Complainant is Montres Breguet S.A. of L'Abbaye, Switzerland, represented by Accent Law Group, Inc., United States of America.
Respondent is Aleksandra Ivanova of Sofia, Bulgaria / WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 28, 2016. On April 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 28, 2016, 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 Complainant on May 2, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 2, 2016.
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 Respondent of the Complaint, and the proceedings commenced on May 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 30, 2016.
The Center appointed David Perkins as the sole panelist in this matter on June 6, 2016. 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 4.A. Complainant
4.A.1 Complainant is a subsidiary of The Swatch Group AG. Complainant itself is one of the oldest surviving watch making establishments in the world. Its origins date from 1775. The amended Complaint explains that it has operated under the BREGUET trade mark for very many years and has been an industry leader in luxury and prestige timepieces and wristwatches. It produced the first wristwatch in 1810 and has pioneered numerous watch-making techniques, including the tourbillon invented by Abraham-Louis Breguet.
4.A.2 Complainant promotes its BREGUET brand and products through its website at "", on various social media platforms and through sponsorship of major cultural events throughout the world. Examples of this promotion are exhibited to the amended Complaint. Complainant also has numerous dedicated, branded retail stores including in Beijing, Dubai, Hong Kong, London, Moscow, New York, Paris, Shanghai, Tokyo and Zurich. There is even a collectors fan club for older BREGUET products, a posting from which is exhibited to the amended Complaint.
The BREGUET trade mark
4.A.3 Complainant is the proprietor of, inter alia, the following registered trademarks.
Territory
Registration No.
Mark
Classes of goods and services
Application / Registration dates
United States
3,042,405
BREGUET
2; 27; 28 & 50
Filed: December 2, 2002
Registered: January 10, 2006*
Community Trade Mark
3440881
BREGUET
14
Filed: October 23, 2003
Registered: April 13, 2006
International
566,731
BREGUET
14
Registered: January 22,1991**
* First use in commerce: June 8,1995.
** Effective in 38 countries.
4.B. Respondent
4.B.1 In the absence of a Response, what is known of Respondent is derived from the amended Complaint and its Exhibits.
4.B.2 The disputed domain name was registered on August 16, 2015 using a Privacy Service.
4.B.3 That domain name resolves to a pay-per-click website with links to third party websites including those of Complainant's competitors. Examples of such links to competitors including Patek Phillippe, Hublot, Seiko and Movado are exhibited to the amended Complaint.
4.B.4 Also exhibited to the Amended Complaint are "Cease and Desist" emails to Respondent from Complainant's counsel and reminders variously dated January 7; 14; 20; and 27, 2016 and February 3, 2016. No response was received to any of them. 5. Parties' Contentions 5.A. Complainant Identical or Confusingly Similar
5.A.1 Complainant's asserts rights in the BREGUET trade mark, examples of which are set out in paragraph 4.A.3 above.
5.A.2 Complainant's case is that the disputed domain name incorporates that mark in its entirety with addition of the ".design" Top-Level Domain ("TLD") and, consequently, is identical or confusingly similar to that mark. In that respect, Complainant cites two decisions under the Policy in which the disputed domain names and were, respectively, held to be identical () and confusingly similar ().
5.A.3 Although, as regards the requirements of paragraph 4(a)(i) of the Policy, Complainant says that use of the TLD ".design" is irrelevant, the addition of that TLD will – Complainant submits – actually enhance likelihood of confusion in this case where Complainant is an international leader in the design and creation of wristwatches. Rights or Legitimate Interests
5.A.4 Complainant's case is that Respondent cannot demonstrate that any of the circumstances set out in paragraph 4(c) of the Policy apply.
5.A.6 First, Complainant says that Respondent is not making a bona fide or fair use of the disputed domain name under paragraphs 4(c)(i) or (iii) of the Policy. This is because the disputed domain name is identical or confusingly similar to Complainant's well-known BREGUET trade mark and is used to divert visitors to the website to which it resolve to third party sites offering competitor products. See, in this respect, paragraph 4.B.3 above.
5.A.7 Second, Complainant says there is no evidence that Respondent can bring herself under paragraph 4(c)(ii) of the Policy. Registered and Used in Bad Faith
5.A.8 Complainant says that it has not licensed or otherwise authorised Respondent to use the BREGUET trade mark.
5.A.9 Complainant also points to Respondent's use of a Privacy Service as indicative of bad faith.
5.A.10 Complainant says that Respondent's failure to respond to the "cease and desist" communications – noted in paragraph 4.B.4 above – is also indicative of bad faith.
5.A.11 Given the longstanding use and notoriety of the BREGUET trade mark (noted in paragraph 4.A. above) and the use to which the disputed domain name has been put (noted in paragraph 4.B.3 above), Complainant's case is that Respondent clearly registered the disputed domain name in bad faith.
5.A.12 Complainant asserts that the facts of this case fall fair and square under paragraph 4(b)(iv) of the Policy. This is because Respondent's use of the disputed domain name – summarised in paragraphs 4.B.3 and 5.A.6 above – is not a legitimate non-commercial or fair use. It is for commercial gain (from the click-through revenue derived from the website to which the disputed domain name resolves) and is used to divert consumers to third party websites offering competitor wristwatches. Complainant cites numerous cases under the Policy where such use of a disputed domain name has been held to constitute bad faith use. 5.B Respondent
5.B.1 As noted, no Response has been filed. 6. Discussion and Findings
6.1 The Policy, paragraph 4(a) provides that Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
6.2 The Policy, paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate Respondent's rights or legitimate interests in the disputed domain name.
6.3 The Policy, paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
6.5 Clearly, Complainant has rights in the well-known BREGUET trade mark. See, in that respect, paragraphs 4.A.1 to 3 above.
6.6 Equally clearly, in the Panel's view the disputed domain name is confusingly similar to that trade mark for the reasons summarised in paragraphs 5.A.2 and 3 above.
6.7 Consequently, the amended Complaint meets the requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
6.8 In the Panel's view, Complainant's case summarised in paragraphs 5.A.4 to 7 above is well made out and, consequently, the amended Complaint satisfies paragraph 4(a)(ii) of the Policy. Registered and Used in Bad Faith
6.9 Again, the Panel considers that Complainant's case summarised in paragraphs 5.A.8 to 12 is well made out. Where there is use by a respondent of a domain name in the manner described in paragraph 4.B.3 above, there are numerous decisions under the Policy holding that such constitutes bad faith use under paragraph 4(b)(iv) of the Policy. In that respect, the Panel also refers to paragraph 3.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
6.10 As to paragraph 5.A.9 above, the Panel refers to paragraph 3.9 of the WIPO Overview 2.0.
6.11 For the above reasons, the amended Complaint satisfies the requirement of paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
David Perkins
Sole Panelist
Date: June 15, 2016
Full & Egal Universal Law Academy