v. Perfect Privacy, LLC / Euro sports media, Euro sports media

Case No. D2020-3171

1. The Parties

The Complainant is EUROSPORT, France, represented by Inlex IP Expertise, France.

The Respondent is Perfect Privacy, LLC, United States of America / euro sports media, euro sports media, Andorra.

2. The Domain Name and Registrar

The disputed domain name <eurosportsmedia.com> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2020. On November 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 2020, 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 26, 2020, 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 30, 2020.

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 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2020. The Center received an informal communication from a third-party on December 26, 2020.

The Center appointed Marilena Comanescu as the sole panelist in this matter on January 4, 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 French sports network founded in 1992 under the name Eurosport, which currently broadcasts sports contents in more than 75 countries and reaches 246 million cumulative subscribers worldwide through television channels and websites under the name Eurosport.

The Complainant holds several trademark registrations for EUROSPORT, as follows:

- the International trademark registration number 625873 for the mark EUROSPORT with figurative element, registered on October 26, 1994, and covering goods and services in Nice classes 09, 16, 25, 28, 35, 37, 38, 41; and

- the International trademark registration number 732747 for the word mark EUROSPORT, registered on February 24, 2000, and covering goods and services in Nice classes 09, 14, 16, 25, 28, 35, 38, 41 and 42.

The Complainant’s trademark EUROSPORT is well-known worldwide. See also Eurosport v. Bernd Bindreiter, WIPO Case No. D2018-2880; Eurosport v. Jakub Tomczyk, WIPO Case No. D2005-0496 and Eurosport v. Belize Domain WHOIS Service Lt, WIPO Case No. D2010-0077.

The Complainant’s main domain name <eurosport.com> was created on December 16, 1997 and has an average of 30 million unique Internet users per month. The Complainant also owns the domain name <eurosport.ru>.

The disputed domain name <eurosportsmedia.com> was registered on September 24, 2011.

According to evidence provided as Annexes 15, 16, 17 to Complaint, before commencing the present administrative proceeding, the disputed domain name was used by the second Respondent to send unsolicited commercial emails, including to the Complainant’s business partners.

After hearing about the second Respondent, the Complainant sent a cease and desist letter to it asking to cease from using the disputed domain name. After several emails, the Parties amicably agreed that the disputed domain name and the associated email addresses are made inactive. Also, the Complainant was told by the Respondent that the disputed domain name was in fact held by a third party, a phisical person located in the Russian Federation.

At the time of filing the Complaint, the disputed domain name was used to redirect Internet users on the Complainant’s own website available at <eurosport.ru> (Annex 12 to Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its well-known trademark EUROSPORT, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not submit a formal Response to the Complainant’s contentions. In an informal email communication of December 26, 2020 a third party presenting himself as the representative of the second Respondent argued the following:

- The disputed domain name is formed of generic words;
- The Complainant awaited seven years to bring the Complaint;
- Its business is different from Complainant’s own business, being a sports sponsorship business;
- There are many other similar domain names available for sale;
- It has “leased” the disputed domain name from a third party for eight years; and
- It has developed a business using email addresses corresponding to the disputed domain name and it would be difficult and costly to transfer the disputed domain name to the Complainant although the Respondent offered to perform such transfer to the Complainant.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:

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

The Panel will further analyze the potential concurrence of the above circumstances.

A. Preliminary discussion – late filing of the informal Response and identity of the Respondent

The Panel notes that the informal communication received on December 26, 2020 was submitted with a three-day delay from the due date for Response. This submission states that the disputed domain name was leased from a third party for eight years. The Complainant argued such late filing. The Panel notes that the email address for the submission of this communication is connected to the disputed domain name (but it is not coming from the registrant’s email address), and that the registrant’s name provided for the registration of the dispute domain name seems to be connected to the sender of this email communication. While it could be that the sender of this email communication is merely using the disputed domain name, the Panel finds this would not change the outcome of this proceeding, and the Panel notes that there is not any email communications coming from the registrant’s email address in this proceeding. In the circumstances of this case, the Panel finds appropriate to consider this email communication as coming from the Respondent.

Because the Panel must ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, as per its general powers listed in the paragraph 10 of the Rules, the Panel accepts the late informal submissions of the Respondent and proceeds to analyze this case on merits.

B. Identical or Confusingly Similar

The Complainant holds rights in the EUROSPORT trademark.

The disputed domain name <eurosportsmedia.com> reproduces the Complainant’s trademark EUROSPORT with an additional letter “s” and the dictionary term “media”. However, such additions do not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name.

Numerous UDRP panels have considered that the addition of other terms (whether descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. See section 1.8 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.com”, “.info”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.

Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark EUROSPORT, pursuant to the Policy, paragraph 4(a)(i).

C. Rights or Legitimate Interests

The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization to use the mark EUROSPORT, that the Respondent is not commonly known by the disputed domain name, and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.

Under the Policy, “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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0.

Under this element, the Respondent relies particularly of the fact that it conducts a legitimate business using the disputed domain name and that the disputed domain name is formed of dictionary words.

The WhoIs for the disputed domain name shows “euro sports media” as the registrant’s name and organization, but the Respondent failed to provide any evidence related to its purported business, and there is no content available on the website under the disputed domain name or other information, documents before the Panel to support such allegations. To the contrary, according to Annex 18 to Complaint, it appears that there is no company with the name of the second Respondent registered in the Andorran corporate registry, as listed in the WhoIs. Also, according to Annex 16 to Complaint, and unrebuted by the Respondent, the disputed domain name was used to send unsolicited commercial emails to third parties, in the field of sport events where the Complainant has a strong reputation. Further, the disputed domain name was redirected to the Complainant’s website, without its consent or control. These are definitely no activities falling under the circumstances listed by paragraph 4(c) demonstrating the Respondent’s rights or legitimate interests in the disputed domain name.

With regard to the domain names formed of dictionary terms, the majority view of previous UDRP panels, reflected in section 2.10.1 of the WIPO Overview 3.0., is that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; previous UDRP panels have held that in order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.

For example, a hypothetical respondent may well have a legitimate interest in the domain name <orange.com> if it uses the domain name for a website providing information about the fruit or the color orange. The same respondent would not however have a legitimate interest in the domain name if the corresponding website is aimed at goods or services that target a third-party trademark (in this example: Orange, well-known inter alia for telecommunications and Internet services) which uses the same term as a trademark in a non-dictionary sense.

Panels also tend to look at other factors such as the status and fame of the relevant mark and whether the respondent has registered and legitimately used other domain names containing dictionary words or phrases in connection with the respective dictionary meaning.

In this case the Respondent was using the disputed domain name in order to send unsolicited commercial communications related to sport events. In the same time, the Complainant has a strong reputation in the broadcast of sports content since at least 2005 (see Eurosport v. Jakub Tomczyk, supra).

In view of the above, the Panel accepts as more likely than not that the Respondent has chosen and registered the disputed domain name not in connection with any alleged dictionary meaning of it, but to take advantage of the reputation of the EUROSPORT trademark by creating a false connection with the Complainant in order to confuse the recipients of the unsolicited communications into believing there is a sort of connection between the Respondent and the Complainant.

For these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).

D. Registered and Used in Bad Faith

The Complainant has held trademark rights in EUROSPORT since at least 1994. This Panel accepts the Complainant’s submissions that EUROSPORT trademark is well-known worldwide.

The disputed domain name was created in 2011 and incorporates the Complainant’s mark in its entirety together with a dictionary term related to the Complainant’s business.

As discussed in section 6.C above, it is more likely than not that the Respondent has chosen and registered the disputed domain name which is not in connection with its alleged dictionary meaning, but because of its confusing similarity to the EUROSPORT trademark in an attempt to take advantage of the reputation of this trademark.

Before any notice of the dispute, the Respondent was using the disputed domain name in order to send unsolicited emails to third parties in connection with sponsorship of sports events. The Complainant’s trademark is well-known worldwide for more than fifteen years, particularly in relation to broadcasting of sports events. Thus, the services provided by the Respondent may be regarded as competing with the services of the Complainant and may cause disruptions of the Complainant’s business. Even if the Respondent was not considered as a direct competitor of the Complainant, the Panel notes that the notion of a “competitor” under the UDRP goes beyond the concept of an ordinary commercial or business competitor to also include the concept of “a person who acts in opposition to another” for some means of commercial gain, direct or otherwise. See section 3.1.3 of the WIPO Overview 3.0.

Previous UDRP panels have consistently held that the use of a domain name other than to host a website may constitute bad faith. Such purposes include sending email, phishing, or identity theft. See section 3.4 of the WIPO Overview 3.0.

After receiving the Complainant’s cease and desist letter, the Respondent redirected the disputed domain name to one of the Complainant’s official websites, without the Complainant’s approval or control.

The use of the disputed domain name to redirect the traffic to the Complainant’s official website also implies bad faith behaviour as there is a risk that the Respondent may at any time cause Internet traffic to redirect to a website that it is not that of, or associated with the Complainant and it may increase customer confusion that the disputed domain name is somehow endorsed or controlled by the Complainant. See also GameStop, Inc. v. Above.com Domain Privacy / Protection Domain, WIPO Case No. D2018-1243 and cases cited therein; and Ruby Life Inc. v. Domain Admin / Hulmiho Ukolen, Pavol Icik,WIPO Case No. D2019-1641.

Further, the Respondent registered the disputed domain name under a privacy service which, together with the other documents before the Panel may support a finding of bad faith. See section 3.6 of the WIPO Overview 3.0.

The Respondent also claimed that it is not the actual registrant of the disputed domain name, both to the Complainant’s letters sent before commencing the present proceeding, and in the informal communication sent to the Center. However, the details registered in the WhoIs, as provided by the Registrar, indicate the second named Respondent as being the current registrant of the disputed domain name.

It was consistently found by previous UDRP panels that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark constitutes, by itself, a presumption of bad faith registration for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0.

With regard to Respondent’s comments concerning the asseted delay in filing the Complaint, previous UDRP panels have widely recognised that the mere delay between the registration of a domain name and the filing of the complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. Panels have further more noted that trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse, nor to instantaneously enforce each such instance they may become aware of, particularly when cybersquatters face almost no (financial or practical) barriers to undertaking (multiple) domain name registrations. See section 4.17 of the WIPO Overview 3.0.

For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

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, <eurosportsmedia.com>, be transferred to the Complainant.

Marilena Comanescu
Sole Panelist
Date: January 11, 2021