WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Breitling SA v. Jaylee Greta

Case No. D2016-1544

1. The Parties

The Complainant is Breitling SA of Grange, Switzerland, represented by BMG Avocats, Switzerland.

The Respondent is Jaylee Greta of China.

2. The Domain Names and Registrars

The disputed domain name <breitlingen.com> is registered with the Registrar Chengdu Fly-Digital Technology Co., Ltd.

The disputed domain names <breitlingonline.com> and <breitlingsales.com> are registered with the Registrar Shanghai Meicheng Technology Information Development Co., Ltd.

The disputed domain names <breitlingsale.com> and <ibreitling.com> are registered with the Registrar 35 Technology Co., Ltd.

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2016 regarding the disputed domain names <breitlingonline.com>, <breitlingsales.com>, <breitlingsale.com> and <ibreitling.com>. On July 28, 2016, the Center transmitted by email to the Registrars Shanghai Meicheng Technology Information Development Co., Ltd and 35 Technology Co., Ltd a request for registrar verification in connection with the disputed domain names. On July 29, 2016, the Registrar 35 Technology Co., Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of two disputed domain names and providing the contact details. On August 1, 2016, the Registrar Shanghai Meicheng Technology Information Development Co., Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of two other disputed domain names and providing the contact details.

On August 3, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On August 5, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

On August 5, 2016, the Complainant filed an amended Complaint in English with the Center, adding another disputed domain name <breitlingen.com>. On August 9, 2016, the Center transmitted by email to the Registrar Chengdu Fly-Digital Technology Co., Ltd a request for registrar verification in connection with the newly added disputed domain name. On August 9, 2016, the Registrar Chengdu Fly-Digital Technology Co., Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the newly added disputed domain name <breitlingen.com> and providing the contact details.

On August 9, 2016, the Center sent an email communication to the Parties in Chinese and English regarding the language of the proceeding for the newly added disputed domain name <breitlingen.com>. On August 15, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding for the newly added disputed domain name <breitlingen.com> by the specified due date.

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 the Respondent of the Complaint in both Chinese and English, and the proceedings commenced on August 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2016.

The Center appointed Matthew Kennedy as the sole panelist in this matter on September 19, 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 Complainant manufactures chronographs, watches and accessories. It was founded by Léon Breitling. The Complainant owns trademark registrations in multiple jurisdictions including International Registration No. 613794 for BREITLING and device, registered on January 7, 1994; International Registration No. 890749 for BREITLING, registered on June 1, 2006, and extended to various jurisdictions including China in 2015; and Chinese Registration No. 558628, for BREITLING and device, registered in 1991. These registrations all specify goods that include watches in class 14 and they remain in effect. The Complainant operates its official website at “www.breitling.com”.

The Respondent is an individual located in China. The Respondent is the registrant of all the disputed domain names. The disputed domain names were registered during the period May 17, 2016 to July 3, 2016. The Respondent’s contact address as shown in the Registrars’ WhoIs database (New York, New York, China) is manifestly fictitious.

At the time of filing of the amended Complaint, the disputed domain name <breitlingen.com> resolved to a website that displays the BREITLING trademark and offered for sale what are alleged to be the Complainant’s products at prices discounted by up to 97 per cent. At the time of filing of the Complaint, the disputed domain name <ibreitling.com> resolved to a website with partially or wholly identical content. As recently as July 2, 2016, at least one of the other disputed domain names, <breitlingsale.com>, resolved to a similar site but, at the time of filing the Complaint and the amended Complaint, neither this nor either of the other two disputed domain names resolved to any active website. At the time of this decision, none of the disputed domain names resolves to any active website.

5. Parties’ Contentions

A. Complainant

The disputed domain names are confusingly similar to the Complainant’s BREITLING trademark. The disputed domain names wholly incorporate that trademark. The addition of a generic word or the prefix “I” does not escape the finding of confusing similarity.

The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not a licensee of the Complainant, nor has the Complainant granted the Respondent an authorization to use the disputed domain names. The disputed domain names do not correspond to the Respondent’s name. The Respondent has been selling counterfeit merchandise with the BREITLING brand, which is not a legitimate use.

The disputed domain names were registered and are being used in bad faith. The Complainant’s BREITLING trademark is internationally famous and the disputed domain names resolved to a website exclusively selling counterfeit Breitling watches. Further, the website was designed in such a way as to create confusion regarding the nature of its relationship to the Complainant.

B. Respondent

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

6. Discussion and Findings

6.1. Consolidation of Multiple Disputes

The Complaint, as amended, in this proceeding initiated disputes regarding five different domain name registrations. The Panel observes that the Respondent is the registrant of all the disputed domain names and that all the disputed domain names incorporate the Complainant’s BREITLING trademark. Further, the content of the websites to which two of the disputed domain names resolve is partially or wholly identical, and the content of the website to which at least one of the other disputed domain names resolved was similar. Therefore, in accordance with paragraph 10(e) of the Rules, the Panel decides that it is appropriate to consolidate these five domain name disputes in a single proceeding.

6.2. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “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 Registration Agreement for each disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the websites to which the disputed domain names resolve are entirely in English, that the disputed domain names include English words and that translation of the Complaint would cause the Complainant, as a Swiss entity, disproportionate additional expenses and delay. The Respondent did not comment on the language of the proceeding.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding takes place with due expedition. Prior UDRP panels have noted that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that the Complaint in this proceeding was filed in English. Having been notified of this administrative proceeding in Chinese and English, the Respondent has not expressed any interest in responding to the Complaint or participating in this proceeding in any other way. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

6.3. Analysis and Findings

The Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant. Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(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. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the trademark BREITLING.

Each disputed domain name incorporates the Complainant’s BREITLING trademark in its entirety together with additional elements.

The first additional element in each disputed domain name varies. Three disputed domain names add a dictionary word, variously “online”, “sales” or “sale”. A dictionary word is not sufficient to dispel the confusing similarity of the disputed domain names to the Complainant’s trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110. Another disputed domain name adds the prefix “i” while the other adds the suffix “en”. These are mere additional letters and they do not dispel confusingly similarity to the trademark. The only other additional element in each disputed domain name is the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix generally has no capacity to distinguish a domain name from a trademark. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080. Consequently, the Complainant’s trademark is the dominant and only distinctive element of the disputed domain names.

Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or

(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel has already found that the disputed domain names are confusingly similar to the Complainant’s BREITLING trademark. The Complainant submits that the Respondent is not its licensee, nor has it granted the Respondent an authorization to use the disputed domain names.

At the time of filing the Complaint and the amended Complaint, respectively, each of the disputed domain names <ibreitling.com> and <breitlingen.com> resolved to websites offering for sale what are alleged to be the Complainant’s products. Even if the products were somehow genuine, nothing on the websites discloses the Respondent’s lack of relationship to the Complainant. This indicates that the Respondent’s use of the disputed domain names is not in connection with a bona fide offering of goods or services for the purposes of the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Moreover, as the websites are offering goods for sale, that is not a legitimate noncommercial or fair use. Accordingly, the Panel does not find that the Respondent’s use of these two disputed domain names falls within the first or third circumstances of paragraph 4(c) of the Policy.

At the time of filing the Complaint, the other three disputed domain names did not resolve to any active website. That is not a use of the disputed domain names in connection with a bona fide offering of goods or services, nor evidence of some legitimate noncommercial or fair use, as envisaged by the first and third circumstances of paragraph 4(c) of the Policy.

The Respondent’s name is “Jaylee Greta”, not any of the disputed domain names nor even “Breitling”. There is no evidence indicating that the Respondent has been commonly known by any of the disputed domain names as envisaged by the second circumstance of paragraph 4(c) of the Policy.

Based on the above, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent did not rebut that case because she did not file a Response.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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 [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”

The Respondent registered each of the disputed domain names in 2016, after the Complainant obtained its BREITLING trademark registrations, including in China where the Respondent is located. “Breitling” is a proper name and not a dictionary word. Each of the disputed domain names incorporates the Complainant’s BREITLING trademark in its entirety. The websites with which the disputed domain names <breitlingsale.com>, <ibreitling.com> and <breitlingen.com> have been used repeatedly display the Complainant’s BREITLING trademark and logo and offer for sale what are alleged to be the Complainant’s watches. In any case, all the disputed domain names were registered by the Respondent at around the same time. This all indicates to the Panel that the Respondent was aware of the Complainant and its BREITLING trademark at the time that she registered all of the disputed domain names and deliberately chose to register that trademark as part of the disputed domain names.

At the time of filing the Complaint and the amended Complaint, respectively, the Respondent used the disputed domain names <ibreitling.com> and <breitlingen.com>, which are confusingly similar to the Complainant’s BREITLING trademark, in connection with a website to offer for sale what are alleged to be the Complainant’s products. Given this circumstance and those described in Section 6.3.B. above, the Panel considers that this use of these two disputed domain names intentionally attempts to attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of the products on those websites. The Panel notes that the use of these two disputed domain names changed after the filing of the Complaint or the amended Complaint, and that they no longer direct to any active website. This change of use after receiving notice of the Complaint or the amended Complaint may be further evidence of bad faith and, in any event, does not alter the Panel’s conclusion regarding bad faith use.

At the time of filing the Complaint, the Respondent makes only passive use of the other three disputed domains but this does not preclude a finding of use in bad faith (see Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In the present dispute, the Complainant has a strong reputation in its trademark which is widely known through use in connection with its watches, including through the Complainant’s official website “www.breitling.com”. The disputed domain names in question incorporate the BREITLING trademark in its entirety with only a dictionary word or one or two additional letters, plus a gTLD suffix. The Respondent has used one of these disputed domain names, <breitlingsale.com>, in the same way as <breitlingen.com> and <ibreitling.com>, described above and she provided fictitious contact information for all of the disputed domain names, which are further indications of bad faith. The Respondent provides no explanation for the choice of any of the disputed domain names. Given these circumstances, the Panel finds that the Complainant has discharged its burden of demonstrating that these three disputed domain names are also being used in bad faith. The Respondent has failed to rebut that case because she did not file a Response.

Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 names <breitlingen.com>, <breitlingonline.com>, <breitlingsale.com>, <breitlingsales.com> and <ibreitling.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: October 3, 2016