WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Breitling SA v. Whoisagent, Domain Name Protection Services Inc. / watches allen; 李南南
Case No. D2018-0825
1. The Parties
The Complainant is Breitling SA of Grenchen, Switzerland, represented by B.M.G. Avocats, Switzerland.
The Respondent is Whoisagent, Domain Name Protection Services Inc. of Denver, Colorado, United States of America / watches allen of Shanghai, China; 李南南 of Suzhou, Anhui, China.
2. The Domain Names and Registrars
The disputed domain name <bestbreitling.com> is registered with Name.com, Inc. (Name.com LLC); the disputed domain name <breitlingprice.top> is registered with Xin Net Technology Corp. (the "Registrars").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on April 12, 2018. On April 12, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain name. On April 13, the Registrar Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for the disputed domain name <breitlingprice.top> and providing the contact details. On April 12, 2018, the Registrar Name.com, Inc. (Name.com LLC) transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <bestbreitling.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 16, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 20, 2018.
On April 16, 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 April 18, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Chinese of the Complaint, and the proceedings commenced on April 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 16, 2018.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on May 24, 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 Swiss company globally active in the watch and luxury goods industry, and is particularly well-known in the field of technical watches for professionals active in the aviation industry.
The Complainant owns a large number of trademark registrations, either directly or through its subsidiary Breitling USA Inc., for BREITLING (both word and device marks) in a large number of jurisdictions, including in China, e.g., Chinese trademark registration number 558628, registered on July 20, 1991. The Complainant also owns a number of domain names, including <breitling.com>. All relevant registered trademarks and domain names adduced by the Complainant were successfully registered prior to the registration date of the disputed domain names, which were registered on, respectively, January 3, 2018 (<bestbreitling.com>) and February 5, 2018 (<breitlingprice.top>). Both disputed domain names direct to webpages selling ostensibly counterfeit watches bearing the BREITLING trademark.
The Complainant has provided evidence that it has attempted to resolve the matter amicably, but never received any response from the Respondent.
5. Parties' Contentions
The Complainant essentially contends that the disputed domain names are identical or confusingly similar to its prior trademarks for BREITLING, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered and are being used in bad faith.
The Complainant claims that its trademarks are famous and well-regarded in the watch and luxury goods industry, and provides evidence of its marketing materials used on the Internet.
The Complainant also provides evidence that both disputed domain names are linked to an active website, selling competing products, using the Complainant's trademarks, without any reference to a license, distribution agreement or other permission from the Complainant. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the domain names and constitutes use in bad faith.
The Complainant requests the transfer of the disputed domain names.
The Respondent did not reply to the Complainant's approach.
6. Discussion and Findings
6.1. First Preliminary Issue: Language of proceedings
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceedings shall be the language of the Registration Agreement. However, the Panel is given the authority to determine a language of proceeding other than the language of the Registration Agreement, taking into account the circumstances of every individual case.
The Complainant provides evidence that the Registration Agreement for <bestbreitling.com> is in English and claims that the Registration Agreement for <breitlingprice.top> cannot be located. The Complainant requests that the language of proceedings be English.
The Panel has carefully considered all elements of this case, in particular, the fact that the Registration Agreement for <bestbreitling.com> is in English; the request for consolidation of the domain name complaints; the Complainant's request that the language of proceedings be English; the lack of response of the Respondent (the Panel notes that the Respondent's rights have not been violated since the Respondent had the opportunity to put forward arguments in either English or Chinese); the fact that the first and main version of the website to which the disputed domain names lead is an English version, so that the Panel concludes that the Respondent has no problem to read and write in English; and the fact that Chinese as the language of proceedings could lead to unwarranted delay and costs for the Complainant. In view of all these elements, the Panel rules that the language of proceedings shall be English.
6.2. Second Preliminary Issue: Consolidation of complaints against multiple respondents
Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes. In this regard, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") section 4.11.2 provides: "Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario."
Taking into account all elements of this case, in particular, the fact that both disputed domain names lead to the same website, containing the same contact details; and the fact that the website to which both disputed domain names lead offers the same unauthorized Breitling goods for sale, the Panel considers that there is a strong presumption that the domain names are under common control. The Panel therefore rules that it is equitable and procedurally efficient to permit the requested consolidation in this case.
6.3. Discussion and Findings on the merits
The Policy requires the Complainant to prove three elements:
(i) the disputed domain name 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.
Based on the evidence and arguments submitted, the Panel's findings are as follows:
A. Identical or Confusingly Similar
The Panel finds that the Complainant has shown that it has valid rights in the sign "BREITLING" based on its use and registration of the same as a trademark, commencing several years prior to the registration of the disputed domain names.
Moreover, the disputed domain names are confusingly similar to the Complainant's trademark BREITLING, incorporating it in its entirety, as a clearly dominant feature. The generic additions, respectively, "best" and "price" do not differentiate them from the Complainant's trademark. Accordingly, the Panel rules that the disputed domain names are confusingly similar to the Complainant's trademarks and the first element required by the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has not granted any license or other permission for the Respondent to register the disputed domain name fully incorporating the Complainant's trademarks. The Panel notes that Respondent is not an authorized reseller or distributor, and is not making a legitimate noncommercial use or fair use of the Complainant's trademarks. The Panel therefore considers that none of the circumstances of legitimate interests envisaged by paragraph 4(c) of the Policy apply. The Panel also notes that no evidence or arguments have been submitted by the Respondent in reply. The Panel therefore rules that the Complainant has satisfied the second requirement under the Policy.
C. Registered and Used in Bad Faith
Given the reputation and fame of the Complainant's trademark, the registration of the disputed domain names, which incorporate such trademark in its entirety, is clearly intended to mislead and divert consumers to the disputed domain names. Even a cursory Internet search would have made it clear to the Respondent that the Complainant owns trademarks in BREITLING and uses it extensively, even in the Respondent's home jurisdiction China. In the Panel's view, this clearly indicates the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain names in bad faith. The addition of the terms "best" and "price" are even likely to increase the likelihood of confusion and may induce Internet users to believe that there is an association between the disputed domain names and the Complainant, as they suggest that the disputed domain names lead to a cheaper or better online marketplace for the goods marketed by the Complainant.
As to use of the disputed domain names in bad faith, the websites linked to the disputed domain names are currently used as an advertisement and sales platform for products identical to, and competing with the Complainant's products. This induces consumers to believe that the disputed domain names lead to one of the Complainant's official or authorized websites. Given the distinctiveness and reputation of the Complainant's trademark, the use of the disputed domain names is clearly intended to divert consumers to the disputed domain names, where unauthorized products are advertised and offered for sale. The Panel therefore rules that it has been demonstrated that the Respondent is using the disputed domain names in bad faith.
Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third requirement under the Policy.
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 names <bestbreitling.com> and <breitlingprice.top> be transferred to the Complainant.
Deanna Wong Wai Man
Date: June 7, 2018