The Complainant is Breitling SA of Grenchen, Switzerland, represented by B.M.G. Avocats, Switzerland.
The Respondent is Whois Privacy Protection Service by VALUE-DOMAIN of Osaka, Japan / Masato Aoki, VirtualWorks of Tokyo, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount-D and O (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2018. On March 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 2018, 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 the Complainant on March 13, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 15, 2018.
On March 13, 2018, the Center transmitted an email in English and Japanese regarding the language of the proceeding to the Parties. The Complainant requested that English be the language of the proceeding on March 14, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.
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 the Respondent in English and Japanese of the Complaint, and the proceedings commenced on March 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2018.
The Center appointed Douglas Clark as the sole panelist in this matter on April 17, 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 is a Swiss luxury watch company. The Complainant is the owner of the registered trademarks BREITLING in Class 14 under international registration no. 890749 (registered on June 1, 2006) with an extension to Japan.
The disputed domain name was registered on October 4, 2017. The Respondent is an individual based in Japan. Initially the Respondent’s identity was masked by a privacy service.
The disputed domain name resolves to a website which prominently features the Complainant’s trademark BREITLING and a picture of a Breitling watch. The website provides rankings on companies in Japan of companies that will purchase used Breitling watches. There are five companies listed. When an Internet user clicks on a link they are directed to internal pages within the website advertising these companies. Some of the advertisements show that the companies also value and purchase the products of other brands such as Chanel and Prada. The advertisements do not allow a user to click through to the third party companies’ websites. The website under the disputed domain name provides no information on the owner of the disputed domain name, how to contact them or how the rankings are calculated. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions are as follows.
Identical or Confusingly Similar
The Complainant contends that the disputed domain name and the trademark BREITLING are confusingly similar. The disputed domain name incorporates the entirety of the Complainant’s trademark with the addition of the word “kaitori” in Japanese which means to purchase. The generic Top-Level Domain (“gTLD”) “.tokyo” should be disregarded.
No rights or legitimate Interests
The Respondent has no connection with the Complainant and has never sought or obtained any trademark registrations for the trademark BREITLING. The Respondent is not a licensee of the Complainant. It, therefore, has no rights or legitimate interests in the disputed domain name.
Registered and used in bad faith
The Complainant submits that due to the Complainant’s fame, there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant’s rights in the trademark BREITLING and its registration and use of the disputed domain name was to unfairly profit from confusion is therefore in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceedings
The language of the Registration Agreement is in Japanese.
The Complainant requests that the language of proceedings be English on the grounds that the disputed domain name is in Latin characters, several words on the website are in English and the translating the Complaint would cause unnecessary delay and expense.
The Respondent did not respond to this request.
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Japanese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceedings lies with this Panel.
The Panel does not consider the use of Latin characters in the disputed domain name nor the limited use of English on the website to justify the use of English in the proceedings.
However, the Respondent did not respond to the Center’s preliminary determination nor to multiple emails sent by the Complainant. This Panel decided in Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceedings “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
Given the Respondent has not responded, in the circumstances of this case, the Panel determines that English shall be the language of the proceeding. As the only pleading before the Panel are in English, the decision will be issued in English. 6.2. Substantive Issues A. Identical or Confusingly Similar
The disputed domain name is made up of the registered trademark BREITLING combined with the Japanese word “kaitori” which means purchase and the gTLD “.tokyo”. The disputed domain name incorporates the registered trademark BREITLING in full and is, accordingly, confusingly similar to the trademark.
The first element of paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests.
Section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
Paragraph 4(c) of the Policy sets out ways in which a respondent may establish it has rights and legitimate interests. These are:
“(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.”
The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads.
However, the circumstances of this case do require the Panel to consider paragraph 4(c)(i) of the Policy. The website under the disputed domain name is being used to promote companies that will value and purchase Breitling watches. There are no sales being conducted on the website. (Contrary to the assertions of the Complainant that counterfeit watches may be being sold.)
In principle, a business can make use of a trademark to promote the fact they provide information about dealings in genuine trademarked goods by reference to the mark.
The panel is not aware of any cases that have considered in detail the issue of information providers such as the Respondent. Nevertheless, decisions relating to resellers and fan sites provide useful analogies.
With regards to resellers, in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”), the panel in that case held that to be “bona fide”within the meaning paragraph 4(c)(i) of the Policy, the offering should meet the following requirements:
- The respondent must actually be offering the goods or services at issue;
- The respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
- The site must accurately disclose the registrant’s relationship with the trademark owners; it may not, for example, false suggest that it is the trademark owner, or that the website is the official site; and
- The respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Applying Oki Data by analogy, in relation to the second and third points above, in order to legitimately provide information about to whom genuine products can be sold, a domain name registrant should only provide information about the trademarked goods and the site must accurately disclose the registrant’s relationship with the trademark owner.
In this case the Respondent does not meet, at least, these two requirements. The third party companies who are advertised on website under the disputed domain name also deal in other brands. Further, the registrant’s relationship with the Complainant is not made clear.
With regards to fansites, section 2.7.1 of the WIPO Overview 3.0 provides:
“As with criticism sites discussed above, for purposes of assessing fair use under UDRP paragraph 4(c)(iii), a respondent’s fan site must be active, genuinely noncommercial, and clearly distinct from any official complainant site.”
In this case, the page to which the disputed domain name resolves is advertising the services of other companies. This is not noncommercial use. The website is also not clearly distinct from the official Breitling website and could be confused with an official webpage.
The Panel, therefore, finds the Respondent is not making bona fide use of the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith
Given its findings in relation to rights or legitimate interests, the Panel finds that the disputed domain name was registered in bad faith and is being used in bad faith.
This case clearly falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”
The use of BREITLING as part of the disputed domain name is clearly designed to attract consumers to the website.
The third element of paragraph 4(a) of the Policy is therefore satisfied. 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 the Complainant.
Douglas Clark
Sole Panelist
Date: May 1, 2018
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