WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Breitling SA v. 罗元凡, Luo Yuan Fan
Case No. D2018-0198
1. The Parties
The Complainant is Breitling SA of Granges, Switzerland, represented by B.M.G. Avocats, Switzerland.
The Respondent is 罗元凡, Luo Yuan Fan of Xinjiang, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <breitling.vip> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on January 31, 2018. On January 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 2018, 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 February 5, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on February 7, 2018. The Respondent submitted two emails to the Center, on February 6, 2018 and on February 9, 2018 (the first in Chinese; and the second in English), but did not comment on the language of the proceeding by the specified due date.
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 proceeding commenced on February 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2018. The Response did not file any formal response. Accordingly, the Center informed the Parties of the commencement of the panel appointment process on March 14, 2018.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on March 15, 2018. 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 incorporated in Switzerland and the manufacturer since 1884 of high end chronographs and watches under the trade mark BREITLING (the "Trade Mark").
The Complainant is the owner of numerous registrations for the Trade Mark worldwide, including international registration No. 890749 (designating China), with a registration date of June 1, 2006; and Chinese registration No. 558628, with a registration date of July 20, 1991.
The Complainant is also the owner of the domain name <breitling.com>.
The Respondent is an individual resident in China.
C. The Disputed Domain Name
The disputed domain name was registered on October 21, 2017.
D. Passive Use of the Disputed Domain Name
The disputed domain name has not been used.
5. Parties' Contentions
The Complainant contends that the disputed domain name is confusingly similar or identical to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered and is being used in bad faith.
The Respondent contends as follows:
"I do object to the claim that the domain name… is an infringement for their brand. For the domain name is composed of many letters, which can have many meanings. I register breitling.vip just use to publicize my product, and build my own product and service website."
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. However, paragraph 11(a) of the Rules allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that the language of the proceeding be English, for several reasons, including the fact the Respondent has communicated with the Complainant in English in pre-Complaint email correspondence (see Section 6.2.C. below).
The Respondent did not make any submissions regarding the language of the proceeding and did not file a formal Response. The first of the Respondent's informal emails sent to the Center in respect of this proceeding was written in Chinese. The second of the Respondent's informal emails (reproduced in Section 5.B. above) was written in English.
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 emails sent by the Respondent to the Complainant's representatives and to the Center in English demonstrate that the Respondent is conversant in English. 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 it is not foreseeable that the Respondent would be prejudiced, should the language of the proceeding be English.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2. Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name comprises the Trade Mark in its entirety and is, excluding the generic Top-Level Domain ("gTLD") ".vip", identical to the Trade Mark.
The Panel therefore finds that the disputed domain name is identical to the Trade Mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(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 trade mark 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 trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that the Respondent has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has not been used.
The Respondent has failed to adduce any evidence to support the Respondent's bare assertion that the Respondent registered the disputed domain name to publicize the Respondent's product, and build the Respondent's own product and service website.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant's prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent's contentions regarding the Respondent's intended use of the disputed domain name are unconvincing.
The Panel therefore finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Given the notoriety of the Complainant and of its Trade Mark (including in China, where the Respondent is based), the fact the disputed domain name is identical to the Trade Mark, and the fact the disputed domain name has not been used, the Panel finds, in all the circumstances, that the requisite element of bad faith has been made out. The Panel considers it is inconceivable the Respondent was not aware of the Complainant's Trade Mark at the time of registration of the disputed domain name.
The Complainant relies upon the following pre-Complaint email sent by the Respondent in response to a letter of demand from the Complainant's representatives to assert bad faith under paragraph 4(b)(i) of the Policy:
"We spent 6,000 USD on the domain, planning to use it as our products promotion website."
The Panel considers the above email response from the Respondent is sufficient evidence to support a conclusion of bad faith under paragraph 4(b)(i) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and used 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 name <breitling.vip> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: March 29, 2018