WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Montres Breguet SA v. Zhangming Li
Case No. D2021-1509
1. The Parties
The Complainant is Montres Breguet SA, Switzerland, internally represented.
The Respondent is Zhangming Li, China.
2. The Domain Name and Registrar
The disputed domain name <breguet-hi.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2021. On May 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 2021, 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 May 19, 2021 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 May 24, 2021.
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 May 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2021.
The Center appointed Rachel Tan as the sole panelist in this matter on June 25, 2021. 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 watch manufacturer found by Abraham-Louis Breguet in 1775. It was acquired by the Swatch Group Ltd in 1999. The Complainant’s business is headquartered in Switzerland, and it operates boutiques around the world including in the United States of America, China, and Japan.
The Complainant is the owner of a range of trade mark registrations that comprise or contain the term “Breguet”. For example, International Registration No. 230825 for BREGUET registered on April 16, 1960, designating, inter alia, Switzerland in classes 9 and 14; International Registration No. 566731 for BREGUET registered on January 22, 1991, designating, inter alia, China in classes 9 and 14; and International Registration No. 877071 for registered on January 31, 2006, designating, inter alia, China in classes 9, 14, 16, 18, and 25.
The Respondent is Zhangming Li, China.
The disputed domain name was registered on April 20, 2021 and resolves to an active webpage featuring pornographic and online gambling content.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered BREGUET mark. The disputed domain name incorporates the BREGUET mark in its entirety. The additional suffix “hi” and a hyphen are far too minor to dispel a confusing similarity with the Complainant’s mark. The addition of the generic Top-Level Domain (“gTLD”) extension “.com” may be disregarded.
The Complainant further alleges that there are no signs that the Respondent has been commonly known by the disputed domain name. The Respondent is not in any way related to the Complainant or its business activities nor has the Complainant granted a license or authorized the Respondent to use its marks or apply for registration of the disputed domain name. The disputed domain name resolves into a website displaying pornographic material, which confirms the Respondent is not making any legitimate use of the disputed domain name and fails to constitute a bona fide offering of goods or services.
The Complainant finally asserts that the Respondent is substantially harming the goodwill and reputation of the Complainant by presenting pornographic material to the Complainant’s potential consumers who are attracted to the disputed domain name. It is a clear case of porno-squatting and such conduct is sufficient to find bad faith. The Respondent is giving Internet users the impression that the disputed domain name is an official website and/or a website sponsored, affiliated, or otherwise endorsed by the Complainant with the aim of increasing Internet traffic to the resolved pornographic website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the BREGUET mark.
The Panel notes the disputed domain name is comprised of the BREGUET mark in its entirety. The positioning of the BREGUET mark in the front of the disputed domain name is instantly recognizable. In cases where a domain name incorporates the entirety of a trade mark, 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. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is accepted by previous UDRP panels that the addition to the complainant’s trade mark of other words or terms whether descriptive, geographical, pejorative, meaningless, or otherwise would not affect the confusing similarity of the domain name from the registered trade mark under the first element of the Policy. As such, the Panel finds the additional elements “-” and “hi” do not preclude a finding of confusing similarity between the BREGUET mark and the disputed domain name. See section 1.8 of the WIPO Overview 3.0.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
In circumstances where the Complainant possesses exclusive rights to the BREGUET mark, whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0.
The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “breguet” in the disputed domain name. Further, there is no indication to show that the Respondent is commonly known by the disputed domain name or otherwise has rights or legitimate interests in the disputed domain name. The Complainant has not granted the Respondent a license or authorization to use the Complainant’s BREGUET mark or register the disputed domain name. However, the Respondent is currently using the disputed domain name on a webpage wholly unrelated to the Complainant’s business since it features pornographic and gambling content. None of these circumstances indicates a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c) of the Policy.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s BREGUET mark had been registered well before the registration of the disputed domain name. Through extensive use and advertising, the Complainant’s BREGUET mark is known throughout the world. Moreover, the term “breguet” is not merely a name. Search results using the key word “breguet” on the search engines direct Internet users to the Complainant and its products, which indicates that a connection between the BREGUET mark and the Complainant has been established. As such, the Respondent either knew or should have known of the Complainant’s BREGUET mark when registering the disputed domain name or has exercised “the kind of willful blindness that numerous panels have held support a finding of bad faith”. See eBay Inc. v. Renbu Bai, WIPO Case No. D2014-1693; Barclays Bank PLC v. Andrew Barnes, WIPO Case No. D2011-0874.
Section 3.1.4 of the WIPO Overview 3.0 states that “mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. In this case, the disputed domain name incorporates the Complainant’s famous BREGUET mark creating a presumption of bad faith.
In addition, the disputed domain name is being used by the Respondent on a website featuring pornographic and online gambling content, which demonstrates the Respondent is making commercial gain from the website by attracting Internet users by creating a likelihood of confusion with the Complainant’s mark. See paragraph 4(b)(iv) of the Policy. Further, the pornographic materials on the website tarnish the BREGUET mark and this has been found by previous UDRP panels to constitute evidence of registration and use of a domain name in bad faith. See section 3.12 of the WIPO Overview 3.0.
The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the Respondent’s lack of rights or legitimate interests, and by registering and using the disputed domain name as discussed above, the Panel is led to conclude that the disputed domain name was registered and is being used in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) 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 <breguet-hi.com> be transferred to the Complainant.
Date: July 9, 2021