WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Projetclub v. Shkumat Mikhail Igorevich
Case No. D2017-1503
1. The Parties
The Complainant is Projetclub of Villeneuve d’ASCQ, France, represented by AARPI Clairmont Avocats, France.
The Respondent is Shkumat Mikhail Igorevich of Kharkov, Ukraine, self-represented.
2. The Domain Name and Registrar
The disputed domain name <easybreath.net> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (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 3, 2017, 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.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2017. The Response was filed with the Center on August 13, 2017.
On August 25, 2017, the Complainant filed the Supplemental Filing.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on August 29, 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 is a limited company registered under the laws of France which provides for business support services. The Complainant is a subsidiary of Decathlon, a major French producer specialized in the conception and retailing of sporting and leisure goods. Decathlon designs and manufactures various products and markets such products using its own labels, inter alia, a snorkeling mask under the EASYBREATH mark, which won the first prize at the 2014 Oxylane Innovation Awards.
The Complainant is the registered owner of numerous trademarks for EASYBREATH, including International trademark registration No. 1227496 EASYBREATH, registered on June 10, 2014 in connection with goods in classes 9, 25, and 28.
The Complainant offers for sale its sporting and leisure goods online, through its officials’ websites notably located at “www.decathlon.com”, “www.tribord.tm.fr” and “www.subea.com”. The Complainant also registered and is using the domain name: <easybreath.fr> registered on October 23, 2013.
The disputed domain name was registered on April 26, 2017. The website that the disputed domain name resolves to offers masks under the name Easybreath FunJet and refers to the Complainant’s websites ”tribord.com” and ”www.subea.com”.
5. Parties’ Contentions
Firstly, the Complainant asserts that the disputed domain name is identical to the EASYBREATH marks. According to the Complainant, the disputed domain name slavishly reproduces its mark.
Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant claims that, according to its best knowledge, the Respondent is not currently and has never been known under disputed domain name. The Complainant also emphasizes that the Respondent has never filed application for any trademark identical or similar to the EASYBREATH marks. Moreover, according to the Complainant, the Respondent is not in any way related to its business, is not one of its distributors and does not carry out any activity for or has any business with it. The Complainant asserts that it has never licensed, authorized, or otherwise permitted the Respondent to register a domain name incorporating its trademarks, nor to make any use of these marks in order to distinguish its own business. Further, the Complainant claims that the products sold by the Respondent on the website operated under the disputed domain are likely to be counterfeit to the EASYBREATH products.
Thirdly, the Complainant states that the disputed domain name was registered and is being used in bad faith.
The Complainant emphasizes that the EASYBREATH marks were registered before the disputed domain name was registered. As any search for “easybreath” conducted with a search engine such as Google leads in the first place to websites relating to the Complainant and its products, the Complainant contends that the Respondent was fully aware of its prior rights and registered the disputed domain name for the sole purpose of attracting the customers. According to the Complainant, the Respondent’s purpose in registering the disputed domain name is to capitalize on the reputation of the Complainant’s EASYBREATH marks by diverting Internet users seeking snorkelling masks products under the Complainant’s EASYBREATH marks to Respondent’s own website where consumers may purchase counterfeit goods offered and sold under the EASYBREATH marks. The Complainant notes that the Respondent directly refers on its website to DECATHLON and the TRIBORD and SUBEA marks. Additionally, the Complainant points out that slavish copies of the Complainant’s masks that are being sold by the Respondent may also create high risk for the consumers in terms of safety and security.
In it Supplemental Filing, the Complainant refers to the Response, claiming that:
- the UDRP Policy does not require the Complainant’s trademark to be well-known.
- it has demonstrated an intensive use, all over the world, of the EASYBREATH mark and notably demonstrated that since 2014, the products sold under the EASYBREATH mark have been the subject of significant media coverage, including national and international prints;
- it is not required to prove that the Complainant owns registered trademark in Ukraine;
- the distinctive character of the Complainant’s trademark right is clearly not within the scope of the Policy;
- the EASYBREATH mark is composed of two English words “easy” and “breath” but it is completely wrong to assert that the combination of these two words would be the usual designation of a snorkelling mask.
The Respondent contends that the Complaint is an example of reverse domain name hijacking. According to the Respondent, the Complainant has neither presented evidence of its EASYBREATH mark being famous nor any social research data on the recognition of this mark in Ukraine. The Respondent claims that the EASYBREATH mark is not known in Ukraine and the Complainant does not offer its products there. It also points out that the EASYBREATH mark protection does not extend to Ukraine.
The Respondent admits that the disputed domain name is identical to the EASYBREATH mark. However, the Respondent notes the EASYBREATH mark consists of purely descriptive words. Therefore, it believes that the disputed domain name can coexist with the EASYBREATH mark without creating any confusion. In the Respondent’s opinion, “any Internet user understands that the company will not be on its website to sell products that it does not produce, therefore, they do not associate the site with a particular company”.
The Respondent asserts that at the moment the website under the disputed domain name does not offer any products manufactured by the Complainant. The Respondent finds the Complainant's position regarding the availability of counterfeit products on the website is not proven, since the Complainant did not even point to any of the products as being counterfeit and only suggested the possible availability of such products.
The Respondent emphasizes the fact that the Complainant has not registered the disputed domain name since 2014 when it was available for registration. It also points out that the disputed domain name was never put on sale or offered for rent.
According to the Respondent, the disputed domain name creates no risk of any “likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation, or endorsement of website” as is required by paragraph 4(b)(iv) of the Policy”.
6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(i) the disputed domain name is 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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s EASYBREATH mark and is identical with such mark. For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the generic Top-Level Domain suffix “.com” may be disregarded as being simply a necessary component of a generic Top-Level Domain (LEGO Juris A/S v. Whois Data Protection Sp. z o.o. / Mirek Nowakowski ROSTALCO Sp. z o.o., WIPO Case No. D2012-0607).
B. Rights or Legitimate Interests
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition [“WIPO Overview 3.0”], section 2.1 and cases cited therein).
In the Panel’s opinion, the Complainant made a prima facie case. In particular, it presented screenshots from the websites showing that products are sold by the Respondent without the authorization of the Complainant. The Panel notes furthermore, that the Respondent claims on its website, that it is the official distributor of the Easybreath brand. The Panel notes that this is misleading information as no such relationship exists between the Complainant and the Respondent.
The Panel also recognizes that the Complainant has neither authorized nor licensed the Respondent to use its mark. The Complainant has also no business relationship with the Respondent – the Respondent is not a reseller or distributor of the goods offered by the Complainant.
The Panel finds that in the circumstances of this case registering a domain name identical to a registered trademark in order to run an online store selling goods directly competing to those produced and protected under this registered trademark does not constitute a bona fide offering of goods.
Thus, the Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
Firstly, in this Panel’s opinion, the combination of English words “easy” and “breath” written together, despite a generic character of each of them, cannot be found to be an obvious name for snorkeling masks. Given the fact that the EASYBREATH mark was registered before registration of the disputed domain name as well as it popularity in the snorkeling masks industry, the Panel finds that the Respondent knew or should have known about the Complainant’s right while registering the disputed domain name.
Secondly, an indication for bad faith use is that the Respondent offers at least confusingly similar snorkeling masks under the brand Easybreath.(See Normalu SA v. Privacyprotect.org, WIPO Case No. D2011-0444). The fact that the Complainant does not conduct its business on the Ukrainian market does not alter this conclusion.
The Panel finds that the conditions of paragraph 4(b)(iv) of the Policy are Present in this case.
In the light of above, the Panel decides that paragraph 4(a)(iii) of the Policy is satisfied.
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.net> be transferred to the Complainant.
Date : September 15, 2017