Complainant is Montres Breguet SA, Switzerland, represented by The Swatch Group Ltd., Switzerland.
Respondent is 李明娇 (Ming Jiao Li), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2021. On February 22, 2021, the Center transmitted by email to the Registrar, a request for registrar verification in connection with the Domain Name. On February 23, 2021, the Registrar transmitted by email to the Center, its verification response disclosing registrant and the contact information for the Domain Name, which differed from the named Respondent and the contact information in the Complaint. The Center sent an email communication to Complainant on March 17, 2021 providing the registrant and contact information disclosed by the Registrar, inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on March 19, 2021. On March 17, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On March 19, 2021, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding. 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 Respondent in both English and Chinese, of the Complaint, and the proceedings commenced on March 23, 2021. In accordance with paragraph 5 of the Rules, the due date for the response was April 12, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 13, 2021. Prior to the filing of the Complaint, Complainant sent a cease and desist letter to Respondent on January 25, 2021, setting forth Complainant’s trademark rights and requesting Respondent to cease use of the Domain Name and to transfer the Domain Name to Complainant. Respondent did not reply. The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on April 20, 2021. 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 Breguet is a luxury watch, clock and jewelry manufacturer founded by Abraham-Louis Breguet in Paris, France in 1775. Complainant, MONTRES BREGUET SA, is a Swiss watch company which, since 1999, is fully owned by The Swatch Group Ltd., a global designer, manufacturer, seller and retailer of wristwatches encompassing brands such as OMEGA, TISSOT and SWATCH. Complainant promotes its BREGUET brand and products through its website at “www.breguet.com”, on various social media platforms and through sponsorship of major cultural events throughout the world. Complainant also operates a global network of boutiques, including in the United States of America (“United States”), East-Asian countries such as China and Japan. Complainant owns numerous registered trademarks for BREGUET, including the following: - International trademark for BREGUET word mark under trademark registration number 230825, registered on April 16, 1960; - Hong Kong, China trademark for BREGUET word mark under trademark registration number 19862380, registered on April 1, 1986; - International trademark for BREGUET word mark under trademark registration number 566731, registered on January 22, 1991; - United States trademark for BREGUET word mark under trademark registration number 3042405, registered on January 10, 2006; and - China trademark for BREGUET + aiguilles (clock hands) word and semi-figurative mark, under trademark registration number G877071, registered on January 31, 2006. Respondent registered the Domain Name on December 16, 2020. At the time of the filing of the Complaint, the Domain Name resolved to a web page that appeared to feature content from a Chinese company for construction. The record also shows that the content from Respondent’s web page appeared to be mostly copied or duplicated from a third party website at “www.sxsfjc.com” with minor variations. However, the record shows that the information displayed on Respondent’s website, such as phone numbers, email addresses, social media accounts appear to be non-functional or invalid and led to an error page. Likewise, the hyperlinks on Respondent’s website appear to be invalid and led to an error page. The website thus appeared to be an inactive or parking site. The website has since been locked by the Registrar and is inactive at the time of the Decision. 5. Parties’ Contentions A. Complainant Complainant contends that (i) the Domain Name is identical and confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith. In particular, Complainant contends that it has trademark registrations for the BREGUET marks and owns a domain name incorporating the BREGUET mark. Complainant contends that Respondent registered and is using the Domain Name, to confuse Internet users looking for bona fide and well-known BREGUET products and services. Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s mark, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Procedural Issue – Language of the Proceeding The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. Complainant submits in its communication to the Center on March 19, 2021 and in the Complaint that the language of the proceeding should be English. According to the information received from the Registrar, the language of the Registration Agreement is Chinese. Complainant notes that its business is headquartered in Switzerland and it operates its internationally diverse offices in the English language. Complainant contents that in light of the intentional misuse of Complainant’s famous BREGUET trademark by Respondent, it would not be fair or equitable to require Complainant to go to the unnecessary time and expense of translating its pleadings into another language. Complainant also contents that Respondent has chosen a Registrar based in Hong Kong, China; that English is one the official languages of Hong Kong, China for proceedings under the Hong Kong Basic Law (article 9) and the Official Languages Ordinance (chapter 5 of the Laws of Hong Kong) and thus English should be the language of the proceeding. In exercising its discretion to use a language other than that of the outstanding subject registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs. The Panel accepts Complainant’s submissions regarding the language of the proceeding. The Panel notes that in any case, all of the communications from the Center to the Parties were transmitted in both Chinese and English. Respondent chose not to comment on the language of the proceeding nor did Respondent choose to file a response. The Panel also notes that the Domain Name was registered in characters using the Roman alphabet. The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost-effective manner. Complainant may be unduly disadvantaged by having to translate all case relevant documents into Chinese and to conduct the proceeding in Chinese. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. 6.2. Substantive Issues Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (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 was registered and is being used in bad faith. Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, 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.” Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the BREGUET marks, which have been registered since at least as early as 1960, well before Respondent registered the Domain Name on December 16, 2020 as noted above. Complainant has also submitted evidence, which supports that BREGUET is a widely known trademark and a distinctive identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the BREGUET marks. With Complainant’s rights in the BREGUET marks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. Here, the Domain Name is confusingly similar to Complainant’s BREGUET marks. These marks, which are fanciful and inherently distinctive, are recognizable in the Domain Name. The complete incorporation of the BREGUET mark and the voluntary addition of the term “montres”, which is the French word for “watches”, in the Domain Name does not prevent a finding of confusing similarity between Complainant’s trademarks and the Domain Name registered by Respondent. Thus, the Panel finds that Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the BREGUET marks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the BREGUET trademarks or to seek registration of any domain name incorporating the trademarks. Respondent is also not known to be associated with or commonly known by the BREGUET marks. In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that the Domain Name resolves to a web page that appears to be an inactive or error page. In particular, at the time of the filing of the Complaint, the Complaint resolved to a web page that appeared to feature content from a Chinese company for construction. The record also shows that the content from Respondent’s web page appeared to be mostly copied or duplicated from a third party website at “www.sxsfjc.com” with minor variations. However, the record shows that the information displayed on Respondent’s website, such as phone numbers, email addresses, social media accounts appear to be non-functional or invalid and led to an error page. Likewise, the hyperlinks on Respondent’s website appear to be invalid and led to an error page. The website thus appeared to be an inactive or parking site. The website has since been locked by the Registrar and is inactive at the time of the Decision. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name. Further, the nature of the Domain Name carries a risk of implied affiliation with Complainant (see WIPO Overview 3.0, section 2.5.1). Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely: “(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 Panel finds that Complainant provided ample evidence to show that registration and use of the BREGUET marks long predate the registration of the Domain Name by Respondent. Complainant is also well established and known. Indeed, the record shows that Complainant’s BREGUET marks and related services are widely known and recognized. Therefore, Respondent was likely aware of the BREGUET marks when it registered the Domain Name, or knew or should have known that the Domain Name was identical or confusingly similar to Complainant’s marks. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Under the circumstances, Respondent’s registration of the Domain Name incorporating Complainant’s widely-known BREGUET trademark in its entirety, suggests that Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the BREGUET marks, in an effort to opportunistically capitalize on the registration and use of the Domain Name. The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007). Further, the Domain Name not only incorporates Complainant’s BREGUET mark in its entirety, it also incorporates an intentional addition of the term “montres”, which is the French word for watches, in the Domain Name Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and Complainant succeeds under the third element 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 Domain Name Kimberley Chen Nobles
Sole Panelist
Date: April 23, 2021
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