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Eurosport v. Jakub Tomczyk [2005] GENDND 1309 (12 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Eurosport v. Jakub Tomczyk

Case No. D2005-0496

1. The Parties

The Complainant is Eurosport, C/O Mladen Singer, of Issy-les-Moulineaux, France, of France, represented by Inlex Conseil, France.

The Respondent is Jakub Tomczyk, of Gdansk, Poland.

2. The Domain Names and Registrar

The disputed domain names <eurosport2.net> and <eurosport2.org> are registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2005. On May 6, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain names at issue. On May 9, 2005, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2005.

The Center appointed Arne Ringnes as the Sole Panelist in this matter on June 20, 2005. 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 the French company Eurosport which is a limited company broadcasting the sports television channels Eurosport, Eurosport News and Eurosport 2. It also operates the website “www.eurosport.com” and “www.eurosportnews.com”.

The Eurosport television channel is available in 54 European countries, reaching over 95 million homes and 250 million viewers. The Eurosport channel is available with commentaries in 19 languages. According to a study of the European Media Marketing, Eurosport is watched by over 6 million viewers every week at a European level and has the best notoriety rate in Europe with 85 % of the viewers.

The channel Eurosport 2 was launched on January 10, 2005. The launching of the channel was made public at the end of 2004.

The trademark EUROSPORT has been registered in several countries, nationally as well as at a European community and international level. By way of example, EUROSPORT is registered as follows in France:

- Trademark EUROSPORT n° 93 462 249 dated April 1, 1993

- Trademark EUROSPORT n° 98 752 858 dated October 6, 1998

- Trademark EUROSPORT n° 99 809 801 dated August 30, 1999

- Trademark EUROSPORT n° 02 3 157 297 dated April 3, 2002

- Trademark EUROSPORT and device n° 92 424 874 dated June 30, 1992

- Trademark EUROSPORT and device n° 1 456 589 dated March 16, 1988

- Trademark EUROSPORT and device n° 94 522 730 dated June 1, 1994.

Further, EUROSPORT is registered as Community trademark No.°001 293 067 dated August 30, 1999.

Still further, the following International Trademarks designates Poland:

- Trademark EUROSPORT n° 626 733 dated November 14, 1994

- Trademark EUROSPORT n° 732 747 dated February 24, 2000

- Trademark EUROSPORT n° 792 366 dated October 8, 2002

- Trademark EUROSPORT and device n° 625 873 dated October 26, 1994.

On January 6 and 7, 2005, the Respondent registered the domain names <eurosport2.net> and <eurosport2.org>. The domain names were consequently registered only a few days a days prior to the launching of the Eurosport 2 channel.

EUROSPORT has been registered as a trademark in Poland since 1994. The Polish version of Eurosport was launched in 1996, and the Eurosport channel is available with Polish commentaries. The Eurosport channel reaches almost 5 out of 13 million households in Poland. Eurosport 2 reaches approximately 1 million viewers.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the domain names <eurosport2.net> and <eurosport2.org> are identical or confusingly similar to the EUROSPORT trademark.

The domain names registered by the Respondent are identical to the Complainant’s trademarks EUROSPORT except that they add the generic top level domain net and org as well as the figure 2. Complainant argues that these differences are not sufficient to avoid confusions between EUROSPORT and the registered domain names, as EUROSPORT remains the most distinctive and preponderant element. The Complainant is also pointing to the fact that “eurosport2” corresponds to an existing television channel launched by the Complainant.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain names, as the EUROSPORT trademark enjoys a wide notoriety in Europe and the Respondent could not have ignored the existence of the EUROSPORT trademark when he registered the disputed domain names. Neither has the Complainant authorized or consented to the use of the domain names by the Respondent, and there is no relationship between the Complainant and the Respondent.

Finally, the domain names were registered and are being used in bad faith, as EUROSPORT is a well known trademark in Europe in general and in Poland in particular. The trademark has been extensively used and is well known for European average consumers.

The bad faith is illustrated by the time of the registration, three days prior to the launching of the Eurosport 2 channel, which is not a coincidence.

The Complainant also alleges that the use made by the Respondent of the concerned domain names confirms that they are registered and used in bad faith, as the websites attached to the disputed domain names deal with sport news and sport television programs. Thus, the content of these websites is similar to the activity of the Complainant. On the website, the mark EUROSPORT 2 is rendered in a way and in colours that are that similar to the Complainants own use of the mark on its websites.

The user of the <eurosport2.org> and the <eurosport2.net> websites are redirected to the gambling site “www.profibets.com” when clicking on the banner “www.profibets.com”. According to the Complainant, this banner is more than a ordinary commercial banner, as the links between the disputed websites and Profibet seem to be close: the registrant’s e-mail mentioned on the Whois of the domain names <eurosport2.net> and <eurosport2.org> is admin@profibets.com, and the Internet address appearing on the printed pages issued from the disputed websites, is “www.profibets.com/eurosport”.

The Complainant concludes that Jakub Tomczyk intends to take advantage from the notoriety of the mark EUROSPORT to attract Internet users and direct them to this bet side, thus making commercial gains through the disputed domain names <eurosport2.net> and <eurosport2.org>.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The complainant shall substantiate that it has rights in the trademark EUROSPORT and that the domain names <eurosport2.org> and <eurosport2.net> are identical or confusingly similar to the trademark.

The Panel finds that the trademark EUROSPORT is protected for the Complainant. The Complainant has submitted evidence that shows that EUROSPORT is registered as a trademark for the Complainant in several European countries.

The Panel adds that the trademark is well known in Europe. Thus, according to a study of the European Media Marketing, Eurosport has the best notoriety rate in Europe with 85%, and 4,7 million European persons were watching Eurosport each day in 2001.

The Panel finds that the trademark EUROSPORT in undoubtedly identical or confusingly similar to the domain names <eurosport2.net> and <eurosport2.org> as the domain names incorporate the Complainant’s trademark in it entity.

Accordingly, the first condition under the Policy is satisfied.

B. Rights or Legitimate Interests

It is submitted by the Complainant that the Complainant has never given its consent, license or any other authorization to the Respondent for use or registration of the domain names at issue, and the disputed domain names are confusingly similar to the Complainants mark. In those circumstances, the evidential onus shifts to the Respondent to demonstrate that it has some right or legitimate interest, see Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091.

Under the paragraph 4(a)(ii) of the Policy the Complainant shall prove that the respondent has no rights or legitimate interests in respect with the domain name. The paragraph 4((c)(i-iii) of the Policy lists – on a non exhaustive basis – circumstances that demonstrate the respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii).

Under paragraph 4(c)(ii) of the Policy the issue is whether the respondent has been commonly known by the domain name, even if he has not acquired a trademark or service mark rights; and under paragraph 4c)iii) the alternative is that the Respondent is making a legitimate non commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish a trademark or service mark at issue. None of these alternatives exist in this matter.

The last of the alternatives in paragraph 4(c)(iii) of the Policy is that the Respondent, before any notice to him of the dispute, has used or can demonstrate preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services.

The domain names has clearly been used in an offering of goods and services, related to the disputed web pages. The web pages deal with sport news and sport television programs. The Panel is not aware of the nature and extent of these services, but further information about this is not necessary to resolve this matter.

The Panel does not find that the Respondent has established a right or legitimate interest in the <eurosport2.net> and <eurosport2.org> domain names, as the Panel is of the opinion that the Respondent has not acted bona fide.

In the view of the Panel it is obvious that the Respondent has registered and used the domain names with intent, for commercial gain, to misleadingly divert consumers to the website at the domain name, in last instance to redirect the traffic to the betting site mentioned above.

Thus, the Panel concludes that the Complainant has proved the second condition of the Policy.

C. Registered and Used in Bad Faith

The relevant question to consider with respect to this third condition, is whether the Respondent by using the domain name, has intentionally attempted to attract, for its commercial gain, internet users to its website or other online location by creating a likelihood or confusion with the Complainant’s mark EUROSPORT.

The Panel finds that the trademark EUROSPORT is well known. It is highly unlikely that the Respondent would register such a domain name without being aware of the Complainant’s trademark. Based on the particular circumstances in the case and that the Respondent is not known under the name, it is obvious in the opinion of the Panel that the domain name has been registered in bad faith. Although not decisive, the Panel also puts weight on the fact that the Respondent has not honoured the Panel with a response and thus provided no evidence of any actual or contemplated good faith use of the domain name.

The Panel concludes that the Complainant has proved also the third condition of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <eurosport2.net> and <eurosport2.org> be transferred to the Complainant.

Arne Ringnes
Sole Panelist

Dated: July 12, 2005