ESPN, Inc. v. Omer Sharif / Flex Marketing Group
Claim Number: FA1902001831471
Complainant is ESPN, Inc. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is Omer Sharif / Flex Marketing Group (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <espn2tv.us>, <espn3hdtv.us>, <espn3itv.us>, <espn3mtv.us>, <espn3tv.us>, <espn3watch.us>, <espn4ktv.us>, <espn4tv.us>, <espnhd.us>, <espnhdtv.us>, <espniptv.us>, <espnlivetv.us>, <espnplus.us>, <tv5espn.us>, <watch3espn.us>, and <watchespn.us>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 26, 2019; the Forum received payment on February 27, 2019.
On February 27, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <espn2tv.us>, <espn3hdtv.us>, <espn3itv.us>, <espn3mtv.us>, <espn3tv.us>, <espn3watch.us>, <espn4ktv.us>, <espn4tv.us>, <espnhd.us>, <espnhdtv.us>, <espniptv.us>, <espnlivetv.us>, <espnplus.us>, <tv5espn.us>, <watch3espn.us>, and <watchespn.us> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On March 11, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@espn2tv.us, postmaster@espn3hdtv.us, postmaster@espn3itv.us, postmaster@espn3mtv.us, postmaster@espn3tv.us, postmaster@espn3watch.us, postmaster@espn4ktv.us, postmaster@espn4tv.us, postmaster@espnhd.us, postmaster@espnhdtv.us, postmaster@espniptv.us, postmaster@espnlivetv.us, postmaster@espnplus.us, postmaster@tv5espn.us, postmaster@watch3espn.us, and postmaster@watchespn.us. Also on March 11, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 1, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant originally launched as a television network in September 1979, and since then has offered sports coverage 24 hours a day. Today, Complainant is the world’s leading multinational, multimedia sports entertainment entity, featuring a broad portfolio of multimedia sports assets. Complainant has rights in the ESPN mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,345,096, registered June 25, 1985). Respondent’s disputed domain names are confusingly similar to Complainant’s mark as they each contain the entire ESPN mark and add generic/descriptive terms and random letters and/or numbers, such as “live,” “tv,” “5,” “3,” “2,” “hd,” “I,” “M,” “watch,” “4k,” “iptv,” and “plus.” Each domain name also adds the “.us” country code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the <espn2tv.us>, <espn4tv.us>, <espnhd.us>, <espnhdtv.us>, <espniptv.us>, <espnplus.us>, <watch3espn.us>, <watchespn.us>, and <tv5espn.us> domain names all resolve to an inactive webpage displaying an error message. Further, the <espn3hdtv.us>, <espn3itv.us>, <espn3watch.us>, <espn4ktv.us>, and <espnlivetv.us> domain names all redirect to websites that purport to stream live sports content, including content from competitors. Additionally, the <espn3mtv.us> and <espn3tv.us> domain names also resolve to websites that purport to allow users to access authentic and authorized ESPN content, however the websites actually link to malware.
Respondent registered and uses the disputed domain names in bad faith. Respondent uses the domain names to offer services in direct competition with those offered by Complainant. Further, Respondent registered the domain names with actual knowledge of Complainant’s ESPN mark given the fame of the mark along with Respondent’s use of the domain names to compete with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is ESPN, Inc., of Atlanta, Georgia, USA. Complainant is the owner of domestic and international registrations for the mark ESPN, which it has used continuously since at least as early as 1979, in connection with its provision of multinational multimedia sports programming.
Respondent is Omer Sharif / Flex Marketing Group (“Respondent”), of Comilla, Bangladesh. Respondent’s registrar’s address is listed as Phoenix, Arizona, USA.
The Panel note that Respondent registered the domain names on or about the following dates: <espn2tv.us> (October 10, 2018), <espn3hdtv.us> ( July 4, 2018), <espn3itv.us> (February 6, 2018), <espn3mtv.us> (June 30, 2018), <espn3tv.us> (June 30, 2018), <espn3watch.us> (July 4, 2018), <espn4ktv.us> (July 4, 2018), <espn4tv.us> (October 10, 2018), <espnhd.us> (May 22, 2018), <espnhdtv.us> (May 7, 2018), <espniptv.us> (October 10, 2018), <espnlivetv.us> (July 4, 2018), <espnplus.us> (May 9, 2018), <tv5espn.us> (July 31, 2018), <watch3espn.us> (July 4, 2018), and <watchespn.us> (May 9, 2018).
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the ESPN mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,345,096, registered June 25, 1985). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel here finds that Complainant has established rights in the ESPN mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s disputed domain names are confusingly similar to Complainant’s mark as they each contain the entire ESPN mark and add generic/descriptive terms and random letters and/or numbers, such as “live,” “tv,” “5,” “3,” “2,” “hd,” “I,” “M,” “watch,” “4k,” “iptv,” and “plus.” Complainant also argues that each domain name adds the “.us” ccTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”); see also Twentieth Century Fox Film Corporation v Domain Admin / PrivacyProtect.org / Denis Ferulev, FA 1652313 (Forum Jan. 19, 2016) (“Complainant notes that the domain name contains the recognised acronym for its FAMILY GUY mark, along with the number ‘24’ … the Panel finds that the <fg24.biz> domain name is confusingly similar to the FAMILY GUY mark under Policy ¶ 4(a)(i).”).; see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). The Panel here finds that the disputed domain names are confusingly similar to the ESPN mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the infringing domain names, as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS identifies “Omer Sharif / Flex Marketing Group” as the registrant for all of the domain names, and nothing in the record indicates that Complainant authorized Respondent to use the mark for any purpose. The Panel here finds that Respondent is not commonly known by the at-issue domain names under Policy ¶ 4(c)(ii).
Further, Complainant argues that the <espn2tv.us>, <espn4tv.us>, <espnhd.us>, <espnhdtv.us>, <espniptv.us>, <espnplus.us>, <watch3espn.us>, <watchespn.us>, and <tv5espn.us> domain names all resolve to an inactive webpage displaying an error message. Failure to make active use of a confusingly similar domain name can evince a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides a screenshot of the resolving webpages associated with the domain names, all of which either display no content or the message “404 Not Found” or “This site can’t be reached.” The Panel here finds that Respondent fails to make use of the nine domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Additionally, Complainant argues the <espn3hdtv.us>, <espn3itv.us>, <espn3watch.us>, <espn4ktv.us>, and <espnlivetv.us> domain names all redirect to websites that purport to stream live sports content, including content from competitors. Using a confusingly similar domain name to compete with a complainant can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Complainant provides a screenshot of the resolving webpages for the five domain names, which appear to display content relating to sports streaming associated with ESPN, NBC Sports, or with Honkmedia. The Panel here finds that Respondent’s competing use of the domain names provides evidence of Respondent’s lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and/or (iii).
Complainant further asserts that the <espn3mtv.us> and <espn3tv.us> domain names also resolve to websites that purport to allow users to access authentic and authorized ESPN content, however the websites actually link to malware. Using a domain name in connection with malware can indicate a lack of rights and legitimate interests in a domain name under Policy ¶¶ 4(c)(i) and (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Complainant provides various screenshots of the resolving webpage, which display links relating to sports. Complainant also provides a screenshot of the warning message associated with the links displayed on the webpage. The Panel finds that Respondent’s use of the domain names to distribute malware does not amount to any bona fide offering of goods or services or a legitimate noncommercial or fair use under this Policy.
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant claims that Respondent uses the domain names to offer services in direct competition with those offered by Complainant. Using a confusingly similar domain name to offer competing services can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). The Panel again notes that Complainant provides screenshots of the resolving webpages for the <espn3hdtv.us>, <espn3itv.us>, <espn3watch.us>, <espn4ktv.us>, and <espnlivetv.us> domain names, which appear to display content relating to sports streaming associated with ESPN, NBC Sports, or with Honkmedia. Complainant also provided screenshots of the webpages associated with the <espn3mtv.us> and <espn3tv.us> domain names, which initially display links relating to sports. The Panel here finds that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the ESPN mark at the time of registering the infringing domain names. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant contends that Respondent’s knowledge can be inferred given the fame of the mark along with Respondent’s use of the domain names to compete with Complainant. The Panel finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <espn2tv.us>, <espn3hdtv.us>, <espn3itv.us>, <espn3mtv.us>, <espn3tv.us>, <espn3watch.us>, <espn4ktv.us>, <espn4tv.us>, <espnhd.us>, <espnhdtv.us>, <espniptv.us>, <espnlivetv.us>, <espnplus.us>, <tv5espn.us>, <watch3espn.us>, and <watchespn.us> domain names be TRANSFERRED from Respondent to Complainant
Darryl C. Wilson, Panelist
Dated: April 15, 2019
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