WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Michael Vahey LLC, v. Fouad Biroum

Case No. DCO2020-0022

1. The Parties

The Complainant is Michael Vahey LLC, United States of America (“United States”), represented by Threshold Counsel, PC, United States.

The Respondent is Fouad Biroum, France.

2. The Domain Name and Registrar

The disputed domain name <breathe-healthy.co> is registered with 1&1 IONOS Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2020. On April 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 2020, 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 April 22, 2020, 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 amendment to the Complaint on April 24, 2020.

The Registrar also indicated that the language of the Registration Agreement was French. The Center sent an email communication in English and French, to the Parties on April 23, 2020, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of the proceeding, a Complaint translated into French, or a request for English to be the language of the proceeding. The Complainant filed a request for English to be the language of the proceeding on April 24, 2020. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amendment to 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 May 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2020.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on June 3, 2020. 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 United States based limited liability company active in the field of breathing masks for medical purposes since 2005.

The Complainant is the owner of the United States trademark BREATHE HEALTHY with registration number 4563344, registered on July 8, 2014, in class 10.

In addition, the Complainant is also the owner of the domain name <breathehealthy.com> reproducing the trademark BREATHE HEALTHY as well as common law rights in the trademark BREATHE HEALTHY in the United States.

The Respondent is a private individual domiciled in France.

The disputed domain name was registered on March 28, 2020.

The disputed domain name initially resolved to a website selling competing products as evidenced in Annex 7 to the Complaint. At the time of the Decision, the disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant states that it has no knowledge of the language of the Registration Agreement. In any event, it requests that the language of the proceeding be English.

On the merits, the Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(a) the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

According to the Complainant, its trademark is clearly recognizable in the disputed domain name as it incorporates the entirety of the trademark.

Additionally, the Complainant claims that the mere addition of a hyphen does not negate the confusing similarity between the disputed domain name and the Complainant’s trademark.

Finally, the Complainant contends that the country code Top-Level Domain (“ccTLD”) “.co” does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar.

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant asserts that the Respondent is not affiliated in any way with the Complainant and has not been authorized or licensed by the Complainant to use its trademark.

The Respondent does not appear to have used the disputed domain name in connection with a bona fide offering of goods or services. In fact, the disputed domain name used to resolve to a website selling competing respiratory masks under the Complainant’s trademark. In doing so, the Respondent’s use of the disputed domain name intentionally attracted and redirected Internet users looking for the Complainant to a competitive website for the Respondent’s commercial gain, especially given the COVID-19 pandemic respiratory mask shortage.

Moreover, the Complainant argues that the Respondent’s brand is “UrbanXMaskX” as evidenced in Annex 6 to the Complaint and that it can therefore not be commonly known by the disputed domain name.

(c) the disputed domain name was registered and is being used in bad faith.

The Complainant asserts that there is opportunistic bad faith in the Respondent behavior in both registering and using the disputed domain name as the Respondent must have had at least constructive notice of the Complainant’s trademark to engage in the above described practice. According to the Complainant, the disputed domain name must have been registered in order to attract Internet users by creating likelihood of confusion.

The Complainant further contends that even ifthe Respondenthadnot actually been aware of the Complainant’s rights, it should have known of the registration and use of the trademark prior to registering the disputed domain name. A simple search on the United States Patent and Trademark Office (“USPTO”) database, on the Internet using Google or any other search engine of the words “Breath Healthy” shows that the results are linked to the Complainant’s and its activities.

Relying on Grundfoz A.S v. Texas International Property Associates, WIPO Case No. D2007-1448, the Complainant claims that the Respondent’s failure alone to conduct such a search of the USPTO database and the Internet using a search engine before registering a domain name has been held to be a registration in bad faith.

In addition, the Respondent decided to hide its identity using a privacy protection service, what according to the Complainant should be further bad faith evidence.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of the Proceeding

Before ruling on the merits of the dispute, the Panel wishes to address a preliminary procedural issue, that of the language of the proceedings.

Pursuant to paragraph 11(a) of the Rules, “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

Considering the following circumstances, the Panel, exercising its authority to determine the language of the proceeding under paragraph 11(a) of the Rules, has decided English as the language of the proceeding:

- The Complaint was filed in English;

- The Complainant is a United States based entity, and represented by a United States firm;

- The Respondent did not comment on the language of the proceeding;

- The Respondent did not reply to the Complainant’s contentions;

- The disputed domain name comprises English terms; and

- Ordering the translation of the Complainant would only result in extra delay and cost for the Complainant.

B. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights in BREATHE HEALTHY.

Secondly, the disputed domain name fully incorporates the Complainant’s BREATHE HEALTHY trademark in which the Complainant has rights.

Thirdly, this Panel finds that the addition of a hyphen does not constitute an element so as to avoid confusing similarity for purposes of the Policy.

Finally, this Panel finds, similarly to other UDRP panels, that the addition of the ccTLD “.co” to the disputed domain name is viewed as a standard registration requirement and as such is disregarded.

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is identical to the Complainant’s BREATHE HEALTHY trademark.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.”

This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.

It is a well-established view of UDRP panels, with which this Panel agrees, that a prima facie case advanced by the complainant is generally sufficient for the complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the respondent does not submit any evidence to the contrary (AGUAS DE CABREIROA, S.A.U. v. Hello Domain, WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson, WIPO Case No. D2016-1338).

In the present case, taking into consideration the default of the Respondent, this Panel finds that the Complainant has submitted a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case, including the following factors:

- there is no evidence that the Respondent has been authorized or licensed to use the disputed domain name by the Complainant;

- there is no evidence that legitimate noncommercial or fair use of the disputed domain name has taken place; and

- there is no evidence that the Respondent has been commonly known by the disputed domain name.

For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith.”

With regard to the registration of the disputed domain name, this Panel believes bad faith may be found where the Respondent knew or should have known of the registration and use of the BREATHE HEALTHY trademark prior to registering the disputed domain name. Such is true in the present case in which the Respondent registered the disputed domain name after the Complainant obtained its trademark registration for the BREATHE HEALTHY trademark.

The identity between the disputed domain name and the Complainant’s trademark BREATHE HEALTHY and the fact that the Respondent operates in the same field as the Complainant makes it more likely than not that the Respondent was aware of the Complainant and its business, services, and rights when it registered the disputed domain name.

As for the use of the disputed domain name, based on the evidence submitted, the Panel holds that the Respondent is using it to intentionally attempt to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website attached to the disputed domain name and goods accessed through it.

At the time of the Decision the disputed domain name does not resolve to an active website. However, non-use of a domain name can, in certain circumstances, constitute a domain name being used in bad faith. The Panel has considered whether, in the circumstances of this particular case, the current passive holding of the disputed domain name by the Respondent does not change the Panel’s findings above and amounts to the Respondent acting in bad faith.

The Panel also finds that the Respondent’s failure to file a Response is an additional circumstance demonstrating the Respondent’s bad faith.

In light of the above, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under the Policy.

7. Decision

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 <breathe-healthy.co> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: June 17, 2020