WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Projetclub v. Muzyka A. A.
Case No. D2018-1639
1. The Parties
The Complainant is Projetclub, of Villeneuve d'Ascq, France, represented by AARPI Scan Avocats, France.
The Respondent is Muzyka A. A. of Kiev, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <easybreath.top> ("Domain Name") is registered with OnlineNic, Inc. d/b/a China-Channel.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 19, 2018. On July 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 23, 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.
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 of the Complaint, and the proceedings commenced on July 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 20, 2018.
The Center appointed Olga Zalomiy as the sole panelist in this matter on August 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 in this administrative proceeding is a business support services company, which is a subsidiary of Decathlon, the major French manufacturer specializing in the conception and retailing of sporting and leisure goods. The Complainant owns an International registration of the EASYBREATH trademark no. 1227496, registered on October 6, 2014 covering goods in classes 9, 25, and 28 and a French registration of the EASYBREATH trademark no. 4053624 registered on December 10, 2013 in classes 9, 25 and 28.
The Respondent registered the Domain Name on April 18, 2018. The Domain Name used to resolve to a website offering for sale purported Easybreath snorkeling masks. Currently, the Domain Name resolves to a website featuring a message from a hosting company in Russian, which states that the website is closed and will be restored upon payment of the hosting services.
5. Parties' Contentions
The Complainant claims that it is a subsidiary of a major French manufacturer specializing in the conception and retailing of sporting and leisure goods. The Complainant contends that the Domain Name is confusingly similar to its EASYBREATH trademark because it incorporates the EASYBREATH trademark in its entirety. The Complainant alleges that the generic Top-Level Domain ("gTLD") ".top" should be disregarded from the likelihood of confusion analysis due to its purely technical function.
The Complainant claims that the Respondent has not been commonly known under the Domain Name and that it is not licensed or authorized by the Complainant to use the EASYBREATH trademark in any manner. The Complainant contends that the Respondent is using the Domain Name to direct to a website that offers for sale competing, if not counterfeiting, products under the Complainant's EASYBREATH mark. The Complainant argues that such use does not constitute a bona fide offering of goods or services, especially in the situation where the Respondent does not disclose its relationship with the Complainant.
The Complainant contends that the Respondent registered the Domain Name in bad faith. The Complainant claims that it is highly unlikely that the Respondent did not know about the Complainant and its goods because of the following: (1) the EASYBREATH trademark was registered before the Domain Name; (2) any Google search or search using another search engine for "easybreath" would first display links to the websites relating to the Complainant and its products; (3) it is unlikely that the Respondent's choice of the Domain Name identical to the Complainant's trademark is coincidental; (4) the Respondent registered the Domain Name because of popularity of the Complainant's EASYBREATH trademark in the snorkeling industry for the sole purpose of attracting the Complainant's customers.
The Complainant claims that the Respondent is using the Domain Name in bad faith because the Respondent registered the Domain Name identical to the Complainant's EASYBREATH trademark to capitalize on the reputation of the EASYBREATH marks by diverting Internet users seeking Easybreath snorkeling masks to the Respondent's website, where consumers may purchase at least confusingly similar marks, if not counterfeit masks. The Complainant contends that by using the Domain Name to direct to a website, which offers for sale confusingly similar, if not counterfeit masks, the Respondent is not only causing economic harm to the Complainant, but also may be creating risks for consumers in terms of safety and security.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the 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 respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Under the first UDRP element, the Complainant is required to prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Pursuant to section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), "[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case." Here the Complainant owns the EASYBREATH trademarks by virtue of its trademark registrations.
The Domain Name consists of the Complainant's EASYBREATH trademark and the gTLD ".top". "Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing."1 The addition of the gTLD ".top" is disregarded under the confusing similarity test.2 The Panel finds that the Domain Name is identical to the Complainant's EASYBREATH trademark, because it incorporates the mark in its entirety.
Thus, the Panel finds the first element of the UDRP has been satisfied.
B. Rights or Legitimate Interests
Under the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent3. Once the Complainant has made out the prima facie case, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name4. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.5
Pursuant to UDRP paragraph 4(c), the following may demonstrate rights or legitimate interests in the Domain Name:
(i) before any notice 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 (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant claims that the Respondent is not commonly known by the Domain Name. The Respondent's name, "Muzyka A. A.", does not resemble the Domain Name in any manner – thus, there is no evidence that suggests that the Respondent is commonly known by the Domain Name.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name because the Complainant has not authorized the Respondent to use the Complainant's EASYBREATH trademark in any manner. Without a license or permission from the Complainant, the Respondent is, therefore, an unauthorized user of the mark.
Based on the evidence on file, the Domain Name used to direct to a website offering for sale purported Easybreath snorkeling masks. Despite the Complainant's assertions, there is no evidence confirming that the masks are counterfeit.
Generally, unauthorized resellers might have legitimate interests in a domain name containing complainant's trademark if their activities comply with the following cumulative requirements:
"(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant's relationship with the trademark holder; and
(iv) the respondent must not try to 'corner the market' in domain names that reflect the trademark."6
Here, it appears that the website connected to the Domain Name may have been used for sales of only purported Easybreath snorkeling masks. However, there was no disclosure of the Respondent's relationship with the Complainant on the website, let alone a prominent and accurate disclosure of such relationship. Consequently, the Panel finds that the Respondent does not have rights or legitimate interests in the Domain Name as an unauthorized reseller.
Further, the Respondent is not making a fair use of the Domain Name. It is well-established that "respondent's use of a domain name will not be considered 'fair' if it falsely suggests affiliation with the trademark owner".1 "UDRP panels have found that domain names identical to a complainant's trademark carry a high risk of implied affiliation"8. Here, the Respondent's use of the Domain Name is not considered "fair" because the Domain Name is identical to the Complainant's EASYBREATH trademark and, as such, creates an impression of affiliation with the Complainant.
The Panel therefore finds that the Complainant has made out a prima facie case in respect to the Respondent's lack of rights or legitimate interests in the Domain Name. Since the Respondent failed to rebut the Complainant's case, the Panel holds that the second element of the UDRP has been satisfied.
C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
The Panel finds that the Respondent registered the Domain Name in bad faith because he knew of the Complainant's trademark at the time of the Domain Name registration. By using the Domain Name identical to the Complainant's EASYBREATH trademark, to direct to a website selling purported Complainant's snorkeling masks, the Respondent showed that its choice of the Domain Name was intentional to profit from the reputation of the Complainant's mark.
The Panel also finds that the Respondent is using the Domain Name in bad faith. First, the Respondent tried to capitalize on the goodwill of the Complainant's trademark by using the Domain Name to attract, for commercial gain, Internet users to the Respondent's website by creating likelihood of confusion with the Complainant's mark as to the affiliation or endorsement of either the Respondent or its website. Second, although the Domain Name currently does not resolve to any active website, it is well-established that passive holding of a domain name does not prevent finding of bad faith use9 where "any good faith use to which the [D]omain [N]ame may be put"10 is implausible. Taken the Respondent's previous use of the Domain Name and the fact that the Domain Name is identical to the Complainant's mark, the Panel finds implausible any good faith use of the Domain Name.
Evidence on file also shows that the Respondent provided false contact information for registration of the Domain Name, which is another indication of bad faith11.
Therefore, the Panel finds that the Domain Name was registered and is being used in bad faith. The third element of the UDRP has been proved.
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 <easybreath.top> be transferred to the Complainant.
Date: September 6, 2018