WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Projetclub v. Pyanih Aleksej Alekseevich

Case No. D2018-0928

1. The Parties

The Complainant is Projetclub of Villeneuve D’Ascq, France, represented by AARPI Scan Avocats, France.

The Respondent is Pyanih Aleksej Alekseevich of Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <easybreath.online> is registered with Regtime Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2018. On May 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Complaint was submitted in the English language. The language of the Registration Agreement for the disputed domain name is Russian. On May 3, 2018, the Center sent a “language of proceeding” communication to the Parties in both English and Russian. On May 4, 2018, the Complainant confirmed its request that English be the language of the proceeding as submitted in the Complaint. The Respondent did not reply to the Center’s communication regarding the language of the proceeding or to the Complainant’s submission of May 4, 2018.

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 the Respondent of the Complaint, and the proceedings commenced on May 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2018.

The Center appointed Assen Alexiev as the sole panelist in this matter on June 6, 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.

In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the 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 Complainant has submitted its Complaint in the English language, and has requested the proceeding to be held in English. The Center has sent all its messages to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has refrained from doing so, and has thus not objected to the Complainant’s request the proceedings to be held in English.

In these circumstances, it appears to the Panel that using the English language in this proceeding will be fair and efficient and will not put either of the Parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. At the same time, the Panel will take into account all evidence in the case file available in English or Russian languages.

4. Factual Background

The Complainant is a subsidiary of Decathlon – a major French manufacturer established in 1980 and specialized in the conception and retailing of sporting and leisure goods. In 2016, Decathlon employed 78,000 employees worldwide, operated 1,171 stores, and had annual sales of nearly EUR 10 billion.

Decathlon is internationally oriented, and 65 per cent of its stores are located outside of the European Union.

Decathlon designs and manufactures several lines of its own products. Among its products dedicated to water sports and diving is a snorkeling mask sold under the trademark EASYBREATH.

The Complainant is the registered owner of trademark registrations for EASYBREATH, including the following trademarks:

- the French trademark EASYBREATH with registration No. 4053624, registered on December 10, 2013 for goods and services in International classes 9, 25, and 28; and

- the International trademark EASYBREATH with registration No. 1227496, designating among others the Russian Federation, registered on June 10, 2014 for goods and services in International classes 9, 25, and 28.

The Complainant has also registered and used the domain name <easybreath.fr> on October 23, 2013.

The disputed domain name was registered on March 12, 2018. It resolves to a website seemingly offering different types of Easybreath full face snorkeling masks.

5. Parties’ Contentions

A. Complainant

The Complainant states that its EASYBREATH product received the first prize at the 2014 Oxylane Innovation Awards and has since then been the subject of several articles in the media in France and internationally.

According to the Complainant, the disputed domain name is identical to the EASYBREATH trademark as the term “easybreath” is entirely reproduced in the disputed domain name without the addition of other elements.

The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not known by the disputed domain name and does not have trademarks identical or similar to it. The Respondent is not related to the Complainant, and the Complainant has never authorized the Respondent to register a domain name incorporating the EASYBREATH trademark. The Respondent is using the disputed domain name to redirect users to a website offering competing, if not counterfeiting, products under the Complainant’s EASYBREATH trademark, without disclosing the lack of relationship with the Complainant.

The website operated under the disputed domain name resolves to a website which offers for sale masks under the names Easybreath and Tribord, that are copies of the Easybreath masks created by the Complainant. This aims at creating the appearance that both Parties are related and the Respondent is seeking to benefit from the reputation and quality of the products originating from the Complainant. The Respondent is using the Complainant’s trademark to sell (alleged) counterfeit products.

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent was well aware of the Complainant and registered the disputed domain name for the sole purpose of attracting and misleading the Complainant’s customers, because the EASYBREATH trademark was registered before the disputed domain name, which is identical to the trademark, and an Internet search for “easybreath” leads to websites relating to the Complainant and its products. The disputed domain name resolves to a website selling confusingly similar, if not counterfeit, snorkeling masks under the Complainant’s EASYBREATH trademark, which might be detrimental to the Complainant and may also create safety risks for the consumers. The Respondent is also referring on its website to another Decathlon brand – Tribord, which is dedicated to watersports and diving sports. According to the Complainant, this shows that the Respondent has registered and is using the disputed domain name to capitalize on the reputation of the Complainant’s EASYBREATH trademark by confusing and diverting Internet users seeking the snorkeling masks products of the Complainant to the Respondent’s own website where consumers may purchase confusingly similar, if not counterfeit, masks offered and sold under the EASYBREATH trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a Response addressing the contention of the Complainant and the evidence submitted by it.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the EASYBREATH trademark.

The Panel notes in this regard that as summarized in section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the applicable generic Top-Level Domain (“gTLD”) in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. The practice of disregarding the gTLD in determining identity or confusing similarity is applied irrespective of the particular gTLD, including generally with regard to “new gTLDs”; the ordinary meaning ascribed to a particular gTLD would not necessarily impact assessment of the first element. The Panel sees no reason not to follow the same approach here, so it will disregard the “.online” gTLD section of the disputed domain name.

The relevant part of the disputed domain name is therefore the section “easybreath”, which is identical to the EASYBREATH trademark.

In view of the above, the Panel finds that the disputed domain name is identical to the EASYBREATH trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, previous UDRP 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. See section 2.1 of WIPO Overview 3.0.

The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not related to the Complainant and has not been authorized by the Complainant to register and use domain names incorporating the EASYBREATH trademark and that the Respondent is not commonly known by the disputed domain name. Rather, the Respondent has used the disputed domain name in relation to a website offering unauthorized or counterfeit snorkeling masks under the Complainant’s EASYBREATH trademark. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not alleged that is has rights and legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding.

The disputed domain name incorporates the EASYBREATH trademark entirely and is identical to it. This makes it likely that Internet users may regard the disputed domain name as being an official online location of the Complainant for its EASYBREATH products. This likelihood of confusion is further increased by the Respondent’s use of the disputed domain name for a website that supposedly offers products under the Complainant’s EASYBREATH trademark that in any event compete with the Complainant’s snorkeling masks.

On the basis of the above, the Panel is satisfied that the Respondent, being well aware of the Complainant, registered and used the disputed domain name in an attempt to exploit the popularity of the EASYBREATH trademark to attract the attention of Internet users and to mislead them that the disputed domain name and the associated website represent an official online location of the Complainant, and to offer them products under the Complainant’s EASYBREATH trademark that compete with the Complainant’s snorkeling masks, without disclosing the lack of any relationship with or endorsement by the Complainant. In the Panel’s view, such conduct does not appear to be legitimate and cannot be regarded as giving rise to rights and legitimate interests of the Respondent.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, 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 web site or other on-line 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 provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

As discussed above, the disputed domain name fully incorporates the EASYBREATH trademark and is identical to it. The Respondent does not deny that the disputed domain name is linked to a website offering products under the Complainant’s EASYBREATH trademark that are counterfeit and compete with the Complainant’s snorkeling masks.

On the basis of the above, and in view of the considerations of the Panel set out in the section related to rights and legitimate interests, the Panel finds that the Respondent registered the disputed domain name with knowledge of the Complainant and targeting the EASYBREATH trademark in an attempt to attract traffic to the disputed domain name and to the associated website by confusing Internet users that they are reaching an official online location of the Complainant. On the basis of the above, the Panel accepts that this conduct of the Respondent amounts to bad faith registration of the disputed domain name.

The Respondent has not denied that the disputed domain name is being used in connection to a website that offers products falsely bearing the Complainant’s EASYBREATH trademark that compete with the Complainant’s snorkeling masks, without disclosing the lack of relationship between the Parties. Such use may confuse Internet users that they are offered original products of the Complainant by the Complainant itself. In view of this, the Panel accepts that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with the Complainant’s EASYBREATH trademark as to the source, sponsorship, affiliation, or endorsement by the Complainant of the Respondent’s website and of the products offered at the Respondent’s website. Therefore, the Panel finds that the disputed domain name has been 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 name <easybreath.online> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: June 29, 2018