The Complainant is Breitling SA of Grenchen, Switzerland, represented by B.M.G. Avocats, Switzerland.
The Respondent is Tsuyoshi Kashiwazaki, Contecial Corporation 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 October 9, 2018. On October 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 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.
On October 11, 2018, the Center transmitted an email in English and Japanese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on October 15, 2018. The Respondent did not reply.
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 in English and Japanese of the Complaint, and the proceedings commenced on October 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2018.
The Center appointed Haig Oghigian as the sole panelist in this matter on November 26, 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
Based on the pleadings and evidence available, the Complainant, Breitling SA (“Breitling”) has been in the business of manufacturing and selling high-end chronographs, watches and related accessories since its founding in 1884 by Leon Breitling. It has registered the BREITLING trademark in a number of classes and countries across the globe, at least since 2006. Its International registration for this mark, for example, was made on June 1, 2006 (registration no. 890749).
The Registar, GMO Internet, Inc. O confirmed that was registered on April 9, 2018, by the Respondent Tsuyoshi Kashiwazaki of Contecial Corporation. In accordance with the Complaint and relevant evidence, the disputed domain name resolves to a website related to planes and aviation. 5. Parties’ Contentions A. Complainant
The Complainant indicates its company name is based on its founder’s name, Leon Breitling, as of its founding in 1884. It asserts that it is especially well known in the field of technical watches for aviators and pilots. It holds the BREITLING trademark in multiple classes and countries since approximately 2006, if not before, as well as being the owner of the domain name .
The Complainant provides documentation showing that the Respondent registered the domain name on April 9, 2018 with GMO Internet, Inc. O. The Complainant further asserts that it has not licensed or otherwise authorized the Respondent to use the BREITLING name or trademark in any fashion.
The Complainant alleges the Respondent’s domain name is identical or confusingly similar to its registered trademark by:
- incorporating the totality of the BREITLING trademark; and
- including the word “watches” which is the subject of their long-standing business.
It cites Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768, and related cases in support for this proposition.
It contends that adding that adding the geographical designation of “china”, does not sufficiently distinguish or differentiate the disputed name, as per Compagnie Gervais Danone v. marylee, Lee/Xiamen eNAme Network Co, WIPO Case No. D2015-0832.
Based on this, the Complainant contends that the disputed domain name must be considered as identical to its trademark under the principles of F. Hoffmann-La Roche AG v. WhoisGuard Protected, WhoisGuard, Inc./Vladimir Talko, WIPO Case No. D2017-0678.
The Complainant asserts that the Respondent has no legitimate rights to use an infringing domain name, as the Respondent is neither licensed to use it, nor otherwise able to claim a legitimate right (e.g. using its own name) as per Policy, paragraph 4(a)(ii) and Rules, paragraph 3(b)(ix)(2)). It asserts that (a) given the Breitling name is a world-famous watch brand, (b) best associated with watches for aviators, and (c) with no dictionary equivalent, the Respondent’s use of an infringing domain name to operate a website relating to aircrafts, reveals bad faith. To buttress this assertion, it cites the many attempts to reach the Respondent by email and registered mail, as to which it has received no response. Accordingly, under the provisions of Policy, paragraph 4(a)(iii)and Rules, paragraph 3(b)(ix)(3)),theComplainant asserts the Respondent’s registration and use is in bad faith.
In remedy, the Complainant seeks the Panel to order that be transferred to the Complainant.
The Complainant requests the language of the proceedings be English, giving full consideration to the parties’ level of comfort with each language (per Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679). It asserts that the Respondent’s registration of a domain name using Latin characters and English words indicates the Respondent is familiar with the English language. In contrast, since the Complainant is an entity based in Switzerland and unable to understand Japanese, the Complainant asserts holding the proceedings in English is the most fair. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Language of the Proceeding: The first item to address is the language of this administrative proceeding. The principle established under Rules, paragraph 11 (a), is 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.” Based on communications from the domain name registrar, GMO Internet, Inc. O, Japanese is the language of the registration agreement. Accordingly, the initial starting place for the language of the proceeding should be in Japanese, subject to the authority of the Panel to determine otherwise.
In this instance, the Panel notes that the Center sent the Respondent multiple email notices in English and Japanese explaining the proceedings and noting the Complainant’s request that the proceedings be held in English. Correspondence from the Center to the Respondent sent on October 11, 15, and 23 outlined the Complainant’s request for English and gave the Respondent a chance to respond with its preference.
The October 11 notice included a sentence in English and in Japanese stating, “Please Note that if we do not hear from you by this date (October 16, 2018), we will proceed on the basis that you have no objection to the Complainant’s request that English be the language of proceedings.” The October 15 email to the Respondent indicated the Complainant’s election for English proceedings and provided the Respondent until October 17 to reply. The October 23 email to the Respondent indicated the Center’s acceptance of the Complaint in English, but gave the Respondent the right to respond in either language.
To date, the Respondent has not replied to any of these attempts to reach it, whether to challenge the contentions of the Complainant, or to seek to hold these proceedings in Japanese. Moreover, the Panel notes that the disputed domain name incorporates the English words “china” and “watches”, which suggests that the Respondent has a certain knowledge of English. Accordingly, the Panel determines it proper to go forward in these proceedings in English. A. Identical or Confusingly Similar
The Respondent’s domain name uses the Complainant’s trademark in full. The addition of the word “watches” to the disputed domain name does not prevent a finding of confusing similarity. Likewise, the Panel does not find the addition of the word “china” to the domain name to in any way prevent a finding of confusing similarity. These findings are consistent with the case law as set forth in section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). See also Playboy Enterprises International Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768, Compagnie Gervais Danone v. marylee, Lee/Xiamen eNAme Network Co., WIPO Case No. D2015-0832, F. Hoffmann-La Roche AG v. WhoisGuard Protected, WhoisGuard, Inc./Vladimir Talko, WIPO Case No. D2017-0678, B. Rights or Legitimate Interests
The Panel determines that the Complainant has properly established its ownership of the BREITLING trademark via its many trademark registrations, and recognize it as a global well-known brand for watches and chronographs. Based on the available record and Policy, paragraph 4(a)(ii)and Rules, paragraph 3(b)(ix)(2),the Panel finds no rights or other legitimate interests which justify the Respondent’s registration and use of the Breitling name in the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds it difficult to believe that the Respondent was unaware of the brand Breitling, and just happened to make up the name and then accidentally match it to “watches”, the exact business the Complainant is in. The Panel’s own Google search of the Respondent revealed that it owns well over 90 domain names, from which the Panel concludes that the Respondent’s intent was most likely financially motivated. The fact that the Respondent has failed in any way to challenge the Complainant’s contentions further leads the Panel to the conclusion that its registration and use of the disputed domain name was done in bad faith as set forth under (Policy, paragraph 4(a)(iii) and Rules, paragraph 3(b)(ix)(3)). 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.
Haig Oghigian
Sole Panelist
Date: December 7, 2018
Full & Egal Universal Law Academy