The Complainant is Projectclub, of France, represented by Scan Avocats AARPI, France.
The Respondent is Whois Privacy Protection Service / Volodymyr Zabolotovskiy, TOVARYSTVO Z OBMEZHENOYU VIDPOVIDALNISTYU “RCG”, Ukraine. 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 June 4, 2020. On June 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 5, 2020, 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 June 18, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 22, 2020. The Registrar confirmed that the language of the Registration Agreement for the Disputed Domain Name is Ukrainian. On June 8, 2020, the Center sent an email communication in both English and in Ukrainian to the Parties regarding the language of the proceeding. On June 22, 2020, the Complainant requested the language of the proceeding to be English. The Respondent did not submit any comments on the language of the proceeding. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of .UA Domain Name Dispute Resolution Policy (the “.UA Policy”), the Rules for .UA Domain Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”). In accordance with the .UA Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in both English and Ukrainian, and the proceedings commenced on July 2, 2020. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was July 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2020. The Center appointed Mariya Koval as the sole panelist in this matter on August 13, 2020. 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 .UA Rules, paragraph 7. 4. Factual Background The Complainant is a subsidiary of company Decathlon. Decathlon, registered in 1980, is one of the largest French manufacturers and retailers of sport equipment and sport accessories in the world, operating more than 1520 stores in 54 countries. The Complainant employs more than 85,000 staff from 80 different nationalities. In 2018, it has annual sales of nearly EUR 11.3 billion. Decathlon designs and manufactures several lines of its own which are marketed under twenty dedicated “Passion Brands”. As such, the Tribord brand is dedicated to water sports and the Subea brand is dedicated to diving among which is an innovative snorkeling mask under the trademark EASYBREATH (the “EASYBREATH Trademark”). The Complainant is the owner of numerous EASYBREATH Trademark registrations, however for the purposes of its Complaint it pointed out two Trademark registrations: - French trademark EASYBREATH No. 4053624, filed on December 10, 2013 in respect of goods in classes 9, 25, 28; - International trademark EASYBREATH No. 1227496, registered on June 10, 2014 in respect of goods in classes 9, 25, 28; The Complainant operates the domain name The products under the Complainant’s EASYBREATH Trademark, namely innovative snorkeling masks, are extremely successful and have received the first prize at the international competition of new products related to recreational sporting goods “2014 Oxylane Innovation Awards”. Moreover, the EASYBREATH masks have been subjects of several articles in the media (national and international). The Disputed Domain Name was registered on February 22, 2016. At the time of the filing of the complaint and at the date of this decision, the Disputed Domain Name resolves to an active website in Russian offering the masks under the EASYBREATH Trademark, which are alleged counterfeit products. 5. Parties’ Contentions A. Complainant The Complainant contends that since its launch in Spring 2014, it has devoted substantial resources to advertise and promote its products under the EASYBREATH Trademark. In addition to its own advertising efforts, the products under the EASYBREATH Trademark has been the subject of several articles in the media, including national and international prints. The EASYBREATH Trademark already benefits from a reputation with the French and foreign consumers. The Complainant claims that that the Disputed Domain Name is identical to its EASYBREATH Trademark as its Trademark is entirely reproduced in the Disputed Domain Name without any other element added. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name in view of the following: - to the Complainant’s best knowledge the Respondent is not currently and has never been known under the Disputed Domain Name; - the Complainant states that it did not know the Respondent and ascertains that the Respondent is not in any way related to its business, is not one of its distributors and does not carry out any activity for or has any business with it; - the Complainant has never licensed, authorized, or otherwise permitted the Respondent to register a domain name incorporating its Trademark, nor to make any use of the Trademark in order to distinguish its own business; - the Complainant’s rights in the EASYBREATH Trademark in Ukraine preceded the Respondent’s registration of the Disputed Domain Name by a number of years; - the Respondent was never authorized to act as official online store and offline distributor offering the Complainant’s goods; - to the Complainant’s best knowledge the Respondent was well aware of the Complainant’s EASYBREATH Trademark when registering the Disputed Domain Name; - The Respondent failed to indicate precisely the Respondent’s relationship with the Complainant and to include a disclaimer on the website under the Disputed Domain Name, in conjunction with the Respondent’s adoption of the Complainant’s Trademark on the top of the website. The Complainant also alleges that the Respondent registered and is using the Disputed Domain Name in bad faith in view of the following facts: - the EASYBREATH Trademark and the Complainant’s domain name - the Disputed Domain Name is identical to the Complainant’s Trademark; - any search for “easybreath” conducted with a search engine such as Google leads in the first place to websites relating to the Complainant and its products; - it is highly unlikely that the Respondent’s choice to register the Disputed Domain Name identical to the Complainant’s Trademark was purely coincidental; - the Respondent was fully aware of the Complainant’s prior rights, considering the popularity of the EASYBREATH Trademark in the snorkeling masks industry, and registered the Disputed Domain Name for the sole purpose of attracting the Complainant’s customers; - the Disputed Domain Name is currently used to resolve a website selling masks under the name Easybreath that are copies of the original Easybreath masks; - by using the Disputed Domain Name to sell confusingly similar, if not counterfeit, masks, the Respondent is not only causing harm to the Complainant to an economic point of view but may also create high risks for the consumers in terms of safety and security; - the Respondent is using privacy service Domain Shield to cover his identity which clearly points at bad faith; - the website under the Disputed Domain Name does not contain any references to the person or company selling the goods. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the .UA Policy binds the Complainant to prove each of the following three elements to succeed: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in the disputed domain name; and (iii) the disputed domain name has been registered or is being used in bad faith. 6.1. Preliminary Issue: Language of Proceedings In accordance with paragraph 11 of the .UA Rules, 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 Registrar confirmed that the language of the registration agreement for the Disputed Domain Name is Ukrainian. The Complainant filed a request for the English language proceeding, submitting the following arguments: - the Disputed Domain Name is registered in Latin characters rather than Russian script; - the wording “EASYBREATH” refers directly to the Complainant’s company and trademarks; - the website under the Disputed Domain Name reproduces the Complainant’s EASYBREATH Trademark, which is written in Latin characters. - the Respondent must be familiar with the English language, as far as the Complainant does not operate an official website in Ukrainian. The Complainant claims that the Respondent copies photos and translates all product descriptions and product information from English to Ukrainian. Neither the Complainant, nor its representative are not obviously able to understand and to communicate in Ukrainian. Forcing the Complainant to translate the Complaint and annexes thereto, would result in unfair additional expenses for the Complainant and would delay this proceeding. The Disputed Domain Name and country code Top-Level-Domain (“ccTLD”) comprise Latin script. Furthermore, the Respondent, having received the Center’s communication regarding the language of the proceeding, also in both English and Ukrainian, did not make any submissions regarding the language of the proceeding. Paragraph 10(c) of the .UA Rules sets out that the Panel shall ensure that the administrative proceeding takes place with due expedition. Having considered all circumstances of this case, the Panel concludes under paragraph 11(a) of the .UA Rules that English shall be the language of the proceeding. 6.2. Substantive Issues A. Identical or Confusingly Similar In accordance with paragraph 4(a)(i) of the .UA Policy it should be established that the disputed domain name is identical or confusingly similar to a mark in which the complainant has rights. The Complainant has proved that it has established rights in the EASYBREATH Trademark since 2013. The Panel finds that the EASYBREATH Trademark has a strong distinctive character and it is highly improbable that the Respondent has chosen the Disputed Domain Name accidentally, without an intention of consumers’ confusion with the Complainant’s Trademark. The Disputed Domain Name consists of complete reproduction of the EASYBREATH Trademark combining with the ccTLD “.com.ua”. In accordance with prior decisions under the .UA Policy, the applicable ccTLD in a domain name is viewed as a standard registration requirement and as such is generally disregarded under the first element confusing similarity test. See AB Electrolux v. Захаров Евгений,WIPO Case No. DUA2020-0006. The Panel considers it is appropriate to apply the same rules in this proceeding regarding ccTLD “.com.ua”. Therefore, the addition of the ccTLD “.com.ua” to the Disputed Domain Name in this case does not prevent a finding of identity or confusing similarity between the Complainant’s Trademark and the Disputed Domain Name. Accordingly, the Panel holds that the Disputed Domain Name is identical to the Complainant’s EASYBREATH Trademark in which the Complainant has rights. Therefore, the Panel finds that the Complainant has satisfied the first element of the .UA Policy. B. Rights or Legitimate Interests In accordance with the paragraph 4(a)(ii) of the .UA Policy the Complainant must demonstrate that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has used its EASYBREATH Trademark and its domain name ˂easybreath.fr˃ since 2013, which means three years before the Respondent registered the Disputed Domain Name in 2016. The Complainant alleges that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has never licensed, authorized, or otherwise permitted in any way the Respondent to use the Complainant’s EASYBREATH Trademark. The Complainant does not have any relationship or association with the Respondent. The Respondent, selling on its website the masks, which are claimed to be copies of Easybreath masks, is neither an authorized retailer nor a distributor of the Complainant. The Respondent is not affiliated or connected by any means with the Complainant. The Respondent is not using the Disputed Domain Name to offer bona fide goods and services and is not making a legitimate non-commercial or fair use of it Disputed Domain Name. Conversely, the Respondent is operating the Disputed Domain Name for redirecting Internet users to a website selling competing, if not counterfeit, and anyway unauthorized products under the Complainant’s EASYBREATH Trademark, that anyway cannot constitute bona fide offering goods (see e.g. Paragon Gifts, Inc. v. Domain.Contact,WIPO Case No. D2004-0107 “Respondent is attracting traffic by creating confusion among Complainant’s customers, by using a domain name that is confusingly similar to Complainant’s trademarks, and re-directing such traffic to Complainant’s site for a profit. Such use cannot be deemed a bona fide offering of goods or services”). Therefore, the Panel concludes that the Disputed Domain Name has been registered and is using by the Respondent with the sole intention of obtaining the benefit from the Complainant’s reputation, which is a use from which rights or legitimate interests cannot arise in this case. The fact that the Respondent is offering the masks under the Complainant’s Trademark on the website under the Disputed Domain Name also evidences that the Respondent was well aware of the Complainant’s EASYBREATH Trademark when registering the Disputed Domain Name. Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to “corner the market” in domain names that reflect the trademark. As is seen from the circumstances of this case it is obvious that the website under the Disputed Domain Name was designed to create an impression of official or related Complainant’s website, without being the same. Thus, the Respondent does not match the conditions of the Oki Data test. Therefore in view of the above and in view of the Respondent has never been provided by any permissions or licences by the Complainant there is no bona fide offering of goods and services and the Respondent consequently does not have a legitimate interest in such Disputed Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the .UA Policy. C. Registered or Used in Bad Faith The Complainant has used its EASYBREATH Trademark in commerce for more than three years prior to the registration of the Disputed Domain Name, therefore it is likely that the Respondent was well aware of the Complainant’s Trademark when he registered the Disputed Domain Name. The Respondent has registered and is using the Disputed Domain Name for the purpose of attracting the Internet users to its competing website by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and of the products sold on it, see, e.g., Normalu SA v. Privacyprotect.org,WIPOCase No. D2011-0444. Taking into consideration that the Complainant is actively engaged in selling its masks under the EASYBREATH Trademark on the Internet, the Internet users will most likely consider that the Disputed Domain Name refers to the one of the Complainant’s or its distributor’s official websites where they can purchase the masks. Accessing the Disputed Domain Name, the Internet users would suppose that the Disputed Domain Name is definitely related to or associated with the Complainant and the Complainant’s products, and accordingly would suppose that offering products are original Easybreath masks. Furthermore, where it appears that a respondent employs a privacy or proxy service merely to avoid being notified of a proceeding filed against it, panels tend to find that this supports an inference of bad faith; a respondent filing a response may refute such inference. In this case the Respondent did not file any response and did not take any attempts for justification its actions in respect of the Disputed Domain Name registration and use. Taking into consideration that the Complainant’s EASYBREATH Trademark has been completely incorporated into the Disputed Domain Name and that the Respondent has tried to divert the consumers of the Complainant’s products to its website for commercial gain, the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith. Accordingly, the Panel considers the third element has been successfully satisfied. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the .UA Policy and 15 of the .UA Rules, the Panel orders that the Disputed Domain Name Mariya Koval
Sole Panelist
Date: August 27, 2020
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