Complainant is Breitling SA of Granges, Switzerland, represented by B.M.G. Avocats, Switzerland.
Respondent is Wang Hualin of Beijin, China. 2. The Domain Name and Registrar
The disputed domain name is registered with 1API GmbH (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 18, 2017. On December 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 December 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 16, 2018.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on January 24, 2018. 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
Complainant is a company organized under the laws of Switzerland whose business is the manufacture of chronographs and watches as well as related accessories. Complainant has provided evidence that it is the registered owner of numerous trademarks relating to the designation BREITLING including, inter alia:
- Word-/device mark BREITLING, International trade mark; registration No. 613794, in Class 14, registration date: January 7, 1994, Status: Active;
- Word mark BREITLING, International trade mark (with extension to China), registration No. 890749, in Class 14, registration date: June 1, 2006, Status: Active;
- Word-/device mark BREITLING, China Patent and Trademark Office (CPTO), registration No. 558628, in Class 14, registration date: July 20, 1991, Status: Active.
Furthermore, Complainant owns the domain name which resolves to its official website at "www." where Complainant is promoting its company and business.
Respondent, who according to the WhoIs information for the disputed domain name is a resident of China, registered the disputed domain name on August 16, 2017. As of the time of the rendering of this decision, the disputed domain name is inactive. Complainant, however, provided evidence that at some point before the filing of this Complaint, the disputed domain name resolved to a website at "www." which offered "Replica Breitling Watches" for online sale. This website also reflected Complainant's official BREITLING logo.
Complainant's authorized representatives sent a cease and desist letter on November 20, 2017 and a reminder letter on December 4, 2017 to Respondent asking for a voluntary transfer of the disputed domain name and a removal of the unauthorized content on the corresponding website to which Respondent did not reply, however, the website at "www." was deactivated.
Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties' Contentions A. Complainant
Complainant states that its company was founded in 1884 by Léon Breitling and has manufactured and sold BREITLING watches ever since. As a result of Complainant's extensive reputation in the world of watch making and of its international presence, the BREITLING brand has meanwhile become well-known and enjoys an important goodwill. Complainant submits that the disputed domain name is confusingly similar to Complainant's BREITLING trademark as it wholly incorporates the latter with the mere adjunction of the term "luxury" which is directly related to Complainant as it manufactures and sells luxury watches. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name, since Respondent is not a licensee of Complainant nor has Complainant granted Respondent authorization to use the disputed domain name which in the absence of any further indication does not correspond to Respondent's name. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith, since (1) the registration took place long after Complainant's registration and use of its own BREITLING trademark which is not a dictionary word and has no particular meaning, (2) the disputed domain name resolves to a website selling exclusively counterfeit BREITLING watches which clearly demonstrates that Respondent had knowledge of Complainant's trademark when registering the disputed domain name, (3) there is no plausible reason for Respondent's choice of the disputed domain name other than the will to unfairly profit from the confusion with Complainant's BREITLING trademark, and (4) Respondent did not reply to any of Complainant's pre-procedural communications but merely closed down the website under the disputed domain name which now appears as not active. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(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.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent's failure to submit a Response. A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the BREITLING trademark in which Complainant has rights.
The disputed domain name incorporates the BREITLING trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among UDRP panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8), that the addition of a generic or descriptive term or geographic wording to a trademark in a domain name is normally insufficient, in and of itself, to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the descriptive term "luxury" (which even may be understood as making reference to the luxurious quality of Complainant's products) does not dispel the confusing similarity arising from the incorporation of Complainant's BREITLING trademark in the disputed domain name.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant's undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant's BREITLING trademark, either as domain name or in any other way. Also, there is no reason to believe that Respondent's name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the name "Breitling". Finally, Respondent obviously has neither used the disputed domain name for a bona fide offering of products or services nor for a legitimate noncommercial or fair purpose. On the contrary, Respondent apparently used the disputed domain name at some point before the filing of the Complaint to run a website at "www." which offered "Replica Breitling Watches", thus counterfeit goods for online sale.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Having done so, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0 section 2.1). Given that Respondent defaulted, Respondent has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
Resolving the disputed domain name, which is confusingly similar to Complainant's BREITLING trademark, to a website that offers counterfeit BREITLING products is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant's BREITLING trademark as to the source, sponsorship, affiliation or endorsement of Respondent's website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
This finding is reconfirmed by the fact that Respondent did not reply to any of Complainant's pre-procedural communications, however, simply closed down the website at "www." upon receipt thereof.
Therefore, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by 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 be transferred to Complainant.
Stephanie G. Hartung
Sole Panelist
Date: January 29, 2018
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