The Complainant is ProjectClub of Villeneuve d’Ascq, France, represented by SCAN Avocats, France.
The Respondent is Privacy Protection, Russian Federation / Alesandr Pilschikov of Blagoveschensk, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2018. On August 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 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 the same date providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date the Center sent an email to the Parties in English and Russian in regard to the language of the proceedings. The Complainant filed an amended Complaint on the same date and requested English to be the language of the proceedings. The Respondent did not comment on the language of the proceedings.
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 Russian of the Complaint, and the proceedings commenced on August 17, 2018. On August 22, 2018, the Center received an email from the Respondent. On the same date the proceedings were suspended for purposes of settlement discussions between the Parties. The proceedings were reinstituted on September 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2018. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties about the Commencement of Panel Appointment Process.
The Center appointed Taras Kyslyy as the sole panelist in this matter on October 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 French company, subsidiary of one of the major manufacturers of sporting and leisure goods Decathlon, which operates worldwide with an annual turnover of nearly EUR 10 billion. Decathlon sells innovative snorkeling masks under the trademark EASYBREATH. Since the launch of the mask in spring 2014, the Complainant invested significantly to promote its EASYBREATH goods.
The Complainant owns EASYBREATH trademarks throughout the world, including the following registrations:
- French trademark registration No. 4053624 registered on December 10, 2013;
- International trademark registration No. 1227496 registered on June 10, 2014 inter alia designating the Russian Federation.
The Complainant registered and is using about 40 domain names with the “easybreath” wording.
The disputed domain name was registered on June 26, 2018 and resolved to a website in Russian language selling snorkeling masks. At the time of the decision the disputed domain name resolves to an inactive webpage. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark without any other element added. Addition of generic Top-Level Domains (“gTLD”) shall be disregarded for the similarity test purposes.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Complainant never authorized or permitted use of its trademark by the Respondent. The Respondent has no relation to the Complainant. The Respondent was selling snorkeling masks confusingly similar to the Complainant’s and branded with the Complainant’s trademark without any authorization to do so.
The disputed domain name was registered and is being used in bad faith. The Complainant’s trademarks were registered before the disputed domain name. The disputed domain name is identical to the Complainant’s trademark. Any search for “easybreath” conducted with a search engine like Google leads in the first place to the Complainant’s websites. The Respondent was selling confusingly similar, if not counterfeited, masks under the Complainant’s trademark without any authorization to do so. The disputed domain name reproduces the Complainant’s trademark, and it previously resolved to an active website. The Respondent concealed its identity. B. Respondent
The Respondent did not reply to the Complainant’s contentions.6. Discussion and Findings 6. Discussion and Findings A. Language of Proceedings
The language of the Registration Agreement for the disputed domain names is Russian. 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 Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM,WIPO Case No. D2006-0334). Accordingly, account should be taken of the risk that a strict and unbending application of paragraph 11 of the Rules may result in delay, and considerable and unnecessary expenses of translating documents.
In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances”. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the parties.
The Complainant has submitted in its Complaint that the language of the proceedings be English, since a) there is an English version of the Registration Agreement, b) the disputed domain name is composed with Latin script, c) the word “easybreath” refers to the Complainant’s trademarks, d) the Respondent reproduced the Complainant’s trademarks, which confirms the Respondent at least understands English, while the Complainant is unable to speak Russian.
The Panel further notes that no objection was made by the Respondent to the Complaint being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent is invited to present its objection to the proceedings being held in English. The Respondent had the opportunity to raise objections or make known its preference but did not do so.
The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian.
Taking all these circumstances into account, this Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English. B. Identical or Confusingly Similar
The gTLD “.website” in the disputed domain name is viewed as a standard registration requirement and may be disregarded for the purposes of the confusing similarity test (see, e.g., Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275).
According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing.
The disputed domain name includes the Complainant’s trademark without alteration or addition, adding the gTLD “.website”. Disregarding the gTLD the Panel finds that the disputed domain name is identical to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent.
The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642).
According to section 2.8.1 of the WIPO Overview 3.0 resellers, distributors using a domain name containing complainant’s trademark to undertake sales related to the complainant’s goods may be making a bona fide offering of goods and thus have a legitimate interest in such domain name. Outlined in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (the “Oki Data Test”), the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods at issue;
(ii) the respondent must use the site to sell only the trademarked goods;
(iii) the site must accurately and prominently disclose the registrant’s relationship with trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names reflecting trademark.
The Panel finds that the Respondent failed to meet at least the condition (iii), and thus failed to pass the Oki Data Test. The Respondent’s use of the disputed domain name misleads consumers into thinking that the website is operated by or affiliated with the Complainant. As such, the Respondent’s use of the disputed domain name cannot be considered bona fide.
Moreover, as the disputed domain name is identical to the Complainant’s trademark identical to a complainant’s trademark carry a high risk of implied affiliation. The disputed domain name effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.
Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Respondent’s use of the disputed domain name to purport to sell products branded with the Complainant’s trademark shows that at the time of the registration of the disputed domain name the Respondent clearly knew and targeted the Complainant’s prior registered and well-known trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113).
According to paragraph 4(b)(iv) of the Policy the following circumstances if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: 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. In this case, the disputed domain name was resolving to a website, which was offering to sell goods branded with the Complainant’s trademark to intentionally attract Internet users by creating likelihood of confusion with the Complainant’s trademark as to the source of the website and its products. The Panel finds the above confirms the disputed domain name was registered and used in bad faith.
Although at the time of this decision the disputed domain name resolves to inactive web-page, its previous bad faith use and lack of explanation of possible good faith use from the Respondent makes any good faith use of the disputed domain name implausible. Thus, the current passive holding of the disputed domain name does not prevent a finding of bad faith (see, e.g., Abbott Diabetes Care Inc. v. Privacy Protection, Hosting Ukraaine LLC / Виталий Броцман (Vitalii Brocman), WIPO Case No. DPW2017-0003).
Moreover, the Respondent used a privacy service to register the disputed domain name. According to section 3.6 of the WIPO Overview 3.0, the use of a privacy or proxy service merely to avoid being notified of a UDRP proceeding, may support an inference of bad faith; a respondent filing a response may refute such inference. However, no such response was provided by the Respondent. The Panel finds that such use of the privacy service here also supports the Panel’s finding that the registration and use of the disputed domain name were in bad faith.
Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy. 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.
Taras Kyslyy
Sole Panelist
Date: October 22, 2018
Full & Egal Universal Law Academy