The Complainant is Projectclub of Villeneuve d’Ascq, France, represented by AARPI Scan Avocats, France.
The Respondent is Martyinyuk Andrey Mihaylovich of Kiev, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2018. On June 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 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 June 29, 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 July 3, 2018.
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 of the Complaint, and the proceedings commenced on July 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2018.
The Center appointed Zoltán Takács as the sole panelist in this matter on July 27, 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 in this administrative proceeding is Projectclub, a business support services company of the major French manufacturer Decathlon specialized in the conception and retailing of sporting and leisure goods.
At the end of 2016 Decathlon had 78,000 employees worldwide operating 1171 stores out of which 301 in France. Decathlon’s annual sales amounted to nearly EUR 10 billion.
Decathlon designs, manufactures and markets several lines of its products under 20 dedicated “Passion Brands”. E.g. the TRIBORD brand is dedicated to water sports and the SUBEA brand is dedicated to diving among which is an innovative snorkeling mask under the trademark EASYBREATH.
The EASYBREATH snorkeling mask is an all-inclusive mask offering users the possibility of breathing easily under water through the nose and mouth, just as they do on land.
Among others the Complainant owns the following trademark registrations for the word mark EASYBREATH:
- French trademark registration number 4053624, registered on December 10, 2013 for goods and services of Classes 9, 25 and 28 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks (“Nice Classification”);
- International trademark registration number 1227496 designating a number of countries, including Ukraine where the Respondent’s domicile is. This trademark has been registered since June 10, 2014 for goods and services of Classes 9, 25 and 28 of the Nice Classification.
The disputed domain name was registered on May 31, 2018 and it resolved to a website selling EASYBREATH branded snorkeling masks which were copies of the Easybreath masks created by Decathlon. At the time of rendering this administrative decision the disputed domain name did not lead to an active website. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical to its EASYBREATH trademark since it reproduces the trademark in its entirety and the applicable Top-Level Domain in the disputed domain name should not be taken into account under the first element test.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainant states that the Respondent incorporated his EASYBREATH trademark in the disputed domain name with obvious intent to capitalize on the reputation of it by diverting Internet users seeking information about the Complainant and its products.
The Complainant submits that the Respondent’s initial use of a privacy service aimed at hiding his identity is further indication of bad faith registration and use.
The Complainant requests that the disputed domain name be transferred from the Respondent to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
As noted in many previous UDRP panel decisions, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A complainant must prove each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
As noted by many UDRP panels, if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant proved that it holds registered rights in the trademark EASYBREATH, and for the purpose of this proceeding the Panel establishes that the Complainant’s French Trademark Registration No. 4053624 and International Trademark Registration No. 1227496 for the word mark EASYBREATH satisfy the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has trademark rights in the EASYBREATH mark, the Panel next assessed whether the disputed domain name is identical or confusingly similar to the EASYBREATH trademark of the Complainant.
According to section 1.7 of the WIPO Overview 3.0 “[t]he standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.”
According to section 1.11.1 of the WIPO Overview 3.0 “[t]he applicable Top Level Domain (ʻTLDʼ) in a domain name (e.g., ʻ.comʼ, ʻ.clubʼ, ʻ.nycʼ) is viewed as a standard registration requirement and as such is disregarded under the first element confusingly similar test.”
The disputed domain name fully incorporates the Complainant’s EASYBREATH trademark without any other element added. The applicable generic Top-Level Domain (“gTLD”) suffix in the disputed domain name “.xyz” should in relation to this administrative proceeding be disregarded.
On the basis of facts and circumstance discussed above the Panel finds that the disputed domain name is identical to the EASYBREATH trademark of the Complainant and that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds prior rights in the trademark EASYBREATH.
The Complainant has never authorized the Respondent to use its EASYBREATH trademark in any way, and the Complainant’s use of and prior rights in the EASYBREATH trademark well precede the date of registration of the disputed domain name.
According to section 2.1 of the WIPO Overview 3.0 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 the relevant evidence demonstrating rights of 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.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online 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 Complainant presented undisputed evidence which convinced the Panel that the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant’s EASYBREATH trademark was registered well before the Respondent’s registration of the disputed domain name and is well-recognized and popular in the snorkeling industry.
According to section 3.2.2 of the WIPO Overview 3.0 “noting the near instantaneous and global reach of the Internet and search engines, and in particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark.”
In the Panel’s opinion the only conceivable explanation for the Respondent’s choice to register the disputed domain name that reproduces the distinctive trademark of the Complainant is to intentionally exploit the reputation behind the EASYBREATH trademark without any authorization or rights to do so. The disputed domain name resolved to an active website selling, among others, snorkeling masks under the EASYBREATH trademark, without the Complainant’s consent. The Panel finds that the conditions of paragraph 4(b)(iv) of the Policy are present in this case.
In addition, the Panel notes that the Complainant states that at the time of the submission of the Complaint the disputed domain name ceased to resolve to an active website, and the Panel notes that at the time of rendering this decision the disputed domain name did not lead to any active website the Panel finds that the doctrine of passive holding is applicable to this case.
According to Section 3.3 of the WIPO Overview 3.0 “while panelist will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”. The Panel finds presence of all these circumstances in this case.
The Panel finds that the disputed domain name was registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy is 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.
Zoltán Takács
Sole Panelist
Date: August 7, 2018
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