WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Breitling SA v. Evans Malcolm, Malcolm Evans

Case No. D2019-2618

1. The Parties

The Complainant is Breitling SA, Switzerland, represented by BMG Avocats, Switzerland.

The Respondent is Evans Malcolm, Malcolm Evans, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <breitlingwatches.biz> (“Disputed Domain Name”) is registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2019. On October 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 28, 2019, 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 October 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2019.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on November 22, 2019. 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, Breitling SA, manufactures, high-end chronographs and watches, as well as related accessories. The company was founded in 1884 by Leon Breitling, and has manufactured and sold BREITLING watches ever since.

The Complainant owns a large number of trademark registrations consisting of or including the name BREITLING in class 14 in numerous jurisdictions, including the following:

, international registration no. 613794 registered on July 1, 1994, in class 14;

BREITLING, international word mark no. 890749 registered on June 1, 2006, for BREITLING in class 14;

, United States of America (“United States”) trademark registration no. 2352162 registered on May 23, 2000, in class 14;

BREITLING, United States word mark no. 2964474 registered on July 5, 2005, in class 14.

The Disputed Domain Name was registered by the Respondent on January 23, 2019. The Disputed Domain Name currently resolves to a website which seems to promote replica watches under the titles "Cheap Breitling Replica Watches Online" – "Swiss Copy Breitling Watches".

On July 8, 2019, the Complainant's authorized representative sent a cease and desist letter regarding the Disputed Domain Name to the Respondent by email and by registered mail asking for the voluntary transfer of the Disputed Domain Name, the takedown of unauthorized contents and the cease of use of BREITLING trademarks.

The Complainant claims it received no reply to these communications. The email did not reach the recipient and the Complainant received an error message mentioning "mailbox unavailable". The same message was received after the reminder of September 12, 2019. As for the registered letter, it was returned with the mention "not called for".

On January 17, 2019, the Complainant’s representative sent a cease and desist letter to the Respondent via priority mail and email notifying the Respondent of the Complainant’s rights and demanding the immediate cease and desist of the use of the Complainant’s trademarks and the Disputed Domain Name. According to the Complainant, the Respondent did not reply to this letter either.

5. Parties’ Contentions

A. Complainant

The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith, as the website connected to the Disputed Domain Name promotes counterfeited versions of the Complainant’s products.

B. Respondent

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

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.

Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has 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 therefore deal with each of these requirements.

A. Identical or Confusingly Similar

To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there is a trademark in which it has rights. The Complainant’s BREITLING mark has been registered and used in connection to its watch manufacturing business.

The Disputed Domain Name incorporates the Complainant’s BREITLING trademark in its entirety, merely adding the suffix “watches”. As stated at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the additions of other terms would not prevent a finding of confusing similarity.

The Panel is of the opinion that the mere addition of a non-distinctive text to a complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi, WIPO Case No. D2012-1395, where the domain name <karenmillenoutlet-australia.com> was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing, WIPO Case No. D2012-0783, where the domain name <belstaffjacken-outlet.info> was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva / Contactprivacy.com, WIPO Case No. D2007-1168, where the domain name <downloadlimewirenow.com> was held to be confusingly similar to the LIME WIRE trademark. In this case, the addition of the term “watches” does not prevent a finding of confusing similarity.

Additionally, it is well established that the generic Top-Level Domain (“gTLD”) (in this case “.biz”) may be disregarded when considering whether the Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights (see section 1.11WIPO Overview 3.0).

In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s BREITLING mark. Accordingly, the Complainant has made out the first of the three elements of the Policy that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see WIPO Overview 3.0, section 2.1, Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

The Panel notes that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.

Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The Respondent uses the Disputed Domain Name to refer to a website which seems to promote replica watches under the titles "Cheap Breitling Replica Watches Online" – "Swiss Copy Breitling Watches". This website not only mentions the Complainant’s BREITLING mark but also the names of current collections or models sold by the Complainant.

As mentioned at section 2.13.1WIPO Overview 3.0, UDRP panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. Particularly in the case of counterfeits and pharmaceuticals, this is true irrespective of any disclosure on the related website that such infringing goods are “replicas” or “reproductions” or indeed the use of such term in the domain name itself.

Although the website does not seem to offer anything for sale, the Panel finds that such use cannot be considered a legitimate noncommercial or fair use of the Disputed Domain Name. The website includes information that can be used to make fake watches resembling the Complainant’s products. Moreover, it cannot be excluded that the Respondent is earning money through pay-per-click links on the website.

The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a reaction by the Respondent, the prima facie case established by the Complainant has not been rebutted.

Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see section 4.2WIPO Overview 3.0 and, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 the website or location or of a product or service on the website or location.

In the present case, it is inconceivable that the Respondent was unaware of the Complainant and its rights in the BREITLING trademark when it registered the Disputed Domain Name. The Disputed Domain Name includes the Complainant’s distinctive BREITLING trademark in its entirety with the addition of the term “watches”. Furthermore, the Respondent makes express reference to the Complainant’s mark and product models on the website connected to the Disputed Domain Name. The Panel therefore finds that the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007).

In the instant case, the Respondent is using the Disputed Domain Name to promote replica watches under the titles "Cheap Breitling Replica Watches Online" – "Swiss Copy Breitling Watches".

As noted in section 2.13.1WIPO Overview 3.0, given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith (see section 3.1.4WIPO Overview 3.0).

Even though there is no evidence of actual sale offers on the website linked to the Disputed Domain Name, the website includes information that can be used to make fake watches resembling the Complainant’s products. In view of the website’s content, the Panel finds that there is a reasonable risk that the sale of counterfeit goods is at least facilitated, which is strong evidence of bad faith (see Karen Millen Fashions Limited v. Belle Kerry, WIPO Case No. D2012-0436). Moreover, it cannot be excluded that the Respondent is earning money through pay-per-click links on the website.

In addition, the Complainant showed that when using the Respondent’s email address as provided by the registrar, it received an error message. The Panel agrees with 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.

Finally, by failing to respond to the Complaint, Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.

Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element of 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 <breitlingwatches.biz> be transferred to the Complainant.

Flip Jan Claude Petillion
Sole Panelist
Date: December 6, 2019