WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Montres Breguet SA, Tissot SA, Blancpain SA v. Fancy Bandwith, Fancy Bandwith Inc.
Case No. D2016-1198
1. The Parties
The Complainant is Montres Breguet SA of L’Abbaye, Switzerland, Tissot SA of Le Locle, Switzerland and Blancpain SA of Le Brassus, Switzerland, represented by Accent Law Group, Inc., United States of America (“United States”).
The Respondent is Fancy Bandwith, Fancy Bandwith Inc. of Los Angeles, California, United States.
2. The Domain Names and Registrar
The disputed domain names <wwwblancpain.com>, <wwwbreguet.com> and <wwwtissot.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2016. On June 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 15, 2016, 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 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 July 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2016.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on August 2, 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 the Rules, paragraph 7.
4. Factual Background
The Complainants are three manufacturers of watches.
The Complainant Montres Breguet SA is a watch manufacturing establishment that has been using the trademark BREGUET since the year 1775. The Complainant is the owner of the trademark BREGUET registered in the European Union, the United States and 38 other jurisdictions, among others, International Registration no. 566731 of January 22, 1991.
The Complainant Tissot SA is a manufacturer of specialty wristwatches. The Complainant Tissot SA is the owner of the TISSOT trademark registered in European Union, the United States and 62 other jurisdictions, among others, International Registration no. 729106 of February 23, 2000. The trademark has been in use for over 160 years.
The Complainant Blancpain SA is the owner of the BLANCPAIN trademark registered in the European Union, the United States and several other jurisdictions, among others, International Registration No. 190558 of February 8, 1956. The trademark has been in use since the year 1735.
The disputed domain names are being used to redirect Internet users to an online shop offering watches for sale.
The disputed domain names were all registered on February 14, 2012.
5. Parties’ Contentions
Each of the disputed domain names are identical or confusingly similar to one of the trademarks owned by the Complainants. The Respondent initially attracts searchers to its address by using the BREGUET, TISSOT, and BLANCPAIN marks and thereby makes visitors think that they are being linked to one of the Complainants’ legitimate websites.
With respect to legitimate rights or interests, the Complainants state that:
- The Respondent’s actions are not a bona fide offering of goods or services under Policy.
- Each of the disputed domain names automatically redirect visitors to a third-party website “www.watchesonnet.com”.
- Neither the Respondent nor the owner of the website are affiliated with, or authorized by the Complainants to use the disputed domain names but the website gives the false impression that they are, in fact, so affiliated and authorized.
- The Respondent does not meet the bona fide use standards set out in the seminal case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Complainant states that the Respondent in the present case, fails at least the first, second, and third prongs of the Oki Data test.
- The WhoIs records for the disputed domains names list the Respondent as “Fancy Bandwith.” With respect to section 4(c)(ii) of the Policy, the Respondent is not commonly known by the disputed domains names nor does the Respondent operate a legitimate business or other organization under these marks or names and does not own any trademark or service mark rights in these names.
- Next, the Respondent is not making a legitimate noncommercial or fair use of the disputed domains names without intent for commercial gain, and so its actions do not fall within section 4(c)(iii) of the Policy. Instead, the Respondent is using the disputed domain names to confuse and misleadingly divert consumers, or to tarnish the BREGUET, TISSOT, and BLANCPAIN Marks.
With respect to bad faith registration and use, the Complainants state that:
- The Respondent intentionally used the marks without consent from the Complainants.
- The Respondent was on actual notice of the Complainants’ rights in its marks through the Complainants’ extensive, global, and long-standing use of the famous BREGUET, TISSOT, and BLANCPAIN marks which long predate the common creation date of the disputed domain names.
- The Respondent here is insidiously mimicking the URLs of the Complainants’ own respective domain names, using the “www” prefix but without the dot, to pass off the goods sold at the website as BREGUET, TISSOT, and BLANCPAIN branded products and retail services.
- The Respondent is obtaining commercial gain from its use of the disputed domains names. When a visitor inputs one of these domain names and is redirected to the website it may purchase one of the products which appear there. In that event, the Respondent receives affiliate compensation and the owner of the website, as well as third-party manufacturers of the products which appear there, also receive money.
- The Respondent’s ownership of other obviously infringing domain names, most of which use the “www” prefix, is highly relevant to the consideration of bad faith in the present case since they show the Respondent has engaged in a pattern of conduct designed to infringe upon the trademarks of others and is well-familiar with the practice of leveraging the fame of trademarks to earn revenue by redirecting them to other sites.
The Complainants request the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
(i) the disputed domain names are 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 respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Consolidation of Multiple Complainants under the Policy and Rules
The Policy and the Rules do not expressly contemplate the consolidation of multiple complainants (or respondents) in a unitary administrative proceeding, and generally speak in singular terms of a “complainant” when referring to proceedings under the Policy.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions 2.0, (“WIPO Overview 2.0”, paragraph 4.16), “WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents”.
The WIPO Overview 2.0 explains that these criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
The Complainants request consolidation based on the following facts: the Swatch Group AG is the parent company of the Complainants Montres Breguet SA, Tissot SA, and Blancpain SA. Given the close legal relationship between the Complainants and the fact that all of the disputed domains names are owned by a single Respondent, consolidation of this Complaint should be appropriate.
The Panel is of the view that the Complainants have a specific common grievance against the Respondent. In addition the Respondent has engaged in a common action that has affected the Complainants’ individual rights in a similar fashion: all the disputed domain names contain the same typosquating scheme and resolve to the same website.
Accordingly, this Panel, having regard to all relevant circumstances, accepts the consolidation of the Complainants. This is consistent with the Policy and Rules, comports with prior relevant UDRP decisions in this area, and is appropriate in light of the aforementioned principles. The Panel therefore will proceed to a decision on the merits.
B. Identical or Confusingly Similar
The Panel finds that each of the Complainants have established trademark rights as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.
Each of the disputed domain names are confusingly similar to a mark in which one of the Complainants claims rights. All the disputed domain names fully incorporate the respective full trademark except for the addition of the generic Top-Level Domain (“gTLD”) “.com”, which addition is not considered in evaluating identity or confusing similarity.
The addition of the letters “www” before each of the trademarks contained in each of the disputed domain names, without the period, does not serve to distinguish the domain names from the Complainants’ trademarks. Omitting the period in between the letters “www” and a domain name is a common typing error, and accordingly the addition of these letters as a prefix does not serve to reduce confusion between a trademark and a domain name (see BHP Billiton Innovation Pty Ltd v. Yorkshire Enterprises Limited and Whois Privacy Services Pty Ltd, WIPO Case No. D2009-1558; F. Hoffmann-La Roche AG v. Transure Enterprise Ltd., WIPO Case No. D2008-0422; Compagnie Gervais Danone, Bonafont S.A de C.V v. PrivacyProtect.org, WIPO Case No. D2009-1659).
Therefore, the Panel finds that the Complainants have satisfied the first requirement of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain names:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainants have not authorized, licensed, or permitted the Respondent to register the disputed domain names containing their trademarks. The Complainants have prior rights in the trademarks which precede the Respondent’s registration of the domain names by more than several decades. The Complainants have therefore established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain names and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (see WIPO Overview 2.0, section 2.1).
The Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain names, or that it is commonly known by the disputed domain names, or that the domain names are used in connection with a bona fide offering of goods or services.
To the contrary, the evidence shows that this is a typical case of typosquating. In addition, the content of the websites at the disputed domain names shows that the Respondent is using the disputed domain names to attempt to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation, or endorsement of the websites, as explained in the next section.
Therefore, the Panel finds that the Complainants have satisfied the second requirement of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
The circumstances in the case before the Panel indicate that the Respondent was aware of the Complainants’ trademarks when registering the disputed domain names and that they have intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation, or endorsement of the websites or of a product or service on those websites.
The Respondent was aware of the Complainants’ trademarks because the three disputed domain names were registered on the same day, they all contain the same typosquating scheme and they relate to trademarks about watches.
It is established by numerous decisions made under the Policy that the addition of the prefix “www” to a trademark does not remove any confusion and is, in fact, a deceptive practice known as “typosquatting” which is done with the express purpose of causing confusion. See, e.g., Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199. As noted by the panel in Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568, “[t]yposquatting is virtually per se registration and use in bad faith. It is difficult to conceive of circumstances that would overcome the inference that the typosquatter ‘intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site . . . by creating a likelihood of confusion with the complainant’s mark as to the source’ of the web site”.
Finally, each of the disputed domain names resolves to the website “www.watchesonnet.com” where Internet users may find a wide offer of watches on sale online, including products from competing manufactures of the Complainants.
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain names in bad faith.
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 <wwwblancpain.com>, <wwwbreguet.com> and <wwwtissot.com> be transferred to the Complainants.
Pablo A. Palazzi
Date: August 19, 2016