WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Breitling SA v. Washam Teri, Washam Tori

Case No. D2018-0841

1. The Parties

Complainant is Breitling SA of Grenchen, Switzerland, represented by B.M.G. Avocats, Switzerland.

Respondent is Washam Teri, Washam Tori of Fort Myers, Florida, United States of America.

2. The Domain Names and Registrar

The disputed domain names <breitlingprices.com> and <breitlingwatchesusa.com> are registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2018. On April 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 17, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 11, 2018.

The Center appointed Roberto Bianchi as the sole panelist in this matter on May 15, 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

Complainant, a Swiss company founded in 1884, manufactures high-end chronographs, watches and related accessories. Complainant (directly or through its subsidiary Breitling USA) owns trademark registrations in numerous jurisdictions, including the following:

Complainant (directly or through its subsidiary Breitling USA) owns trademark registrations in numerous jurisdictions, including the following:

BREITLING & design, International registration No. 613794, Registration Date January 7, 1994, covering precious metals, jewelry, horological and chronometric instruments in International Class 14.

BREITLING, International registration No. 890749, Registration Date June 1, 2006, covering precious metals, jewelry, horological and chronometric instruments in International Class 14.

BREITLING & design, United States registration No. 2352162, Registration Date May 23, 2000, filed on March 8, 1996, covering horological instruments and chronometrical instruments, namely watches, wrist-watches, straps for wrist-watches and watchcases, travel clocks, clocks, chronographs, chronometers, in International Class 14. First use 1884, first use in commerce 1947.

BREITLING, United States registration No. 2964474, Registration Date July 5, 2005, filed on June 18, 2002, covering horological instruments and chronometrical instruments, namely watches, wrist-watches, straps for wrist-watches and watchcases, travel clocks, clocks, chronographs, chronometers, in International Class 14, and caps, scarves, t-shirts, polo-shirts, jackets, pilot jackets, bomber`s jackets, parka jackets, in International Class 25. First use in commerce 1990.

The disputed domain names <breitlingwatchesusa.com> and <breitlingprices.com> were registered on November 30, 2017. Currently, the disputed domain names do not resolve to active websites. However, according to evidence provided by Complainant, the disputed domain names used to resolve to websites containing nothing but the name of each disputed domain name and a picture of a plant.

5. Parties’ Contentions

A. Complainant

Complainant contends the following:

The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights. The BREITLING trademark is highly recognizable and leads the public to think that the disputed domain names are somehow linked to Complainant. The adjunction of “prices” further creates confusion with the prior BREITLING trademark. The descriptive term “prices” is directly related to “Breitling” and will lead the consumer to think that the corresponding website is about the price of Complainant’s watches. This word has already been considered in prior UDRP cases as generic and therefore not able to exclude the similarity (see for example: L.A. Fitness International, LLC v. Carlo Magallon, Sambulging, WIPO Case No. D2012-0363 and LEGO Juris A/S v. Richard Larkins Sets&Reps, WIPO Case No.
D2012-1024).

The addition of “watchesusa” also creates confusion with the BREITLING trademark. The descriptive terms “watches” and “usa” are directly related to “Breitling” as Complainant sells watches and owns many stores in the USA. Consequently, the disputed domain names are confusingly similar to the trademark BREITLING.

Respondent has no rights or legitimate interests in respect of the disputed domain names. Respondent is not making a legitimate noncommercial use of the disputed domain names but, on the contrary, shows intent for commercial gain. Respondent is not a licensee of Complainant, nor has Complainant granted to Respondent an authorization to use the disputed domain names. Moreover, there is no indication that the disputed domain names correspond to Respondent’s name.

The disputed domain names were registered and are being used in bad faith. Complainant produces and sells high-end watches. Its trademark BREITLING is famous and internationally well-known (see Breitling SA, Breitling USA Inc. v. Acme Mail, WIPO Case No. D2008-1000). The disputed domain names wholly incorporate the trademark of Complainant. UDRP Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (particularly in the case of domain names incorporating the mark plus a descriptive term) (see WIPO Overview 3.0 section 3.1.4).

In addition, Respondent has registered the disputed domain names long after Complainant’s use and registration of its trademark BREITLING in various regions of the world. The mark BREITLING is not a dictionary word and has no particular meaning.

There is no plausible reason for Respondent’s choice of the disputed domain names other than the will to unfairly profit from the confusion with Complainant’s trademark BREITLING.

Finally, Complainant’s representative, before initiating the present proceedings, sent a cease and desist letter to Respondent by email and registered mail, asking for the transfer of the disputed domain names. Complainant received no answer. This behavior also clearly shows Respondent’s bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

By submitting printouts taken from the corresponding official trademark databases, Complainant has shown to the satisfaction of the Panel that it owns trademark rights in the BREITLING mark. See section 4 above.

The Panel notes that in the disputed domain names the mark BREITLING is incorporated in its entirety, with the addition of the descriptive or dictionary term “prices” in the disputed domain name <breitlingprices.com>, and of the descriptive or dictionary term “watches” and the geographical term “usa” in the disputed domain name <breitlingwatchesusa.com>. It is well established by previous UDRP panels that the addition in a domain name of such kind of terms is inapt to distinguish a domain name from the mark it incorporates. See WIPO Overview 3.0, section 1.8 (“Is a domain name consisting of a trademark and a descriptive or geographical term confusingly similar to a complainant’s trademark? Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”)

Accordingly, the Panel finds that the disputed domain names are confusingly similar to a mark in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant contends Respondent is not making a legitimate noncommercial use of the disputed domain names but, on the contrary, it shows intent for commercial gain. Complainant adds that Respondent is not a licensee of Complainant, nor has Complainant granted to Respondent an authorization to use the disputed domain names. Moreover, there is no indication that the disputed domain names correspond to Respondent’s name.

In the view of the Panel, Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain names. The Panel notes that Complainant’s mark, entirely incorporated in the disputed domain names, is notorious or well-known in respect of watches and chronological instruments, as found by prior UDRP panels. See, among others, Breitling SA v. Name Redacted, WIPO Case No. D2018-0258, Breitling SA v. 罗元凡, Luo Yuan Fan, WIPO Case No. D2018-0198 and Breitling SA v. Jaylee Greta, WIPO Case No. D2016-1544.

According to evidence provided by Complainant, the disputed domain names used to resolve to websites containing nothing but “BREITLING WATCHES USA POSTS” and “BREITLING PRICES POSTS”, respectively, and a picture of a plant. However, at the time of drafting this Decision, the Panel in use of its general powers, tried to connect its browser to each of the disputed domain names, and obtained in each case a “name not resolved” error message, stating that the server’s IP address could not be found. Further, a Panel search on the Wayback Machine (“www.archive.org“) for content on the websites at the disputed domain names delivered no result.¹ In short, there is no evidence of any use whatsoever of the disputed domain names in connection with a bona fide offering pursuant to Policy paragraph 4(c)(i), or of a fair o legitimate noncommercial use according to Policy paragraph 4(c)(iii. There is also no evidence that Respondent Washam Teri, Washam Tori is known by any of the disputed domain names. Thus, Policy paragraph 4(c)(ii) is also inapplicable. Taking into account these circumstances, the Panel considers that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names.

Since Respondent failed to answer to Complainant’s cease and desist letter and its reminder and to provide any explanation for its registration of the disputed domain names, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain names. See WIPO Overview 3.0, section 2.1 (“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”)

C. Registered and Used in Bad Faith

The Panel notes that the registration of Complainant’s marks predates the registration of the disputed domain names by many years. See section 4 above.

In addition, the inclusion of the terms “watches” and “usa” in the disputed domain name <breitlingwatchesusa.com> clearly refers to Complainant’s marks, products and stores in the United States, while the addition of the term “prices” in the <breitlingprices.com> disputed domain name also reinforces its association with Complainant’s mark. Further, the Panel agrees with prior UDRP panels that Complainant’s mark is notorious or internationally well-known and that it enjoys strong reputation in respect of high-quality watches. See, inter alia, Breitling SA v. Name Redacted, WIPO Case No. D2018-0258, Breitling SA v. 罗元凡, Luo Yuan Fan, WIPO Case No. D2018-0198 and Breitling SA v. Jaylee Greta, WIPO Case No. D2016-1544. These facts show that Respondent must have known of and targeted Complainant, its mark and products at the time of registering the disputed domain names. In the circumstances of this case, this means that the registration of the disputed domain names was in bad faith.

The Panel notes that according to the evidence provided, the disputed domain names were used to resolve to websites containing nothing but “BREITLING WATCHES USA POSTS” and “BREITLING PRICES POSTS”, respectively, and a picture of a plant. The Panel notes that the references to the BREITLING trademark in the use of the disputed domain names along with the terms “watches” and “prices” do not amount to a bona fide use. In addition, the Panel notes that the disputed domain names currently do not resolve to active websites. To the extent that the disputed domain names are inactive, see section 6. B above, the Panel considers that such inaction does not preclude a finding of use in bad faith under the following relevant circumstances indicative of passive holding:

(i) Complainant’s mark BREITLING is highly distinctive of the goods it covers, and enjoys a substantial reputation;

(ii) taking into account the only use given to the disputed domain names, it would be implausible that any of the disputed domain names could be used other than as shown, i.e. by creating confusion with Complainant’s well-known mark presumably to unfairly obtain a commercial gain;

(iii) Respondent failed to reply to Complainant’s cease and desist letter and its reminder;

(iv) Respondent failed to submit a response or to provide any evidence of actual or contemplated use in good faith.

See WIPO Overview 3.0, section 3.3. (“Can the “passive holding” or non-use of a domain name support a finding of bad faith? From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”)

For all the above, the Panel finds that the disputed domain names were registered and are being used in bad faith.

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 names <breitlingprices.com> and <breitlingwatchesusa.com> be transferred to Complainant.

Roberto Bianchi
Sole Panelist
Date: May 25, 2018

¹ See WIPO Overview 3.0, section 4.8 (“May a panel perform independent research in assessing the case merits? Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases.”)