Breitling SA and Breitling USA Inc. v. Whois Privacy Protection Service, Inc. / Breitling USA, Inc.
Case No. D2008-0302
1. The Parties
The Complainants are the Breitling SA, Switzerland and Breitling USA Inc, United States of America.
The Respondent is Breitling USA, Inc, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <breilting.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2008. On February 29, 2008 the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On February 29, 2008 eNom, Inc. transmitted by email to the Center its verification response confirming that the Disputed Domain Name’s holder was Breitling USA, Inc. On March 4, 2008 the Center sent a further e-mail to the Registrar noting that the Disputed Domain Name was set to expire prior to the conclusion of this proceedings and requested confirmation that the Disputed Domain Name would be placed on registrar lock status until the proceeding was concluded. On the same date, the Registrar informed the Center that regardless of the locked status, the domain name should be renewed by one of the Parties within the expiration date. On March 10, 2008, the Complainants sent an e-mail to the Center noting that the Respondent’s information contained in the WHOIS database was incorrect. The Complainant noted, indeed, that the Respondent was a Swiss company but its name was Breitling USA, Inc. and that its administrative and contact details were constituted by the Complainants’ details but miss-spelled. On March 11, 2008 the Center sent an e-mail to the Registrar noting that the current WhoIs on its website indicated a change in the domain name status for <breilting.com> and asked for a confirmation that the domain name was locked and would remain locked until the conclusion of the proceedings. The Center also noted that the expiry date for the domain name appeared to have changed from March 4, 2008 to March 4, 2009 and assumed from this that the domain name was still active. Accordingly, on March 14, 2008 the Center decided to go ahead with the proceedings as the Complainants confirmed they did not have the control of the Disputed Domain Name.
Meanwhile, on March 11, 2008 the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2008.
As the Respondent did not submit any response within March 31, 2008, the Center notified the Respondent’s default on April 1, 2008.
The Center appointed Alistair Payne as the sole panelist in this matter on April 10, 2008. 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 Complainants are the Swiss company Breitling SA and the American company Breitling USA, Inc. which manufacture specialized chronographs and watches bearing the trademark BREITLING.
The Complainants own a number of trademark registrations for BREITLING. The earliest registration for BREITLING was filed in the United States of America on June 13, 1950. Then the trademark was widely protected through several trademark registrations. On June 1, 1995, Breitling S.A. registered the domain name <breitling.com>.
The Complainant is seeking the transfer of the Disputed Domain Name.
5. Parties’ Contentions
A. Complainant
The Complainants argue that the Disputed Domain Name is confusingly similar to its BREITLING trademarks. The Complainants contend that the Disputed Domain Name is an imitation of the Complainants’ trademarks. The sole difference is the inversion of the letters L and T. The Complainants highlight that the miss-spelling phenomenon is often referred to as “typosquatting” by WIPO Cases and that the deliberate misspellings of registered trademarks are usually considered by WIPO Panels as being confusingly similar to such trademarks.
The Complainants contend that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Indeed, according to the Complainants the Respondent is not currently and has never been known by the Disputed Domain Name or the trademark BREITLING. Further, the Complainants note that the Disputed Domain Name points to a parking webpage that displays a plethora of links to websites provided by third parties (none of them being authorized dealers of the Complainants) which sell fake Breitling watches and watch products. The Complainants assert that such use is not a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy.
The Complainants also contend that the Disputed Domain Name was registered in bad faith because, at the time of the Disputed Domain Name’s registration, the BREITLING trademark was well-known throughout the world for watches and the Respondent could not have made up the term “breilting” which, as noted above, is a miss-spelling of the Complainants’ trademarks.
Further, the Complainants note that the registrant (at the time the Complaint was filed) is clearly identified as a cybersquatter and has been already condemned many times by WIPO Panels.
B. Respondent
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
If the Complainants are to succeed, they must prove each of the three elements referred to in Paragraph 4(a) of the Policy, namely that:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainants have rights; and
(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.
The Panel will proceed to establish whether the Complainants have discharged the burden of proof in respect of each of the three elements referred to in Paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainants have provided and the Panel accepts, evidence of their trademark registrations and the Panel considers that the miss-spelling of the BREITLING trademarks, in the present circumstances, does not eliminate the confusing similarity of the Complainants’ trademarks with the Disputed Domain Name (see Briefing.com Inc v. Cost Net Domain Manager,
WIPO Case No. D2001-0970 – <breifing.com> was deemed confusingly similar to <briefing.com> - and Volvo Trademark Holding AB v. Unasi, Inc.,
WIPO Case No. D2005-0556).
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainants’ trademarks and that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Complainants must establish a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel accepts the Complainants’ evidence that, at the time that this Complaint was made, the Respondent’s website at <breilting.com> displayed numerous links to websites provided by third parties (none of them being authorized dealers of the Complainants) which sold fake Breitling watches and watch products.
There is no evidence to suggest that the Respondent is commonly known by the Disputed Domain Name or by the names “breilting” or “breitling” and the Complainants have confirmed that they have not licensed or authorized the Respondent to use their name. Accordingly, the Panel is satisfied that the Complainants have established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Respondent has not responded to the Complaint and the Panel has been given no evidence to justify the registration and use of the Disputed Domain Name. Neither does the Respondent’s use of the Disputed Domain Name appear to be in connection with a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy (see The Evening Store v. Henry Chan,WIPO Case No. D2004-0305 and Lilly ICOS LLC v. saban Mihailovic,
WIPO Case No. D2005-0356).
Based on the above analysis, the Panel is satisfied that the Respondent has not rebutted the Complainants’ prima facie case that it has no rights or legitimate interests in the Disputed Domain Name. Therefore, the Complainants have satisfied Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent provided false information in its application for the registration of the Disputed Domain Name. As noted earlier, the Complainants deny any association or authorization of the Respondent’s use of the BREITLING mark or name. It is simply not credible for the Respondent to maintain that it is a United States of America incorporated company based in Switzerland while using exactly the same corporate name as the second Complainant. In the absence of any explanation to the contrary, the Panel does not accept that this can be the case. Further, the Respondent also stated that its contact and administrative details were the miss-spelled version of the information which the first Complainant indicated in its application for the domain name <breitling.com> (for example, the Respondent indicated as administrative contact Mr. Jolliat instead of Mr. Joliat who is a Complainant’s employee and as registrant’s city Grenchen instead of Granchen, which is the city of the Complainant’s headquarter).
Providing false or misleading information in a domain name application is in breach of paragraph 2 of the Policy and is deemed to be evidence of registration in bad faith (Royal Bank of Scotland Group v. Stealth Commerce v. a.k.a. Telmex Management Services, Inc.,
WIPO Case No. D2002-0155 and Home Director, Inc. v. HomeDirector,
WIPO Case No. D2000-0111). As noted by other panels, if providing false information can be considered evidence of registration in bad faith, then maintaining false contact information in the WHOIS records after registration constitutes a circumstance of use in bad faith, as it prevents a putative complainant from identifying the registrant and investigating the legitimacy of the registration. (See Action Instruments, Inc. v. Technology Associates,
WIPO Case No. D2003-0024 and Home Director, Inc. v. HomeDirector,
WIPO Case No. D2000-0111). Accordingly, the Panel finds that the Respondent registered the Disputed Domain Name in bad faith.
Further by registering and using the Disputed Domain Name, which incorporates the miss-spelled version of the Complainants’ trademarks, the Respondent has engaged in a pattern of typosquatting. As noted by this Panel in a previous decision, evidence of typosquatting is sufficient to establish bad faith use and registration pursuant to paragraph 4 (a)(iii) of the Policy (see Barnes & Noble College Bookstores, Inc. v. Oleg Techino,
WIPO Case No. D2006-1537).
In addition, the Disputed Domain Name resolves to a website which has links to third parties selling fake Breitling watches. It is apparent that the aim of this use is to confuse and divert Internet users to the Respondent website for commercial gain, under paragraph 4 (b)(iv) of the Policy. It seems obvious that this is a classic case of typosquatting in which the Respondent is seeking to benefit by creating a likelihood of confusion with the Complainants’ trademarks. In the circumstances this is evidence that the Disputed Domain Name was registered and has been used in bad faith.
For all these reasons, the Panel is satisfied that the Disputed Domain Name was registered and used in bad faith. As such, Paragraph 4(a)(iii) of the Policy is satisfied.
7. Decision
For all 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 <breilting.com> be transferred to Breitling SA.
Alistair Payne Sole Panelist
Dated: April 24, 2008
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