WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Breitling SA v. Chris Foster

Case No. D2018-0941

1. The Parties

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

The Respondent is Chris Foster of Durham, United Kingdom of Great Britian and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <thebreitlingcorner.com> is registered with Register.IT SPA (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 27, 2018. On April 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 2018, 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.

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 of the Complaint, and the proceedings commenced on May 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 24, 2018.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on June 8, 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

The Complainant is a Swiss company founded in 1884 by Léon Breitling which manufactures high-end chronographs and watches, as well as related accessories. The Complainant is especially well-known in the field of technical watches for aviators and pilots.

The Complainant is the owner of the BREITLING trademark across many countries, and possesses numerous trademark registrations, some of dating back to 1994. These registrations include:

- International trademark with registration No. 613794 registered on January 7, 1994 in International Class 14;

- International trademark with registration No. 890749 registered on June 1, 2006 in International Class 14;

- United States of America ("United States") trademark with registration No. 2352162 registered on March 8, 1996 in International Class 14;

- United States trademark with registration No. 2964474 registered on June 18, 2002 in International Class 14.

Additionally, the Complainant maintains an Internet website at the domain name <breitling.com> which resolves to its official website www.breitling.com.

The disputed domain name <thebreitlingcorner.com> was registered on August 28, 2017, well after the Complainant secured rights to the trademarks around the world. According to the Complainant, the disputed domain name has been used in connection with the sale of counterfeit watches.

5. Parties' Contentions

A. Complainant

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.

Relying on Playboy Entreprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768 and other panel decisions, the Complainant contends that by incorporating the Complainant's BREITLING trademark in its entirety, the disputed domain name is confusingly similar to the Complainant's trademark.

Additionally, the Complainant claims that the adjunction of the descriptive terms "corner" further creates confusion with the BREITLING trademark. Indeed, the term "corner" directly refers to a "corner shop" and leads the consumer to think that the disputed domain name sells the Complainant's watches. Prior UDPR cases have already found this word to be considered as generic and therefore not able to exclude the similarity (see LEGO Juris A/S v. abi wada / WhoisGuard, WIPO Case No. D2011-1693; Inter IKEA Systems B.V. v. Andri Supriyanto, WIPO Case No. D2013-0382). According to the Complainant, the mere addition of a generic term is not sufficient to distinguish the disputed domain name from the BREITLING trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.SI.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696).

Finally, in referring to the well-established view of the UDRP panels, the Complainant submits that the inclusion of the generic Top-Level Domain ("gTLD") is irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark.

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

The Complainant asserts that it has rights in BREITLING and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Respondent does not appear to have used the disputed domain name for any legitimate noncommercial purpose. The Complainant states that it has never authorized, licensed or any way permitted the Respondent to register and use the disputed domain name. Nor is there an indication that the disputed domain name corresponds to the Respondent's name.

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

The Complainant asserts that the Respondent has registered the disputed domain name long after the Complainant's registration and use of the BREITLING trademark. Given the absence of a particular meaning of the BREITLING trademark and its internationally well-known character, the Complainant asserts that it is inconceivable that the Respondent was unaware of the Complainant's trademark and was therefore in bad faith when registering the disputed domain name.

Moreover, the Complainant contends that the disputed domain name has been used to offer for sale counterfeit goods under its BREITLING trademark in order to attract customers to the Respondent's website for its own commercial gain. Using a disputed domain name to facilitate the sale of counterfeit goods is strong evidence of bad faith (see Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019).

Relying on Deloitte Touche Tohlatsu v. Park KyungSuk, WIPO Case No. D2016-0115, the Complainant also argues that bad faith can be inferred from the fact that the disputed domain name was registered with false details avoiding third parties to contact the Respondent.

The Complainant moreover asserts that the cessation of the website's activities following the Complainant's pre-action letter itself may constitute bad faith.

In sum, the Complainant submits there is no plausible good faith reason or logic for the Respondent to have registered the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. 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 to BREITLING.

Secondly, the disputed domain name incorporates the whole of the BREITLING trademark and the addition of the terms "the" and "corner" to the BREITLING trademark as the gTLD extension does not distinguish the disputed domain name from the BREITLING trademark. In this case, the word "corner" undoubtedly refers to a "corner shop". As such, the addition of this term only serves to increase the confusing similarity with the Complainant's BREITLING trademark. The Panel has considered and adopts the views of the panels expressed in the UDRP decisions, supra, cited by the Complainant in this respect.

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 confusingly similar to the Complainant's BREITLING trademark

B. 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 the 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 sufficient 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 legitimate noncommercial or fair use of the disputed domain name has taken place.

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

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

In fact, the evidence shows that the disputed domain name has been associated in the sale of what appear to be counterfeit goods using the Complainant's BREITLING trademark.

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

C. 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 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."

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".

First of all, with regard to the Respondent's 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 BREITLING 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 registrations for the BREITLING trademark. The longstanding and public use of the BREITLING trademark and the Complainant's international prestige and presence makes it disingenuous for the Respondent to claim that he was unaware that the registration of the disputed domain name would violate the Complainant's rights.

The Complainant submits that it is well-settled that selling counterfeit goods, in and of itself, is strong evidence of the bad faith registration of a domain name (see Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019; Karen Millen Fashions Limited v. Lily Andy, WIPO Case No. D2012-0437). The Panel endorses that view. The fact that the Respondent used the disputed domain name to sell what appears to be counterfeit goods indicates that he had the Complainant and its rights in mind when registering the disputed domain name.

The Panel also accepts the Complainant's submission that registering a domain name with false contact details is commonly held by UDRP panels to be bad faith under the Policy.

At some point in time, further to the Complainant's pre-action letter, to which the Respondent failed to respond, the disputed domain name stopped resolving to the website. Under these circumstances, the Panel finds that a change of use subsequent to the cease and desist letter is an attempt to circumvent such a finding and itself constitutes further evidence of bad faith use on the part of the Respondent.

In light of the foregoing, 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 <thebreitlingcorner.com> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: June 22, 2018