WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Breitling SA v. Qin Yu Qi
Case No. D2017-1561
1. The Parties
The Complainant is Breitling SA of Grange, Switzerland, represented by B.M.G. Avocats, Switzerland.
The Respondent is Qin Yu Qi of, Beijing, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <breitling.online> (the "Domain Name") is registered with West263 International Limited (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on August 10, 2017. On August 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 14, 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. On August 17, 2017, the Center transmitted an email in English and Chinese regarding the language of the proceeding. On the same day, the Complainant requested that English be the language of the proceeding and the Respondent requested that Chinese be the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on August 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2017. The Respondent did not submit any substantive response. Accordingly, the Center notified the Parties the commencement of the panel appointment process on September 13, 2017.
The Center appointed Karen Fong 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 is a company based in Switzerland which manufactures high-end chronographs and watches, as well as related accessories.
The Complainant was founded by its namesake, Leon Breitling in 1884 and has sold watches under the trade mark, BREITLING, ever since. The brand is especially well known in the field of technical watches for aviators and pilots.
The Complainant and its subsidiaries own a large number of trade mark registrations for the mark BREITLING in class 14 in numerous jurisdictions including the following:
- International trade mark registration No. 613794 for BREITLING and design in Class 14 dated January 7, 1994
- International trade mark registration No. 890749 for BREITLING in Class 14 designating China dated June 1, 2006
- Chinese trade mark registration No. 558628 for BREITLING and design in Class 14 dated July 20, 1991
- United States of America ("USA") trade mark registration No. 2964474 for BREITLING in Class 14 registered on July 5, 2005
- USA trade mark registration No. 2352162 for BREITLING and design in Class 14 registered on May 23, 2000
(Individually and collectively known as the "Trade Mark")
The Complainant also owns the domain name <breitling.com> which resolves to its official website.
The Respondent registered the Domain Name on April 14, 2017. It resolves to a website which features 3 pictures of a dog and the picture of a boy of about 12 and the following text: "My Good Dog Breitling Growth Record", "The Personal Website by Breitling.Online" and "Contact Information: ABC@XYZ.CEO" (the "Website").
The Complainant sent a cease-and-desist letter to the Respondent on July 5, 2017 and the Parties corresponded culminating with the Respondent's email of July 8, 2017.
5. Parties' Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not file a formal Response. His position as stated in the emails between the Parties is that the Website is personal and non-commercial created for his dog named Breitling. No rights have been infringed. However because of the amount of money he has had to spend holding the Domain Name, he was prepared to the transfer the Domain Name for USD 800.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and being used in bad faith.
6.2. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits in paragraph IV of the Complaint and confirmed in an email of August 17, 2017 that the language of the proceeding should be English. The Complainant contends that the Domain Name is in Latin characters and the Website is exclusively in the English language. Further the Complainant's legal representatives and the Respondent exchanged emails in English. All these factors suggest that the Respondent is familiar with the English language. The Complainant also submits that being a Swiss entity, it is not able to conduct the proceeding in the Chinese language without the disproportionate expense and undue delay caused by the cost of translation services and the inconvenience of having to conduct the proceeding in Chinese.
The Respondent submits in an email of August 17, 2017 that the language of the proceeding should be in Chinese as he registered the Domain Name through a Chinese website and needed the proceeding to be conducted in Chinese.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties' ability to understand and use the proposed language, time and costs.
The Panel finds that the Website has content in the English language. Further the Respondent has corresponded with the Complainant's representatives in the English language, all of which provide sufficient evidence to suggest the likely possibility that the Respondent is familiar with the English language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds that the Respondent would not be prejudiced, should the decision be rendered in English. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
(i) It will accept the filings on behalf of the Complainant in English;
(ii) It will accept the filings on behalf of the Respondent in Chinese; and
(iii) It will render this decision in English.
6.3. Substantive Analysis
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine whether the domain name is confusingly similar to the trade mark. The trade mark would generally be recognizable within the domain name. In this case the Domain Name contains the Trade Mark in its entirety. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain as it is viewed as a standard registration requirement.
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of production always remaining on the complainant. The standard of proof required under the UDRP is "on balance". An asserting party needs to establish that it is more likely than not that the claimed fact is true.
The Respondent is not a licensee of the Complainant. He is not affiliated or connected to the Complainant in any way nor has he been authorised and licensed by the Complainant to register and use the Domain Name which incorporates the Trade Mark.
The Respondent appears to be arguing that he has rights or legitimate interests because his dog is commonly known by the name Breitling. He is also submitting that using his dog's name as the Domain Name is noncommercial or fair use of the Domain Name without intent for commercial gain, to misleadingly divert consumers, or to tarnish the Trade Mark.
Making bald unsubstantiated allegations is rarely sufficient to show rights or legitimate interests under the UDRP. No evidence has been submitted to show that the Respondent has a dog, when the dog was acquired, if the dog is commonly called Breitling or if Breitling is the dog on the Website. It does seem odd that the Respondent has gone to the trouble and expense of registering a domain name and creating a website for the purposes of showing his dog's growth records plans yet there are only three photographs of the dog on the Website and no growth records of the dog.
The Policy does provide that if a respondent has been commonly known by a domain name, even if it has acquired no trade mark or service mark rights, this shall demonstrate its rights or legitimate interests in the domain name for purposes of the Policy. The panel in the case of AST Sportswear, Inc v. Steven R. Hyken, WIPO Case No. D2001-1324 commented that even if respondent infringes the trade mark rights of the complainant, "the Policy would not provide a remedy if respondent could prove a legitimate interest under paragraph 4(c)(ii), rather, complainant would have to pursue claims (whether of trade mark infringement or cybersquatting) under the applicable national laws. Given that a showing of "legitimate interest" can defeat a charge of cybersquatting under the Policy, a panel must be careful to ensure that a respondent's claim that he or she has been 'commonly known by the domain name' is legitimate."
If this provision does extend to include names of pets, cyber squatters would perhaps try to get round this hurdle by acquiring lots of pets and name them after well-known brand names. But whether the wording extends to pets of respondents, in this case as in the case of Pier Giorgio Andretta v Corrado Giubertoni, WIPO Case No. D2016-2496, the Respondent failed to submit any evidence to prove that he owns a pet with a name of a well-known trade mark. The credibility of his allegation that he is making a legitimate noncommercial or fair use is further weakened by his offer to sell the Domain Name for USD 800 without any documented out-of pocket costs directly relating to it.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant's trade mark when it registered the Domain Name. It is implausible that it was unaware of the Complainant when it registered the Domain Name. The primary significance of the meaning of the Trade Mark is its reference to the Complainant's trade mark and company name. In the WIPO Overview 3.0, section 3.2.2 states as follows:
"Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant's mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant's mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent's claim not to have been aware of the complainant's mark."
Given that the Panel does not accept the Respondent's explanation as to why he chose the Domain Name, it is clearly inconceivable that the Domain Name was selected by the Respondent without the Complainant in mind. As outlined under the second element above, there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent's choice of the Domain Names is also a significant factor to consider (as stated in section 3.1.1 of WIPO Overview 3.0). The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith.
The Domain Name is also used in bad faith. The Domain Name directs to a page which has the stated purpose of recording the growth of a dog. As stated above, the Panel does not accept the assertion as no credible evidence has been submitted to substantiate this. When approached by the Complainant to transfer the Domain Name, the Respondent tried to sell it for USD 800 which is much more than the out-of-pocket expenses directly related to the Domain Name.
In light of these particular circumstances, the Panel concludes that the Respondent's registration and use of the Domain Name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the Domain Name was registered and is being used in bad faith by the Respondent.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <breitling.online> be transferred to the Complainant.
Date: September 29, 2017