WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Breitling SA v. 邓鹏雨(Dengpengyu)
Case No. D2019-1350
1. The Parties
The Complainant is Breitling SA, Switzerland, represented by BMG Avocats, Switzerland.
The Respondent is 邓鹏雨(Dengpengyu), China.
2. The Domain Name and Registrar
The disputed domain name <shopbreitling.com> (“the Disputed Domain Name”) is registered with Xin Net Technology Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2019. On June 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 21, 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 June 21, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on June 25, 2019. The Respondent did not comment on the language of the proceeding.
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 proceedings commenced on June 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2019.
The Center appointed Kar Liang Soh as the sole panelist in this matter on August 2, 2019. 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 high-end Swiss watch manufacturer that traces its historical beginnings to a small workshop in St. Imier in 1884. The Complainant has an international reputation and presence with trademark registrations in many jurisdictions around the world incorporating the trademark BREITLING. These include:
June 1, 2006
February 22, 2008
United States of America
July 5, 2005
United States of America
May 23, 2000
Both International registrations designate and have been granted protection in China. The Complainant holds the domain name <breitling.com> and operates an official website resolved from the domain name.
No information on the Respondent is available to the Panel beyond that contained in the Complaint and the registration details of the Disputed Domain Name. The Disputed Domain Name was registered on September 5, 2018 and used to redirect to a Chinese-language website at “www.69manx.com”. The website appeared to promote gaming and betting on sports. The top menu purported to provide links to content associated with lottery tickets and restricted content.
The Complainant issued a cease and desist letter in October 2018 to the Respondent but did not receive any reply despite two reminders. By around the time of the Complaint, the Disputed Domain Name no longer redirected or resolved to any active website.
5. Parties’ Contentions
The Complainant contends that:
a) The Disputed Domain Name is identical or confusingly similar to the Complainant’s registered trademark BREITLING. The addition of the word “shop” to the Disputed Domain Name further creates confusion with the trademark BREITLING conveying the impression that the Disputed Domain Name resolves to a website on which the Complainant’s products are sold. As the word “shop” is descriptive, the Disputed Domain Name must be regarded as identical to the Complainant’s trademark;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not making a legitimate non-commercial use of the Disputed Domain Name but shows an intent for commercial gain. The Respondent is not a licensee of the Complainant. The Complainant has not granted any authorisation to the Respondent to use the Disputed Domain Name. There is no indication that the Disputed Domain Name corresponds to the Respondent’s name; and
c) The Disputed Domain Name is registered and is being used in bad faith. The Respondent has registered the Disputed Domain Name long after the Complainant’s trademark. The Respondent should have known of the Complainant’s trademark and selected the Disputed Domain Name to take advantage of it. Even though the Disputed Domain Name no longer resolved to a website, the Respondent’s holding of the Disputed Domain Name constitutes “passive holding” and does not prevent the finding of bad faith. There is no plausible explanation for the Respondent’s choice of the Disputed Domain Name other than to unfairly profit from the confusion with the Complainant’s trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of Proceeding
Many modern websites are designed to adapt to the language of a visitor’s locale. It is not surprising that the Complainant’s attempt to review the registration agreement of the Disputed Domain Name online, what was presented was the version of the registration agreement as it pertains to the Complainant’s locale. The language of the registration agreement of the Disputed Domain Name could not be readily determine. The Complaint was accordingly filed in English.
In the present case, the language of the registration agreement is Chinese. The Complainant requested that English be adopted as the language of the proceeding. The Panel is empowered to exercise its discretion pursuant to paragraph 11(b) of the Rules having regard to the circumstances. Having done so, the Panel decides that English should be adopted as the language of the proceedings. In particular, the Panel took into consideration the following circumstances:
a) The Complaint has already been filed in English;
b) The Respondent has chosen not to participate in this proceeding by not filing a response;
c) The Respondent has not objected to the Complaint being filed in English. The Disputed Domain includes the English word “shop”, which suggests that the Respondent possesses a certain extent of familiarity with the English language;
d) The Panel is bilingual and is well equipped to deal with the proceeding in English, Chinese or both should the Respondent choose to participate in the proceeding using only Chinese; and
e) Requiring the Complainant to now adopt Chinese as the language of proceeding will not only serve no purpose but also lead to unnecessary delay and complexity in the proceeding going forward.
The Complainant must establish the following elements of paragraph 4(a) of the Policy in order to succeed in this proceeding:
a) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
c) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant’s numerous trademark registrations for BREITLING leave the Panel with little doubt that the Complainant has rights in it. The only difference between the Complainant’s trademark BREITLING and the Disputed Domain Name, ignoring the Top-Level Domain in accordance with established panel practice, is the added prefix “shop” in the Disputed Domain Name. There is no evidence that BREITLING has any meaning, or that it points to anything other than the Complainant’s trademark. The Panel agrees with the Complainant that the word “shop” is descriptive and clearly suggests to a reasonable person that the Disputed Domain Name is associated with the availability of products for purchase under the trademark BREITLING.
Therefore, the Panel finds the Disputed Domain Name confusingly similar to the Complainant’s trademark. The word “shop” does not serve to distinguish the Disputed Domain Name from the Complainant’s trademark. The Complainant succeeds in establishing the first limb of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant has confirmed that the Respondent is neither a licensee nor authorized user of the trademark BREITLING. There is also no evidence that the Respondent is known by the Disputed Domain Name. The website that previously redirected from the Disputed Domain Name appears on the balance of probabilities to be commercially-oriented. In the absence of any indication to the contrary, the Panel finds difficulty in entertaining any likelihood that the Disputed Domain Name is being used in a legitimate
In the circumstances, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The burden of production therefore shifts to the Respondent. Since no response was filed, the Respondent has failed to discharge the burden and the Panel holds that the second limb of paragraph 4(a) of the Policy is made out on the facts.
C. Registered and Used in Bad Faith
The Respondent’s active promotion of gaming and betting on the website previously redirected to is highly suggestive of an intention for commercial gain. The website does not make any reference to the trademark BREITLING or products under the same. The only logical conclusion that can reasonably be drawn from the present circumstances is that the Respondent must have intended to associate the Disputed Domain Name with the Complainant’s trademark BREITLING and consequently also associate its gaming and betting website at “www.69manx.com” with the Complainant’s trademark BREITLING as a result. It does not require any imagination to realize that unknowing visitors to a URL under the Disputed Domain Name would then be redirected to its commercial website. Such a situation falls squarely in line with the type of bad faith outlined in paragraph 4(b)(iv) of the Policy, wherein it states:
“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 web site or location or of a product or service on your web site or location.”
The Panel is of the view that the Respondent has in registering the Disputed Domain Name and was using it to redirect visitors with an intent for commercial gain to the gaming and betting content of the website at “www.69manx.com” by creating a likelihood of confusion with the Complainant’s trademark BREITLING as to the source, sponsorship, affiliation or endorsement of the website at “www.69manx.com”. It matters not that by the time of the Complaint, the Disputed Domain Name no longer redirects to the website. The short time lapse between the discovery of the redirection, the cease and desist letter and the shutting off of redirection does not prevent a finding of the subsistence of bad faith registration and use in the circumstances.
Taking all circumstances into consideration, the Panel finds for the Complainant in relation to the third limb of paragraph 4(a) of the Policy on the basis of paragraph 4(b)(iv). The Panel has also not failed to notice that the Respondent has an unusual and suspicious habit of misdirection. The Respondent provided an address in registering the Disputed Domain Name that stated “Beijing, Sichuansheng” (i.e., Sichuan province). The Panel takes judicial notice that Beijing is not in Sichuan province (actually Beijing is not in any province of China), significantly over 1,000 kilometers away. Such behavior reinforces the Panel’s finding.
In view of the foregoing, the Panel does not consider it necessary to deliberate on the alternative ground of bad faith in the form of “passive holding” raised by the Complainant.
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 <shopbreitling.com> be transferred to the Complainant.
Kar Liang Soh
Date: August 20, 2019