The Complainant is Breitling SA of Granges, Switzerland, represented by B.M.G. Avocats, Switzerland.
The Respondent’s name (the named registrant of the disputed domain names) has been redacted for the purpose of these proceedings.1 2. The Domain Names and Registrar
The disputed domain names and are registered with 1API GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2018. On February 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 8, 2018, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on February 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 12, 2018. An informal communication from an unrelated third party was filed with the Center on February 22, 2018. The Respondent did not file a Response.
The Center appointed James A. Barker as the sole panelist in this matter on March 21, 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
The Complainant manufactures chronographs, watches and accessories. It was founded by Léon Breitling. The Complainant owns trademark registrations in multiple jurisdictions including international registrations and registrations in the United States of America for BREITLING. See e.g., United States Trademark Registration No. 2964474 (registered on July 5, 2005). The Complainant’s trademarks include many that were registered well before the registration of the disputed domain names.
The Complainant’s marks have been the subject of a number of previous proceedings under the Policy. More recently for example, these include, e.g., Breitling SA v. Jaylee Greta,WIPO Case No. D2016-1544; Breitling SA v. Wang Hualin,WIPO Case No. D2017-2513.
The Complainant owns the domain name which resolves to its official website at "www." where the Complainant promotes its company and business.
The disputed domain names were both created on November 30, 2017.
The Complainant provides evidence that the disputed domain names reverted to websites selling apparently counterfeit versions of its products. In December 2017, the disputed domain name reverted to a website providing photos and accompanying text under the heading “Breitling Replica Super Avenger A13370 Review”. The text included detailed descriptions of the offered “replica” including the statement that “This replica is so well crafted that even experts couldn’t tell the difference”. The Complainant also provides evidence of the website at the disputed domain name , as of December 2017. That website similarly included photos and accompanying text under the heading “Breitling copy: something unique about it”. That website apparently included a detailed “review” of a self-described copy of one of the Complainant’s watches.
In the absence of a Response, and on the basis that the named registrant of the disputed domain name is a third party to these proceedings (discussed further below), there is little information about the nature of the Respondent or its business, beyond what is apparent from the websites to which the disputed domain names referred. The actual name and residence of the underlying Respondent of the disputed domain names is not ascertainable from the case file. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain names are confusingly similar to its BREITLING mark, because this mark is wholly incorporated in the disputed domain names. The addition of the descriptive terms “wrist watches” and “club” do not distinguish the disputed domain names from the Complainant’s mark.
Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. The Respondent is not a licensee of the Complainant, nor has the Complainant granted to the Respondent an authorization to use the disputed domain names. There is no indication that the disputed domain names correspond to the Respondent’s name.
Thirdly, the Complainant alleges that the Respondent has registered and used the disputed domain names in bad faith. The Respondent registered the disputed domain names long after the registration of the Complainant’s mark. The Complainant’s mark is famous and internationally well known. The disputed domain names have been used in connection with websites that offer for sale counterfeits of the Complainant’s products. B. Respondent
The Respondent did not reply to the Complaint.
The person listed as the ostensible registrant for the disputed domain names, following notification of the Complaint responded to the Center on February 22, 2018, stating that:
“A written notice for the above case number was delivered to my residence. We do not have anything to do with the listed domains, or .
I’ve reviewed Whois information for both domains and they appear to have fraudulent information with my home address and a misspelling of my wife’s name. The phone number and contact email address listed in the Whois records are not recognized by us. Whoever registered these domains did so without our knowledge or consent”. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below. A. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s BREITLING mark. Both of the disputed domain names incorporate the Complainant’s mark entirely as the first-appearing element. There are now a large number of prior UDRP panel decisions that have found that the entire incorporation of a complainant’s mark is sufficient for a finding of confusing similarity. See e.g., Breitling SA v. Wang Hualin,WIPO Case No. D2017-2513, which made such a finding in relation to the Complainant’s own mark and referenced a series of prior decisions in support of that finding.
Both disputed domain names only add, respectively, the descriptive terms “club” and “wrist watches” to the Complainant’s mark, which might also be reasonably seen as having some reference to the Complainant’s business or products. Again, the similar addition of a descriptive term was not sufficient to avoid a finding of confusing similarity in the Breitling case referenced immediately above. The Panel in this case takes a similar approach. B. Rights or Legitimate Interests
The second matter which the Complainant must establish, under paragraph 4(a)(ii) of the Policy, is that the Respondent has no rights or legitimate interests in respect of the domain names. The Policy outlines several non-exclusive ways in which a respondent may demonstrate rights or legitimate interests, as follows:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [the Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. (Policy, paragraph 4(c)).
In the absence of a Response, and based on the material in the Complaint, there is no evidence that would support any of these grounds. In the circumstances of bad faith set out further below, the Panel cannot find any other grounds on which the Respondent might claim rights or legitimate interests in the disputed domain names. The Panel finds that the Complainant has established the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As noted above, in this case it appears that the Respondent has used the details of a third party as contact details for the disputed domain names. The Panel considers there is sufficient evidence in this respect to at least redact the named registrant for the purpose of these proceedings. This evidence is primarily comprised of the response to the Center from the named registrant (outlined above), the lack of any substantive Response, and the other evidence of bad faith set out below.
Taken together, this Panel also considers that this evidence is sufficient, on the balance of probabilities, to indicate that the true registrant of the disputed domain names has used the identity of a third party in the WhoIs details. The Panel thinks it would be unlikely that the third party and the actual registrant of the disputed domain names are the same person. This is because the Panel cannot imagine, in the circumstances of this case, how it could be to the Respondent’s advantage to claim that it had used someone else’s identity. As the Panel cannot reasonably imagine that the actual Respondent would advance evidence to indicate its own bad faith, the Panel has inferred that the email from the third party is simply what it appears to be. That is, a third party’s name has (unknown to them) been used by the actual Respondent as contact details for the disputed domain names.
For these reasons, this Panel treats this third-party evidence differently to the treatment of somewhat similar evidence in e.g., Banco Bradesco S/A v. Gisele Moura Leite,WIPO Case No. D2014-0414. In that case, the panel found that a third party claim of identity theft was, by itself, insufficient for the panel to determine whether the allegation was true or not. This Panel takes a different approach on the basis that:
- the Policy only requires evidence to be established on the “balance of probabilities” and,
- as noted above, the Panel cannot imagine that an actual Respondent, acting in self-interest, would make a claim of identity theft (unless it might be seeking to avoid responsibility by putting forward some case for innocent use of the disputed domain names – but then no such claim was made in this case). As such, the Panel thinks there is a reasonable inference that this claim is, in fact, being advanced by a third party, and is what it says it is. That is, this is ordinarily the type of claim which this Panel would treat as one genuinely coming from a third party, unless there was some indication to the contrary.
The issue then arises as to whether this evidence of “identity theft” is indicative of bad faith. The cases cited above (at footnote 1) did not consider this question, as it appears that the issue of bad faith was established in each case from other evidence. However, in this case the Panel considers that the apparent “identity theft” is itself indicative of bad faith by the actual (unidentified) registrant. While this circumstance of bad faith is not one explicitly mentioned in paragraph 4(b) of the Policy, that paragraph is stated to be “without limitation” to other circumstances of bad faith. The Panel considers that the apparent identify theft is strongly indicative that the Respondent was aware that its registration and use (by continuing to hold) of the disputed domain names were not done in good faith. There is a reasonable inference that the Respondent was seeking to hide its identity and divert complaints about its conduct to an innocent third party.
There is other clear evidence of bad faith in this case: The Respondent has registered domain names that wholly incorporate the Complainant’s well-known mark, and included descriptive terms (particularly in the disputed domain name) that reinforce that association. The disputed domain names reverted to websites offering “reviews” of copies of the Complainant’s products. It appears that the purpose of those websites was to promote those unauthorized copies of the Complainant’s products. In this context, the Respondent has clearly registered the disputed domain names because of their association with the Complainant’s products and the Complainant’s trademark.
Registration of the Complainant’s mark with only the addition of descriptive terms, as well as references to the Complainant’s products on the associated websites, make it fairly obvious that the Respondent (whoever that may be) had the Complainant in mind. Such conduct is squarely within the types of bad faith registration and use described in paragraph 4(b)(iv) of the Policy, that is: “(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
As noted by the Panel in Thomas Cook Holdings Limited v. Vacation Travel,WIPO Case No. D2000-1716, “In the ordinary course of events taking the Complainant’s trade mark and using it in a manner that is clearly intended to refer to the Complainant or its services would constitute a prima facie case of cybersquatting”. The Panel considers that this is such a case. In the absence of any Response, there is otherwise no evidence to the contrary. As such, the Panel finds that the disputed domain names were registered and have been used in bad faith. 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 names and be transferred to the Complainant.
James A. Barker
Sole Panelist
Date: April 4, 2018
1 The Respondent appears to have used the name and contact details of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See: ASOS plc. v. Name Redacted,WIPO Case No. D2017-1520; Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.
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