WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Breitling SA v. Will Wang

Case No. D2018-0829

1. The Parties

Complainant is Breitling SA of Grenchen, Switzerland, represented by B.M.G. Avocats, Switzerland.

Respondent is Will Wang of Los Angeles, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <breitling-global.com>, <breitling-vip.com> and <global-breitling.com> are registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2018. On April 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 16, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 17, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 18, 2018¹.

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 of the Complaint, and the proceedings commenced on April 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 11, 2018.

The Center appointed Roberto Bianchi as the sole panelist in this matter on May 15, 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

Complainant, a Swiss company founded in 1884, manufactures high-end chronographs, watches and related accessories.

Complainant (directly or through its subsidiary Breitling USA) owns trademark registrations in numerous jurisdictions, including the following:

BREITLING & design, International registration No. 613794, Registration Date January 7, 1994, covering precious metals, jewelry, horological and chronometric instruments in International Class 14.

BREITLING, International registration No. 890749, Registration Date June 1, 2006, covering precious metals, jewelry, horological and chronometric instruments in International Class 14.

BREITLING & design, United States registration No. 2352162, Registration Date May 23, 2000, filed on March 8, 1996, covering horological instruments and chronometrical instruments, namely watches, wrist-watches, straps for wrist-watches and watchcases, travel clocks, clocks, chronographs, chronometers, in International Class 14. First use 1884, first use in commerce 1947.

BREITLING, United States registration No. 2964474, Registration Date July 5, 2005, filed on June 18, 2002, covering horological instruments and chronometrical instruments, namely watches, wrist-watches, straps for wrist-watches and watchcases, travel clocks, clocks, chronographs, chronometers, in International Class 14, and caps, scarves, t-shirts, polo-shirts, jackets, pilot jackets, bomber’s jackets, parka jackets, in International Class 25. First use in commerce 1990.

Complainant also owns the domain name <breitling.com>, which resolves to its official website “www.breitling.com”.

The disputed domain names <breitling-vip.com>, <breitling-global.com> and <global-breitling.com> were registered on January 18, 2018. The disputed domain names <breitling-global.com> and <breitling-vip.com> resolve to a website parked with the Registrar. The disputed domain name <global-breitling.com> resolves to a website for download of torrents.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights. The disputed domain names wholly incorporate Complainant’s registered BREITLING trademark, which is sufficient to establish confusing similarity. The addition of the generic term “vip” or “global” does not prevent the confusing similarity and even further creates confusion arising from the incorporation of Complainant’s trademark. The descriptive term “vip” (an acronym for “very important person” or, more generally, an indication of high quality or luxury) is in direct connection with the world of “Breitling”, relating to luxury watches. The term “global” highlights the worldwide reputation of Complainant, since it owns stores around the world.

Respondent has no rights or legitimate interests in respect of the disputed domain names. Respondent is not a licensee of Complainant, nor has Complainant granted Respondent any authorization to use the disputed domain names. Moreover, there is no indication that the disputed domain names correspond to Respondent’s name. As shown below, Respondent is not making a legitimate noncommercial use of the disputed domain names.

The disputed domain names were registered and are being used in bad faith. The disputed domain names <breitling-vip.com> and <breitling-global.com> resolve to parking websites, so that the registration of said disputed domain names constitutes “passive holding”, which does not prevent a finding of bad faith. UDRP panels must examine all the circumstances of the case to determine whether the respondent is acting in bad faith, and may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and section 3.2 of the WIPO Overview of WIPO Panel Views on selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The disputed domain name <global-breitling.com> resolves to the website “www.bmovies.film” that looks like it contains a database for movies. The circumstances of this case clearly show that Respondent is acting in bad faith, both with respect to the “passive holding” of the disputed domain names <breitling-vip.com> and <breitling-global.com>, as to the website to which the disputed domain name <global-breitling.com> resolves.

Respondent has registered the disputed domain names long after Complainant’s use and registration of its trademark BREITLING in various regions of the world. The mark BREITLING is not a dictionary word and has no particular meaning. There is no plausible reason for Respondent’s choice of the disputed domain names other than the will to unfairly profit from the confusion with Complainant’s trademark BREITLING.

Complainant produces and sells high-end watches. Its trademark BREITLING is famous and internationally well-known (see Breitling SA, Breitling USA Inc. v. Acme Mail, WIPO Case No. D2008-1000). The disputed domain names wholly incorporate the trademark of Complainant. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith, including domain names incorporating the mark plus a descriptive term (see WIPO Overview 3.0, section 3.1.4).

In addition, Respondent never replied to Complainant’s cease and desist letters before initiating the present proceedings, asking for the transfer of the disputed domain names.

Finally, the fact that the disputed domain name <global-breitling.com> resolves to a website (“www.bmovies.film”) that contains a potential ransomware virus shows that Respondent registered the disputed domain names in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

By submitting printouts taken from the official trademark databases, Complainant has shown to the satisfaction of the Panel that it owns trademark rights in the BREITLING mark. See section 4 above.

The Panel notes that in the disputed domain names the mark BREITLING is incorporated in its entirety, with the addition of the descriptive or dictionary term “global” and a hyphen in <breitling-global.com> and <global-breitling.com>, and of the descriptive or dictionary term “vip” and a hyphen in <breitling-vip.com>. It is well established by previous UDRP panels that the addition in a domain name of such kind of terms is inapt to distinguish a domain name from the mark it incorporates. See WIPO Overview 3.0, section 1.8 (“Is a domain name consisting of a trademark and a descriptive or geographical term confusingly similar to a complainant’s trademark? Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”)

Accordingly, the Panel finds that the disputed domain names are confusingly similar to a mark in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain names. Complainant states that Respondent is not a licensee of Complainant, and that Complainant has not granted Respondent any authorization to use the BREITLING mark in the disputed domain names. Complainant adds that nothing indicates that the disputed domain names might correspond to Respondent’s name. Lastly, Complainant says that the disputed domain names <breitling-vip.com> and <breitling-global.com> resolve to parking websites, while the disputed domain name <global-breitling.com> resolves to a website (“www.bmovies.film”) that contains a potential ransomware virus. According to Complainant, Respondent is not making a legitimate noncommercial use of the disputed domain names.

The Panel notes that at the time of drafting this Decision the disputed domain names <breitling-global.com> and <breitling-vip.com> resolved to a website parked with the Registrar NameSilo, LLC showing a text stating that each disputed domain name is parked free of charge, and describing the services provided by this Registrar. The disputed domain name <global-breitling.com> resolved to a website displaying a page entitled “Seedpeer”, which relates to a provider of torrent downloading of files.²

It is evident that in the disputed domain names Complainant’s mark BREITLING is being used to attract Internet users presumably looking for Complainant or its products, and divert them to Internet locations clearly unrelated to Complainant. The Panel considers that this use of the disputed domain names is neither a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i), nor a fair or legitimate noncommercial use under Policy paragraph 4(c)(iii). Further, the Panel notes that according to the relevant WhoIs data, the registrant of the disputed domain names is “Will Wang”, which in absence of any evidence that Respondent is known by any of the disputed domain names means that Policy paragraph 4(c)(ii) is inapplicable. Lastly, Respondent does not have any license or authorization by Complainant to use the disputed domain names. The Panel considers that the available evidence is sufficient for Complainant to make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names.

Since Respondent failed to answer to Complainant’s cease and desist letters and to provide any explanation for his registration and use (or lack of use) of the disputed domain names, the Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain names. See WIPO Overview 3.0, section 2.1 (“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”)

C. Registered and Used in Bad Faith

The Panel notes that the registration of Complainant’s marks predates the registration of the disputed domain names by many years. See section 4 above. In addition, the inclusion in the disputed domain names of the terms “global” and “vip” reinforces their association with Complainant’s mark. Further, the Panel agrees with prior UDRP panels that Complainant’s mark is notorious or internationally well-known and enjoys strong reputation in respect of high quality watches. See, among others, Breitling SA v. Name Redacted, WIPO Case No. D2018-0258, Breitling SA v. 罗元凡, Luo Yuan Fan, WIPO Case No. D2018-0198 and Breitling SA v. Jaylee Greta, WIPO Case No. D2016-1544. These facts indicate that Respondent must have known of and targeted Complainant, its mark and products at the time of registering the disputed domain names. In the circumstances of this case, this means that the registration of the disputed domain names was in bad faith.

Complainant has shown that at the time of submitting the Complaint, two of the disputed domain names resolved to parking sites provided by the Registrar, while the remaining disputed domain name resolved to a website allegedly lodging a computer virus. To the extent that the parked disputed domain names were inactive, the Panel considers that such inaction does not preclude a finding of use in bad faith under the following relevant circumstances:

(i) Complainant’s mark BREITLING is highly distinctive of the goods it covers, and enjoys a substantial reputation;

(ii) Respondent failed to reply to Complainant’s cease and desist letter and its reminder;

(iii) it would be implausible that any of the disputed domain names could be used other than as shown, i.e. by creating confusion with Complainant’s mark presumably to unfairly obtain a profit;

(iv) Respondent failed to submit a response or to provide any evidence of actual or contemplated use in good faith;

(v) as reported by the courier to the Center, the receiver’s (i.e., Respondent Will Wang’s) postcode and/or city are not valid, which means that Respondent presumably provided incomplete or false contact details at the time of registering the disputed domain names.

See WIPO Overview 3.0, section 3.3. (“Can the “passive holding” or non-use of a domain name support a finding of bad faith? From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”)

To the extent that the disputed domain name <global-breitling.com> previously resolved to the website “www.bmovies.film” (allegedly lodging a computer virus) and presently resolves to a website displaying the name of a provider of torrent downloading of files (see section 6.B above), it shows that Respondent presumably is intentionally attempting to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. This is a circumstance of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv).

For all the above, the Panel finds that the disputed domain names were registered and are being used in bad faith.

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 names <breitling-global.com>, <breitling-vip.com> and <global-breitling.com> be transferred to Complainant.

Roberto Bianchi
Sole Panelist
Date: May 25, 2018

¹ Please note that the Complaint was initially filed against a privacy shield service which was replaced with the underlying registrant in the amended Complaint.

² See WIPO Overview 3.0, section 4.8 (“May a panel perform independent research in assessing the case merits? Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases.”)