WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Breitling SA v. Aleksandr V Tyan, Private Person
Case No. D2018-2616
1. The Parties
The Complainant is Breitling SA of Grenchen, Switzerland, represented by BMG Avocats, Switzerland.
The Respondent is Aleksandr V Tyan, Private Person of St. Petersburg, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <breitlingwatches.xyz> (the “disputed domain name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2018. On November 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 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 November 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2018.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on December 27, 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 was established in Switzerland in 1884 and has manufactured and sold watches ever since.
The Complainant is the registered owner of the following trademarks, amongst others:
International registration No. 613794 for BREITLING & design in class 14 with extension to the Russian Federation.
International registration No. 890749 for BREITLING in class 14 with extension to the Russian Federation.
The disputed domain name was registered on December 4, 2017. Later, the disputed domain name resolved to <gazeoutletwatches.com> where a wide range of trademark watches were offered and where unauthorized Complainant’s products and trademarks were displayed. Currently the disputed domain name resolves to an inactive website.
5. Parties’ Contentions
The Complainants alleges to be the owner of the BREITILING trademark and on that basis sent a cease and desist letter to the Respondent regarding the disputed domain name. The Respondent did no answer to it.
The Complainant asserts that BREITLING is an especially well-known trademark in the field of technical watches and the disputed domain name wholly incorporates it. The adjunction of the word “watches” further creates confusion since it is directly related to the Complainant.
The Respondent is not a licensee of the Complainant nor has the Complainant granted the Respondent authorization to use the disputed domain name. Moreover, the Complainant asserts that there is no indication that the disputed domain name corresponds to the Respondent’s name.
Further, the Complainant supports the lack of rights and legitimate interests of the Respondent in the Respondent’s clear and cut intention for commercial gain as described with regard to the third element.
The Respondent has registered the disputed domain name long after the Complainant’s use and registration of its trademark BREITLING in various regions of the world which leads the trademark to be recognizable and well known in numerous jurisdictions. The mark BREITLING is not a dictionary word and has no particular meaning. The disputed domain name used to resolve to a website promoting unauthorized BREITLING products where the name and trademark of the Complainant was displayed. Thus, the Respondent had knowledge of the Complainant´s mark.
With respect to the use of the disputed domain name the Complainant asserts that using a domain name to facilitate the sale of unauthorized goods is strong evidence of bad faith. Further, the Respondent’s choice of the disputed domain name chased after unfair profit by means of confusion with the Complainant trademark BREITLING.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of the disputed domain name to the Complainant, it is necessary that the Complainant proves, as required by paragraph 4(a) of the Policy, that:
(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.
There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate.
A. Identical or Confusingly Similar
Upon the evidence put before the Panel the Complainant has rights in the BREITLING trademark in a number of jurisdictions, including the Russian Federation.
The disputed domain name fully reproduces the BREITLING trademark. The Complainant’s trademark is clearly recognizable within the disputed domain name. The addition of the term “watches” does not prevent a finding of confusing similarity. Moreover, it is well established that Top-Level Domains (“TLDs”), here “.xyz”, are typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name.
Accordingly, the Panel finds that the Complainant has satisfied the first requirement as set out in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant’s allegations rest on the fact that the Respondent lacks rights or legitimate interests. As such, the Complainant has not authorized the Respondent to register or use the disputed domain name; the Respondent is not commonly known by the disputed domain name; the Respondent is not named after “Breitling” and the Respondent has made no legitimate commercial or noncommercial use of the disputed domain name since it is using the disputed domain name to promote the sale of unauthorized goods and products of the Complainant or its competitors.
With regard to the latter contend, the Panel notes that the Oki data test (Oki Data Amercias, Inc. v. ASD, Inc., WIPO Case No. D2001-0903) is to be applied for a finding of lack of rights or legitimate interests. The Panel notes that amongst other requirements, the Respondent is selling not only Complainant´s product but competitor’s ones and the disputed domain name wholly reproduces the well-known BREITLING trademark. Such finding prevents a finding of a legitimate interest in favour of the Respondent.
Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove it has rights or legitimate interests in the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. Notwithstanding, the Respondent did not answer both the cease and desist letter and the Complaint.
Moreover, the Panel finds that the disputed domain name’s composition effectively impersonates or suggests sponsorship or endorsement by the Complainant which cannot constitute fair use. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”).
Therefore, the Panel could not asses any defenses under the UDRP by the Respondent to resolve otherwise.
The Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
As set out at paragraph 4(a)(iii) of the Policy the Complainant is required to show that the Respondent both registered and is using the disputed domain name in bad faith.
There are a number of factors in the file that support a finding for a registration in bad faith. As such, that BREITLING is a well-known trademark, the incorporation of the Complainant´s trademark BREITLING in the disputed domain name, the selection of the “watches” term to be added to the disputed domain name and, the commercial activities of the Respondent selling the Complainant’s and other competitor’s products. Having in regard the previous factors the Panel finds more likely than not that the registration of the disputed domain name was probably based on a previous knowledge of the Complainant’s marks and activities.
With the evidence produced by the Complainant, the Panel is of the view that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. There is evidence that the disputed domain name redirects to the <gazeoutletwatches.com> website. Here the business is focused on selling a wide range of trademarked watches. Accordingly the website develops a commercial use where the Respondent is taking advantage of the notoriety and fame of the BREITLING trademark to sell other competitive products of the Complainant. Furthermore, as previously noted the disputed domain name effectively impersonates or suggests sponsorship or endorsement by the Complainant.
Finally, the present non-use of the disputed domain name heads towards the application of the doctrine of passive holding and therefore, registration and use in bad faith may also be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 in case of “passive holding”. Indeed, the well-known reputation of the BREITLING trademark, the failure of the Respondent to submit a response and the commercial activities developed by the Respondents support a finding of passive holding.
Upon the above mentioned, the Complainant has established the third element of 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 name, <breitlingwatches.xyz> be transferred to the Complainant.
Date: January 8, 2019