Complainant is Projetclub, France, represented by AARPI Scan Avocats, France.
Respondent is Contact Privacy Inc. Customer 0155135159 / Snorkling mask, Admin, Easybreath Full Face Snorkeling Mask, Canada. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2019. On November 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 4, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 5, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. 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 Respondent of the Complaint, and the proceedings commenced on November 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 10, 2019. The Center appointed Robert A. Badgley as the sole panelist in this matter on December 16, 2019. 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 Complainant is a subsidiary of Decathlon a French company that designs and manufactures various “passion brand” products. Decathlon’s “Subea” brand is dedicated to diving sports. Decathlon’s annual turnover is roughly EUR 10 billion. One product manufactured and marketed by Complainant and Decathlon is the EASYBREATH snorkeling mask which, according to Complainant, “offers users the possibility of breathing easily under water through the nose and mouth, just as they do on land”. The EASYBREATH mask won first prize at the 2014 Oxylane Innovation Awards sporting goods event. The EASYBREATH mask has also been discussed in media publications and broadcasts. Complainant has maintained a website at “www.easybreath.fr” since 2013 to promote and sell its EASYBREATH snorkeling masks. Complainant holds French trademark REGISTRATION 4053624 for the word mark EASYBREATH, a mark registered on December 12, 2013. The Domain Name was registered on July 4, 2019. The Domain Name resolves to a website that sells snorkeling masks which, according to Complainant, are counterfeit products under the name EASYBREATH FULL FACE SNORKELING MASKS. There is no disclaimer on the website to disavow any affiliation with Complainant. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied the three elements required under the Policy for a transfer of the Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel concludes that Complainant has rights in the mark EASYBREATH through registration and use demonstrated in the record. The Panel also finds that the Domain Name is confusingly similar to Complainant’s mark. The Domain Name incorporates the EASYBREATH mark in its entirety and adds the descriptive term “snorkeling mask”, which is precisely what Complainant sells under that mark. Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding to articulate why he registered the Domain Name or otherwise explain his bona fides. The undisputed record shows that Respondent is unaffiliated with Complainant or Decathlon in any way, and that Respondent is using the Domain Name to sell snorkeling masks (whether real or counterfeit) under Complainant’s EASYBREATH mark. If Respondent were a legitimate reseller of Complainant’s snorkeling masks, the Panel would have expected Respondent to come forward to explain and justify its conduct. On this record, the Panel finds it more likely than not that Respondent is attempting, for commercial gain, to confuse consumers looking for Complainant’s website and products. That is not a legitimate use of the Domain Name and, indeed, is a bad faith use thereof. Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes that Respondent has registered and used the Domain Name in bad faith under the above-quoted Policy paragraph 4(b)(iv). The Panel incorporates its discussion from the prior section concerning Respondent’s illegitimate, bad faith use of the Domain Name. It is also obvious that Respondent had Complainant’s EASYBREATH mark in mind when registering the Domain Name. Complainant has established Policy paragraph 4(a)(iii). 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 Domain Name Robert A. Badgley
Sole Panelist
Date: December 18, 2019
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