WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Projetclub v. Privacy Protection / Kishenya Peter

Case No. D2018-0597

1. The Parties

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

The Respondent is Privacy Protection of Kiev, Ukraine / Kishenya Peter of Lviv, Ukraine, self-represented.

2. The Domain Name and Registrar

The disputed domain name <easybreath-tribord.pro> is registered with Hosting Ukraine LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 17, 2018. On March 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 21, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent an email to the Parties in English and Russian in regard to the language of the proceedings. On March 21, 2018, the Respondent sent an email to the Center requesting instructions how to transfer the disputed domain name to the Center. In response to this email, the Center requested the Parties to inform it if they wished the suspension of the administrative proceeding to attempt to settle the dispute. On March 22, 2018, the Complainant requested the suspension of the administrative proceeding for 30 days. On March 23, 2018, the Center suspended the administrative proceeding until April 23, 2018. On April 20, 2018, the Complainant requested a further suspension of the administrative proceeding for a period of one month. On April 23, 2018, the Center suspended the administrative proceeding until May 23, 2018. On May 22, 2018, the Complainant requested the suspension of the administrative proceeding for an additional period. On May 22, 2018, the Center suspended the administrative proceeding until June 20, 2018. The Complainant filed an amended Complaint on May 23, 2018 and requested English to be the language of the proceedings. The Respondent did not comment on the language of the proceedings. On June 20, 2018, the Complainant again requested a suspension of the administrative proceeding. On June 20, 2018, the Center suspended the administrative proceeding until July 19, 2018. On July 16, 2018, the Complainant requested the reinstitution of the administrative proceeding. On the same date, the Center reinstituted the administrative proceeding.

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, and the proceedings commenced on July 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2018. The Respondent did not submit any substantive response. Accordingly, on August 8, 2018, the Center notified the Parties about the commencement of Panel Appointment Process.

The Center appointed Assen Alexiev as the sole panelist in this matter on August 16, 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.

In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, 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 Complainant has submitted its Complaint in the English language, and has requested the proceeding to be held in English. The Center has sent all its messages to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has refrained from doing so, and has thus not objected to the Complainant's request the proceedings to be held in English.

In these circumstances, it appears to the Panel that using the English language in this proceeding will be fair and efficient and will not put either of the Parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. At the same time, the Panel will consider all evidence in the case file available in English or Russian languages.

4. Factual Background

The Complainant is a subsidiary of Decathlon – a major French manufacturer established in 1980 and specialized in the conception and retailing of sporting and leisure goods. In 2016, Decathlon employed 78,000 employees worldwide, operated 1,171 stores, and had annual sales of nearly EUR 10 billion. Decathlon is internationally oriented, and 65 per cent of its stores are located outside of the European Union. Decathlon designs and manufactures several lines of products, and its water sports products are sold under the trademark TRIBORD. One of the Complainant's water sports products is a snorkeling mask sold under the trademark EASYBREATH.

The Complainant's parent company Decathlon is the registered owner of the following trademark registrations for TRIBORD (the "TRIBORD trademark"):

- the International trademark TRIBORD with registration No. 690161, designating Ukraine among others, registered on November 3, 1997 for goods and services in International classes 3, 9, 12, 13, 14, 16, 18, 22, 25, 28, 29, 30, 31, 32, 36, 37, 38, 39, 41, and 42; and

- the European Union trademark TRIBORD with registration No.003392966, registered on August 5, 1998 for goods and services in International classes 03, 08, 09, 12, 13, 14, 16, 18, 20, 22, 25, 28, and 41.

The Complainant is the registered owner of the following trademark registrations for EASYBREATH (the "EASYBREATH trademark"):

- the French trademark EASYBREATH with registration No. 4053624, registered on December 10, 2013 for goods and services in International classes 9, 25, and 28; and

- the International trademark EASYBREATH with registration No. 1227496, designating Ukraine among others, registered on June 10, 2014 for goods and services in International classes 9, 25, and 28.

To promote and sell its products, the Complainant has also registered and uses the domain names <tribord.tm.fr> and <easybreath.fr>.

The disputed domain name was registered on May 28, 2017. It does not resolve to an active website.

5. Parties' Contentions

A. Complainant

The Complainant states that its Easybreath product received the first prize at the 2014 Oxylane Innovation Awards and has since then been the subject of several articles in the media in France and internationally.

The Complainant contends that the disputed domain name is confusingly similar to its EASYBREATH trademark, as this trademark is entirely reproduced in the disputed domain name, followed by a hyphen and the element "tribord", which is identical to the TRIBORD trademark of Decathlon. According to the Complainant, the combination of these elements does not dispel the likelihood of confusion between the Complainant's EASYBREATH trademark and the disputed domain name. The Complainant points out in this regard that its Easybreath products have been marketed by Decathlon together with other water sports products under the brand Tribord.

The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not known by the disputed domain name and does not have trademarks identical or similar to it. The Respondent is not related to the Complainant, and the Complainant has never authorized the Respondent to register a domain name incorporating the EASYBREATH trademark. Since the disputed domain name fully incorporates the Complainant's EASYBREATH trademark, together with Decathlon's TRIBORD trademark, it is highly likely that Internet users will believe that the disputed domain name belongs to the Complainant.

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent was well aware of the Complainant and registered the disputed domain name for the sole purpose of attracting and misleading the Complainant's customers, because the EASYBREATH trademark and the TRIBORD trademark of the Complainant's parent company Decathlon were registered before the disputed domain name, which is confusingly similar combination of these two trademarks, and an Internet search for "easybreath" leads to websites relating to the Complainant and its products. Despite the absence of an active website at the disputed domain name, the Respondent's purpose in registering it was to capitalize on the reputation of the Complainant's EASYBREATH trademark by diverting Internet users and to deprive the Complainant of a strategic domain name. The Complainant also points out that the Respondent has concealed its identity through the use of a privacy service.

B. Respondent

The Respondent did not reply to the Complainant's contentions. In its only communication to the Center, dated March 21, 2018, the Respondent stated that the disputed domain name was registered about a year ago, and that the Respondent had not used it and did not intend to renew its registration. The Respondent also asked for information how it could transfer the disputed domain name to the Center.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: "[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name".

In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a Response addressing the contentions of the Complainant and the evidence submitted by it.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the EASYBREATH trademark.

The Panel notes that as summarized in section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), the applicable generic Top-Level Domain ("gTLD") in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. The practice of disregarding the gTLD in determining identity or confusing similarity is applied irrespective of the particular gTLD, including generally with regard to "new gTLDs"; the ordinary meaning ascribed to a particular gTLD would not necessarily impact assessment of the first element. The Panel sees no reason not to follow the same approach here, so it will disregard the ".pro" gTLD section of the disputed domain name.

The relevant part of the disputed domain name is therefore the section "easybreath-tribord". This section is a combination of the elements "easybreath" and "tribord", linked by a hyphen. The "easybreath" element is identical to the EASYBREATH trademark, while the "tribord" element is identical to the TRIBORD trademark of Decathlon.

The addition of a hyphen and of the trademark of the Complainant's parent company does not distinguish the disputed domain name from the Complainant's EASYBREATH trademark. This trademark is easily recognizable in the disputed domain name, and the addition of the TRIBORD trademark to the disputed domain name confirms the likelihood of confusion among consumers, who will associate it with the Complainant and with its parent company Decathlon. Given this link between the two companies and the fact that the Decathlon has marketed the Easybreath products of the Complainant as part of its Tribord line of water sports products, it is moreover likely that the public would perceive the disputed domain name as designating an official location where the Easybreath products of the Complainant are being offered.

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the EASYBREATH trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, previous UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.

The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not related to the Complainant and has not been authorized by the Complainant to register and use domain names incorporating the EASYBREATH trademark and that the Respondent is not commonly known by the disputed domain name. The Complainant has also pointed out that since the disputed domain name fully incorporates the Complainant's EASYBREATH trademark, together with DECATHLON's TRIBORD trademark, it is likely that Internet users will be misled to believe that the disputed domain name belongs to the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not alleged that is has rights and legitimate interests in the disputed domain name and has not disputed the Complainant's allegations in this proceeding.

The disputed domain name incorporates the EASYBREATH trademark entirely and is confusingly similar to it. The addition of the TRIBORD trademark to the disputed domain name cannot be regarded as a coincidence. Rather, it was likely done to cause confusion among Internet users, given the link between the Complainant and its parent company Decathlon, and the fact that Decathlon has marketed the Easybreath products of the Complainant as part of its Tribord line of water sports products. These circumstances make it likely that consumers would perceive the disputed domain name as being an official online location of the Complainant for its EASYBREATH products.

In view of the above, the Panel is satisfied that the Respondent, being well aware of the Complainant, registered and used the disputed domain name in an attempt to exploit the popularity of the EASYBREATH trademark to attract the attention of Internet users and to mislead them that the disputed domain name represents an official online location of the Complainant for its snorkeling masks. In the Panel's view, such conduct does not appear to be legitimate and cannot be regarded as giving rise to rights and legitimate interests of the Respondent.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

"(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 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 your website or location or of a product or service on your website or location."

The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

As discussed above, the disputed domain name fully incorporates the EASYBREATH trademark and is confusingly similar to it. The addition of the TRIBORD trademark to the disputed domain name cannot be regarded as a coincidence, and shows that the Respondent is well aware of the Complainant and of the EASYBREATH trademark, as well as of the Complainant's parent company Decathlon. The combination of trademarks incorporated in the disputed domain name is likely to confuse and mislead Internet users that the disputed domain name is related to the Complainant's Easybreath products.

On the basis of the above, and in view of the considerations of the Panel set out in the section related to rights and legitimate interests, the Panel is satisfied that the Respondent registered the disputed domain name with knowledge of the Complainant and targeting the EASYBREATH trademark in an attempt to attract traffic to the disputed domain name by confusing Internet users that they are reaching an official online location of the Complainant. In the Panel's view, such conduct of the Respondent amounts to bad faith registration of the disputed domain name.

The disputed domain name does not lead to an active website. The non-use of a domain name does not preclude a finding of bad faith. As summarized in section 3.3 of the WIPO Overview 3.0, while panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity, and (iv) the implausibility of any good faith use to which the domain name may be put.

All these elements are present here. The Complainant has submitted evidence of the popularity and recognition of its EASYBREATH trademark, while the Respondent has not submitted a Response and has used a privacy service to conceal its identity. In view of the international registration of the Complainant's EASYBREATH trademark and of Decathlon's TRIBORD trademark in multiple jurisdictions, including Ukraine, where the Respondent is located, the Panel is not aware of any good faith use to which the disputed domain name may be put without infringing the said trademarks or engaging in acts of unfair competition to the Complainant.

In view of all above, the Panel finds that the disputed domain name has been registered and used in bad faith.

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-tribord.pro> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: September 3, 2018