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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Projectclub v. Royke Gunawan

Case No. D2016-2057

1. The Parties

The Complainant is Projectclub of Villeneuve d'Asco, France, represented by AARPI Clairmont Avocats, France.

The Respondent is Royke Gunawan of Jawa Barat, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <easybreath.info> is registered with CV. Jogjacamp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2016. On October 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 2016, 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 October 13, 2016 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 October 17, 2016.

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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 19, 2016. In accordance with paragraph 5 of the Rules, the due date for Response was November 8, 2016. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on November 9, 2016.

The Center appointed Brigitte Joppich as the sole panelist in this matter on November 11, 2016. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant is a subsidiary of Decathlon, a major French sporting goods retailer, operating 1,085 stores and employing more than 70,000 staff worldwide.

Decathlon designs and manufactures various products and markets such products using its own labels, inter alia,asnorkeling mask under the trademark EASYBREATH, which won the first prize at the 2014 Oxylane Innovation Awards. The Complainant is the registered owner of numerous trademarks for EASYBREATH, including International trademark registration No. 1227496 EASYBREATH, registered on June 10, 2014 in connection with goods in classes 9, 25, and 28 (hereinafter referred to as the EASYBREATH Mark).

The Respondent registered the disputed domain name on November 16, 2015 and is using it in connection with a website which advertises the EASYBREATH product using the Complainant’s graphics and photos and invites users to buy the said product at the website “www.amazon.com”. In addition, the Respondent’s website includes advertising banners for third parties’ products.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.

(1) The disputed domain name is identical to the EASYBREATH Mark as it wholly incorporates such mark and as the Top-Level Domain is to be ignored due to its functional aspect.

(2) The Respondent has no rights or legitimate interests in the disputed domain name as the Respondent is not known under the disputed domain name, as the Respondent does not own any rights in a trademark identical with or similar to the disputed domain name, as the Respondent is neither related to the Complainant’s business nor to one of its distributors, and as the Complainant has never licensed, authorized, or otherwise permitted the Respondent to register a domain name incorporating its trademarks, nor to make any use of its trademarks in order to distinguish its own business.

(3) The disputed domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant contends that it is highly unlikely that the Respondent registered the disputed domain name without any knowledge of the Complainant’s rights in the EASYBREATH Mark, as 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, and as the Respondent is using the disputed domain name in connection with a website featuring the Complainant’s products. With regard to bad faith use, the Complainant asserts that Internet users may be led to believe that the Complainant’s official website is available at the disputed domain name, redirecting to a website which constitutes a slavish reproduction of the official website belonging to the Complainant, and that the Respondent’s purpose in registering the disputed domain name was to capitalize on the reputation of the Complainant’s EASYBREATH Mark by diverting Internet users to the Respondent’s own website where consumers may purchase counterfeit goods offered and sold under the EASYBREATH Mark, and that the Respondent is fraudulently using images protected by copyright.

B. Respondent

The Respondent did not submit a formal Response. On October 24, 2016, the Respondent sent an informal email to the Center, which includes relevantly as follows: “Iam build website for sale this product afiliate at amazon and for enduser in Indonesia”.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name fully incorporates the Complainant’s EASYBREATH Mark and is identical with such mark.

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the disputed domain name will then shift to the respondent.

The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.

The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.

Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. In particular, the Respondent’s use is not bona fide use under the Policy. The Complainant states that the Respondent is selling unauthorized products but did not provide any evidence in this regard. The evidence on the available record demonstrates, however, that the Respondent used the disputed domain name in connection with a website offering products comparable to the Complainant’s products and using the Complainant’s images. Even if the goods sold at the website available at the disputed domain name had been genuine, the Respondent’s use would not have been bona fide under the Policy either. The Panel acknowledges that a reseller can make a bona fide offering of goods and services and thus have rights or legitimate interests in a domain name if the use fits certain requirements, with regard to the actual offering of goods, the use of the site to sell only the trademarked goods, and the site is accurately and prominently disclosing the registrant’s relationship with the trademark holder (cf. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data case”); Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095). According to the evidence on the available record, the website under the disputed domain name does not disclose the registrant’s relationship with the trademark holder and contains banners advertising third parties’ products. Therefore, the Respondent’s use of the disputed domain name does not meet the criteria set out in the Oki Data case.

Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the EASYBREATH Mark as the Respondent has used the disputed domain name in connection with a website featuring the Complainant’s products. In addition, the Respondent sent an informal email to the Center on October 24, 2016 stating that it built a website to sell the Complainant’s products in Indonesia.

As to bad faith use, by fully incorporating the EASYBREATH Mark into the disputed domain name and by using such domain name in connection with a website advertising the Complainant’s as well as third parties’ products, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy. The Panel is therefore satisfied that the Respondent also used the disputed domain name in bad faith.

Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) 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 name <easybreath.info> be transferred to the Complainant.

Brigitte Joppich
Sole Panelist
Date: November 23, 2016

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