The Complainants are Montres Breguet SA of L'Abbaye, Switzerland and Blancpain SA of Le Brassus, Switzerland, represented by Steven M. Levy, Esq., United States of America (“United States”).
The Respondent is Privacydotlink Customer 3450653 / Privacydotlink Customer 3450628 of Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“UK”) / George Friar of Knock of Auchnahannet, UK. 2. The Domain Names and Registrar
The disputed domain names and are registered with Uniregistrar Corp
Uniregistrar Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2018. On August 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 30, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on September 3, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on September 4, 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 September 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2018.
The Center appointed Alfred Meijboom as the sole panelist in this matter on October 1, 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 Complainants are both watch manufacturing establishments that date back to the mid 1700s.
The Complainant Montres Breguet SA is owner of, inter alia, European Union trademark BREGUET with registration number 3440881, which was registered on April 13, 2006, United States trademark BREGUET with registration number 3042405, which was registered on January 10, 2006 and International registration BREGUET with registration number 566731 of January 22, 1991 for 38 designated jurisdictions (individually and jointly the “BREGUET trademark”).
The Complainant Blancpain SA is owner of, inter alia, European Union trademark BLANCPAIN trademark. with registration number 3441722, which was registered on May 6, 2005, United States trademark BLANPAIN with registration number 1727428, which was registered on October 27, 1992 and International registration BLANCPAIN with registration number 190558 of February 8, 1952 for 14 designated jurisdictions (individually and jointly the “BLANCPAIN trademark”).
The disputed domain names were both registered on October 25, 2017. They do currently not resolve to a website.
The Complainants sent the Respondent a demand letter regarding the disputed domain names on July 9, 2018 and follow up letters on July 16 and 23, 2018 through the email address listed in the WhoIs record for the disputed domain names. The Respondent did not reply to those letters. 5. Parties’ Contentions A. Complainant
The Complainants allege that the disputed domain names are identical or confusingly similar to the BREGUET and BLANCPAIN trademarks. According to the Complainants, the BREGUET and BLANCPAIN trademarks are incorporated in the respective domain names entirely, whilst the addition of the generic Top-Level Domain (“gTLD”) “.store” only adds to the confusion as the Complainants sell their products through a wide range of stores.
The Complainants further allege that the Respondent has no rights or legitimate interests in respect of the disputed domain names because (i) the disputed domain names are held passively, which does neither constitute a bona fide offering of goods nor a legitimate noncommercial or fair use, (ii) the Respondent is not known by either of the disputed domain names nor does it operate a business under them, (iii) the Respondent does not own rights in trademarks that consist of the disputed domain names, and (iv) the Respondent has not been authorized by the Complainants to use their respective trademarks.
Finally, the Complainants claim that the Respondent registered and used the disputed domain names in bad faith. Given the global fame of the BREGUET and BLANCPAIN trademarks, and the fact that these trademarks have been incorporated in their entirety into the disputed domain names, those domain names can only have been registered with the Complainants’ trademarks in mind. In this case, the passive use of the disputed domain names constitutes use in bad faith. Further, the fact that the Respondent has registered two infringing domain names demonstrates a pattern of bad faith registration of domain names, also demonstrating use in bad faith. In that regard, the Complainants note that the Respondent has tried to conceal its identity and has not responded to demand letters sent by the Complainants. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings Consolidation of Multiple Complainants under the Policy and Rules
The Complainants have requested consolidation.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.16 explains the principles governing the question of whether a complaint filed with the Center by multiple complainants may be brought against (one or more) respondents.
The WIPO Overview 3.0 explains that these criteria encompass situations in which, inter alia, (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation.
The Complainants request consolidation based on the circumstance that the Complainants are affiliated as they are both part of the same group, of which the Swatch Group AG is the parent company. Given the close legal relationship between the Complainants and the fact that both of the disputed domains names are owned by a single Respondent, the Complainants allege that consolidation of this Complaint is appropriate.
The Panel finds that the legal affiliation of the Complainants, in combination with the fact that both of the disputed domain names are held by the same Respondent and the absence of an objection to consolidation by the Respondent is sufficient to justify the consolidation of the Complainants. This is consistent with the Policy and Rules, comports with prior relevant UDRP decisions in this area, and is appropriate in light of the aforementioned principles. The Panel therefore will proceed to a decision on the merits. The decision on the merits
The Respondent did not file a Response. However, as set out in section 4.3 of the WIPO Overview 3.0, the consensus view of UDRP panels is that the respondent’s default does not automatically result in a decision in favor of the complainant. The Complainants must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the panel may draw appropriate inferences from the Respondent’s default, paragraph 4 of the Policy requires the Complainants to support their assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainants must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainants have established trademark rights in the BREGUET and BLANCPAIN trademarks, evidenced by the trademark registrations submitted with the Complaint, as mentioned above.
It is well established that the top level domain may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003) and, in the present case at least, this is not different for the gTLD “.store”.
Disregarding the top level domain, the Panel finds that the disputed domain names are identical to the BREGUET and BLANCPAIN trademarks.
Consequently, the first element of paragraph 4(a) of the Policy has been met. B. Rights or Legitimate Interests
The Complainants must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel takes note of the various undisputed allegations of the Complainants and in particular that no authorization has been given by the Complainants to the Respondent to use or register the disputed domain names and that the disputed domain names do not and have never resolved to a website. Such passive use cannot be considered as a bone fide offering of goods or services, neither as a legitimate noncommercial or fair use and may reflect poorly on the reputation of the BREGUET and BLANCPAIN trademarks.
The Panel finds that the Complainants have successfully made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. As the Respondent has not replied to the Complaint, the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
Given the well documented use and reputation of the BREGUET and BLANCPAIN trademarks, which were registered decades before the disputed domain names and the fact that the disputed domain names, disregarding the gTLD, are identical to these trademarks, the Panel is in no doubt that, at the time the disputed domain names were registered, the Respondent was or must have been aware of the BREGUET and BLANCPAIN trademarks. The Panel is therefore satisfied that the disputed domain names were registered in bad faith.
The Complainants must also prove that the Respondent has used the disputed domain names in bad faith. The Panel does not agree with the Complainants’ assertion that the Respondent has been involved in a pattern of conduct of preventing trademark holders from reflecting their respective trademarks in a corresponding domain name, demonstrating use in bad faith according to paragraph 4(b) (ii) of the Policy. As set out in section 3.3. of WIPO Overview 3.0, it is the consensus view of Panels that the registration of two domain names in the same case is not generally sufficient to show a pattern, neither is a single prior example of apparent bad faith domain name registration. In the event the consolidation of the Complainants would mean that their respective complaints should be viewed as one and the same case, the registration of the two domain names is insufficient to be considered as a pattern. In the event that, regardless of the consolidation of the Complainants, the complaints should be viewed as separate cases for the purpose of demonstrating a pattern of bad faith domain name registration, each of the Complainants have only demonstrated a single prior example of apparent bad faith domain name registration (i.e. the registration of the domain name containing the other Complainant’s trademark), which is also insufficient to establish the required pattern.
However, under the circumstances at hand, the Panel finds that the passive holding of the disputed domain names constitutes use in bad faith. Section 3.2. of WIPO Overview 3.0 states the following consensus view on this issue:
"…panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use or of the mere "parking" by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals…"
In this case, the Panel concludes that the following cumulative circumstances are indicative of passive holding in bad faith: (i) the well-known and distinctive nature of the BREGUET and BLANCPAIN trademarks, (ii) the fact that the BREGUET and BLANCPAIN trademarks have been identically copied in the disputed domain names, (iii) the lack of a response from the Respondent, both to the cease and desist letters from the Complainants and to Complaint, and (iv) the fact that the Respondent has tried to conceal his identity by hiding behind a privacy shield. After all, it was not until the Registrar provided the relevant registration information that it became clear that Privacydotlink Customer 3450653 and Privacydotlink Customer 3450628 were not separate entities or individuals, but both referred to one and the same person (George Friar).
The Panel therefore finds that the Complainants have satisfied the third and final requirement of paragraph 4(a) 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 names be transferred to the Complainants in such a way that the domain name be transferred to Montres Breguet SA and the domain name be transferred to Blancpain SA.
Alfred Meijboom
Sole Panelist
Date: October 15, 2018
1 The Complaint has requested that the disputed domain names be transferred ‘to Complainants’. To prevent difficulties that may occur in the transfer of the domain names to multiple entities, the Panel will infer from the Complaint that the Complainants request the transfer of the domain name to Montres Breguet SA and of the domain name to Blancpain SA.
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