WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Projetclub v. Domain Admin, Whois Privacy Corp

Case No. D2017-1498

1. The Parties

The Complainant is Projetclub of Villeneuve d'Ascq, France, represented by AARPI Clairmont Avocats, France.

The Respondent is Domain Admin, Whois Privacy Corp, of Nassau, New Providence, the Bahamas.

2. The Domain Name and Registrar

The disputed domain name <easybreath-mask.com> ("Disputed Domain Name") is registered with Internet Domain Service BS Corp (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 2, 2017. On August 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 4, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was 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 August 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 13, 2017.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on September 20, 2017. 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, Projectclub, is a company business support services and a subsidiary of Decathlon, known as a major French producer specialized in the conception and retailing of sporting and leisure goods. Decathlon designs and manufactures several lines of its own, one of which is an innovative snorkeling mask, which offers users the possibility of breathing easily under water through the nose and the mouth, under the trademark EASYBREATH.

The Complainant is the registered owner of EASYBREATH trademarks not only in France, with registration filed on December 10, 2013, for goods and services in classes 9, 25 and 28 under No. 4053624, but also throughout the world, with International trademark registration No. 1227496, registered on June 10, 2014. These trademarks predate the registration of the Disputed Domain Name.

The Complainant also owns and uses numerous domain names under generic Top-level Domains ("gTLDs") and country-code Top-level Domains ("ccTLDs") for the promotion and sale of products branded EASYBREATH, including a domain name containing the term "easybreath" being <easybreath.fr> registered on October 23, 2013.

The Respondent registered the Disputed Domain Name <easybreath-mask.com> on March 23, 2017.

The website under the Disputed Domain Name has been under operation for promotion and sale of products under the EASYBREATH and/or TRIBORD EASYBREATH trademark.

5. Parties' Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

Firstly, the Complainant contends that the Complainant is the registered owner of several EASYBREATH trademarks throughout the world, including French trademark No. 4053624, filed on December 10, 2013, and International trademark registration No. 1227496, registered on June 10, 2014. These registrations predate the Disputed Domain Name, registered on March 23, 2017.

Secondly, the Complainant submits Disputed Domain Name is identical or confusingly similar to the EASYBREATH trademarks in which the Complainant has rights by arguing that:

(A) the gTLD suffix ".com" does not give any distinctiveness to the Disputed Domain Name. Furthermore the addition of the descriptive term "mask" to the Complainant's EASYBREATH trademarks does not grant self-distinctiveness; and

(B) the Disputed Domain Name reproduces the term "easybreath", which is the most striking part of the Disputed Domain Name.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

Firstly, the Complainant contends that it has never given any authorization or permission to the Respondent to register or to use its trademarks EASYBREATH.

Secondly, the Complainant further contends that the Respondent is not in any way related to the Complainant's business, is not one its distributors and does not carry out any activity for or have any business with it.

Thirdly, the Complainant submits that the Respondent is using the Disputed Domain Name, with images, videos and the Complainant's trademarks, to imitate the look and feel of the Complainant's websites for offering for sale prima facie counterfeit products. The use of infringing content trades on the fame of the Complainant to pass itself off as DECATHLON cannot constitute a bona fide offering of goods and services.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

Firstly, the Complainant claims that the Respondent registered the Disputed Domain Name in bad faith by arguing that:

(A) the Complainant's EASYBREATH trademarks were registered before the registration of the Disputed Domain Name;

(B) the Disputed Domain Name is confusingly similar to Complainant's trademarks; and

(C) the Respondent has used a proxy service while registering the Disputed Domain Name to keep its identity private, which constitutes another evidence of bad faith.

Secondly, the Complainant submits that the Respondent is using the Disputed Domain Name in bad faith by arguing that:

(A) the Respondent is using Decathlon's copyrighted images and videos, even reproducing images and videos belonging to the Complainant, further illustrating that the Respondent was aware of the Complainant and its marketing of its products;

(B) the inevitable consequence is that there will be confusion, as a substantial proportion of Internet users visiting the site will be doing so in the expectation of reaching a site of, or authorized by, the Complainant. When they reach the site, they may realize that they have been mistaken, but in any event the objective of bringing them there will have been already achieved.

Consequently, the Complainant contends that the Disputed Domain Name was registered and used in bad faith by the Respondent.

In light of the foregoing, and in accordance with paragraph 4(i) of the Policy, the Complainant requests the transfer of the Disputed Domain Name.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each the following three elements are present:

(i) the Disputed Domain Name registered by the Respondent 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 Disputed Domain Name has been registered and is being used in bad faith.

Consequently, the Panel shall further analyze the eventual concurrence of these three grounds in the present case.

The Respondent's failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc. WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent's default.

A. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.

First, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to EASYBREATH evidenced that it has a continuous use of its trademark for its commercial activities, and in particular to offer sporting and leisure goods and the all-inclusive snorkeling mask branded EASYBREATH in particular.

Secondly, the Disputed Domain Name comprises the Complainant's EASYBREATH mark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the suffix "mask" and a hyphen "-". According to the Cambridge English Dictionary,¹ the word "mask" means "a covering for all or part of the face that protects, hides, or decorates the person wearing it". Thus, this suffix "mask" should be considered as a descriptive term. The hyphen mark "-", which is a punctuation mark, has nothing to do with the distinguishability of the Disputed Domain Name. As such, the Panel finds that "easybreath" remains the dominant element in the Disputed Domain Name. It is well established that the addition of a descriptive term (such as "mask") and a hyphen "-" to a trademark does not prevent confusing similarity. In other words, the addition of the suffix "mask" and a hyphen neither helps distinguish the Disputed Domain Name from the trademark, nor dispel the confusing similarity, as it was found in previous UDRP decisions (see, e.g., AB Electrolux v. Ilgaz Fatih Micik, WIPO Case No. D2009-0777; Aktiebolaget Electrolux v. ibp, WIPO Case No. D2013-0795; AB Electrolux v. Ong Bui Trung Kien, WIPO Case No. D2012-2320).

Thirdly, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD suffix ".com" to the Disputed Domain Name does not constitute an element that may help avoid confusing similarity (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's EASYBREATH trademark, and the first element under paragraph 4(a) of the Policy is established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent's rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

"When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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."

The Panel finds that the Complainant has presented sufficient evidence that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not reply to the Complainant's contentions and, therefore, did not refute the Complainant's contentions.

Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant's asserted facts, that no license, permission or authorization of any kind to use the Complainant's trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction. Thus, the Panel finds that the Respondent has no rights in the trademark EASYBREATH.

A reseller or distributor may be making a bona fide offering of goods and services and thus have rights or legitimate interests in a domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903 ("Oki Data"), including:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

- the site itself must accurately disclose the respondent's relationship with the trademark owner; and

- the respondent must not try to "corner the market" in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

In this particular case, the Panel finds that in the website under the Disputed Domain Name, the Respondent places some statements referring to the EASYBREATH products, such as "УНИКАЛЬНАЯ ПОДВОДНАЯ МАСКА EASYBREATH УЖЕ В РОССИИ !" (English translation: "Unique EASYBREATH underwater masks are already in Russia!"), and "ПОЧЕМУ МАСКА EASYBREATH TRIBORD ЛУЧШЕ ДРУГИХ МАСОК?" (English translation: "Why are the TRIBORD EASYBREATH masks better than other masks?"). These statements may results in an assumption that the Respondent is offering for sale products branded EASYBREATH in the Russian Federation. In this regard, the Panel notes the Complainant's claim that "the Respondent is selling counterfeits". However, while the Panel agrees with the Complainant that there is no indication for the Respondent's selling genuine EASYBREATH products, there is also no indication or evidence to the contrary. The Panel notes that it is the only product that are sold via this website.

However, the Panel takes the view that even in case the EASYBREATH products sold at the Respondent's website are genuine.

The Respondent does not place any statement or disclaimer disclosing accurately its relationship with the Complainant.

With such a view, the Panel finds that the unauthorized use of the Disputed Domain Name wholly incorporating the Complainant's EASYBREATH trademarks does not meet the Oki Data criteria and thus, does not constitute a bona fide use within paragraph 4(c)(i) of the Policy.

Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name, or that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant's assertions and evidence with regard to the Respondent's registration of the Disputed Domain Name, the Respondent had full knowledge of the EASYBREATH trademark and had an intention to gain profit by riding on the goodwill and reputation of the Complainant.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element, paragraph 4(a)(ii) of the Policy is established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(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 website or other online 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."

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of "registration and use of a domain name in bad faith".

The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant's contentions and, therefore, did not refute the Complainant's contentions.

Registration in bad faith

The Panel has considered the Complainant's assertions and evidence with regard to the Respondent's registration of the Disputed Domain Name. In this regard, the Panel finds that the Complainant's EASYBREATH trademark has been registered in jurisdictions throughout the world. The Complainant's EASYBREATH trademark has been registered and is used in, among other countries, France, United States of America, Singapore and especially in Russian Federation, the country whose language is used and presented by the website to which the Disputed Domain Name resolves.

In addition, the Complainant also owns the domain name <easybreath.fr> to which the Disputed Domain Name is identical, except for the addition of the descriptive term "mask" and a hyphen "-". The phrase "easybreath-mask" describes exactly one of the products that the Complainant is offering for sale. The Complainant's trademark EASYBREATH, which was first registered in December 10, 2013, and the domain name <easybreath.fr>, which was registered on October 23, 2013, all well predate the registration of the Disputed Domain Name. Also, the Panel finds that the Respondent uses the Disputed Domain Name to offer for sale the Complainant's snorkeling masks under the EASYBREATH trademark and/or TRIBORD EASYBREATH trademark. Furthermore, the website under the Disputed Domain Name displays the Complainant's EASYBREATH trademark including the symbol ® (indicating registered trademark) and the phrase "В ЧЕМ ОСОБЕННОСТИ УХОДА ЗА МАСКОЙ EASYBREATH ®?" (English: "How to maintain the Easybreath® mask?").

The above facts show that the Respondent did not register the Disputed Domain Name in a fortuity. The Respondent clearly knew of the Complainant, the Complainant's trademark EASYBREATH and its trademark rights before registering the Disputed Domain Name. The Panel considers the registration of the Disputed Domain Name as an attempt by the Respondent to take advantage of the Complainant's goodwill.

In this respect, the Panel finds that the Respondent was aware of the Complainant's rights in the trademark EASYBREATH and the associated products at the time of the registration of the Disputed Domain Name.

Use in bad faith

In Section 6.B. above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In the Panel's view, use of a domain name, to which one has no rights or legitimate interests, is very often a clear indication of use in bad faith.

In addition, the Complainant also successfully evidences to the Panel that before, on and after the commencement of this UDRP proceeding, the Respondent's website at the Disputed Domain Name, contained, amongst others, the Complainant's copyrighted marketing materials, without the Complainant's consent. In the Panel's view, such behavior by the Respondent may further evidence the Respondent's intention to create the misleading impression of a relationship between the Respondent and the Complainant.

As such, use of the Disputed Domain Name creates a likelihood of confusion to the online consumers as to the Complainant's sponsorship, affiliation, or endorsement of the website to which the Disputed Domain Name resolves. Numerous UDRP panels have held that a respondent who intentionally diverts Internet users to its website through such a likelihood of confusion is acting in bad faith. In this particular case, the Panel finds that, similar to numerous previous UDRP panels, the use of the Complainant's EASYBREATH mark to attract visitors to the abovementioned website also constitutes bad faith (see, e.g., Pfizer Inc. v. Fizer Inc., WIPO Case No. D2005-0285; Pfizer Inc. v. Phillip Pizzurro, WIPO Case No. D2004-0600; Pfizer Inc. v. Generic Viagra Pills, WIPO Case No. D2004-0592; Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256; Pfizer Inc. v. NA, WIPO Case No. D2005-0072; Pfizer Inc. v. BargainName.com, WIPO Case No. D2005-0299; Pfizer Inc. v. Peter Carrington a/k/a Party Night Inc., WIPO Case No. D2003-0622).

Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a)(iii) of the Policy is established.

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-mask.com> be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelist
Date: October 3, 2017

¹ "http://dictionary.cambridge.org/dictionary/english/mask". Last accessed on September 22, 2017.