The Complainant is Projetclub of Villeneuve d’Ascq, France, represented by AARPI Scan Avocats, France.
The Respondent is Whois Privacy Corp. of Nassau, Bahamas.
The Disputed Domain Name <easybreathsale.com> is registered with Internet Domain Service BS Corp (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2018. On March 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 13, 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 Complainant submitted an amended Complaint on March 14, 2018 to address an administrative formality.
The Center verified that the Complaint together with the amended 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 March 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2018.
The Center appointed Mariya Koval as the sole panelist in this matter on April 16, 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.
The Complainant is a subsidiary of company Decathlon. Decathlon, registered in 1980, is a major French manufacturer which specialized in conception and retailing of sporting and leisure goods, and which operates 1171 stores all over the world, including 301 stores in France.
The Complainant is the owner of numerous EASYBREATH Trademark registrations, however for the purposes of its Complaint it pointed out two trademark registrations:
- French trademark EASYBREATH No. 4053624, filed on December 10, 2013 in respect of goods in classes 9, 25, 28;
- International trademark EASYBREATH No. 1227496, registered on June 10, 2014 in respect of goods in classes 9, 25, 28;
The Complainant operates the domain name <easybreath.fr> (and approximately other 40 domain names), which was registered on October 23, 2013, for promoting its reputation on the Internet.
The products under the Complainant’s EASYBREATH Trademark, namely innovative snorkeling masks, are extremely successful and have received the first prize at the international competition of new products related to recreational sporting goods “2014 Oxylane Innovation Awards”. Moreover, the EASYBREATH masks have been subjects of several articles in the media (national and international).
The Disputed Domain Name was registered on July 17, 2017.
According to the screenshots of the website under the Disputed Domain Name presented by the Complainant on the date of filing the Complaint, the Disputed Domain Name resolved to a website where the masks under the EASYBREATH Trademark, claimed to be copies of the original EASYBREATH masks, were on sale.
At the date of this decision the website under the Disputed Domain Name is inactive.
The Complainant claims that the Disputed Domain Name is confusingly similar to its EASYBREATH Trademark, noting that addition of the descriptive term “sale” does not serve for distinguishing the Disputed Domain Name and its Trademark.
The Complainant also contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name since the Respondent is not currently known and has never been known under the Disputed Domain Name. Moreover, the Complainant asserts that the Respondent operates the website under the Disputed Domain Name that resolves to a website, which sells the masks under the Complainant’s EASYBREATH Trademark, claimed to be copies of the Complainant’s masks or even alleged counterfeit ones.
The Complainant further contends that the Respondent has no relationship with the Complainant and is merely seeking to benefit from the Complainant’s reputation.
The Complainant also claims that the Respondent registered the Disputed Domain Name in bad faith in view of the following facts:
- the EASYBREATH Trademarks and domain names were registered before the Disputed Domain Name was registered;
- any search for “easybreath” conducted with a search engine such as Google leads in the first place to websites relating to the Complainant and its products;
- the Respondent was fully aware of the Complainant’s prior rights in EASYBREATH Trademark since the Disputed Domain Name resolves to a website selling confusingly similar, if not counterfeiting, snorkeling masks under the Complainant’s EASYBREATH Trademark;
- the Respondent’s purpose in registering the Disputed Domain Name which is confusingly similar to the Complainant’s Trademark is to capitalize on the Complainant’s reputation by diverting the Internet users to the Respondent’s website;
- the Respondent directly refers on its website to other relevant DECATHLON’s trademark TRIBORD, which is dedicated to watersports.
Therewith the Complainant makes a point that the Respondent, selling confusingly similar, if not counterfeit, masks, causes harm to the Complainant not only to an economic point of view, but also may create high risk for the consumers in terms of safety and security.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy binds the Complainant to prove each of the following three elements to succeed:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant has proved that it has established rights in EASYBREATH Trademark since 2013.
It is obvious that the EASYBREATH Trademark has a strong distinctive character and it is highly improbable that the Respondent has chosen the Disputed Domain Name accidentally, without an intention of consumers’ confusion with the Complainant Trademark.
The Disputed Domain Name consists of complete reproduction of EASYBREATH Trademark combining with the descriptive term “sale” and the generic Top-Level Domain (“gTLD”) “.com”. It is well accepted that a domain name that wholly incorporates a trademark is confusingly similar to that trademark for purposes of the Policy, see, e.g., Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249. The Complainant’s Trademark is easily recognizable in the Disputed Domain Name. At the same time, the addition of the term “sale” to the Disputed Domain Name does not prevent a finding of confusing similarity between the Complainant’s Trademark and the Disputed Domain Name.
Therefore, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s EASYBREATH Trademark and that the Complainant satisfied the first element of the Policy.
In accordance with the paragraph 4(a)(ii) of the Policy the Complainant must demonstrate that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Complainant has used its EASYBREATH Trademark and its domain name ˂easybreath.fr˃ since 2013, which means four years before the Respondent registered the Disputed Domain Name in 2017.
The Complainant alleges that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has never given any permission, has never licensed and has never authorized in any way the Respondent to use the Complainant’s EASYBREATH Trademark. The Complainant does not have any relationship or association with the Respondent. The Respondent, selling on its website the masks, which are claimed to be copies of EASYBREATH masks, is however neither an authorized retailer nor a distributor of the Complainant. The Respondent is not affiliated or connected by any means with the Complainant.
The Respondent is not using the Disputed Domain Name to offer bona fide goods and services and is not making a legitimate noncommercial or fair use of it Disputed Domain Name. Conversely, according to the screenshots from the Respondent’s website provided by the Complainant (which is inactive on the date of this decision), the Respondent had been operating the Disputed Domain Name for redirecting Internet users to a website selling competing, which may be counterfeit, and anyway unauthorized products under the Complainant’s EASYBREATH Trademark, that anyway cannot constitute bona fide offering goods (see e.g. Paragon Gifts, Inc. v. Domain.Contact, WIPO Case No. D2004-0107 “Respondent is attracting traffic by creating confusion among Complainant’s customers, by using a domain name that is confusingly similar to Complainant’s trademarks, and re-directing such traffic to Complainant’s site for a profit. Such use cannot be deemed a bona fide offering of goods or services”). Therefore, the Panel concludes that the Disputed Domain Name has been registered and has been used by the Respondent with the sole intention of obtaining the benefit from the Complainant’s reputation, which is a use from which rights or legitimate interests cannot arise in this case.
Further the registration of the Disputed Domain Name, which is confusingly similar to the Complainant’s EASYBREATH Trademark and domain name, and its use in respect of website selling the competing products, apparently evidences that the Respondent was well aware about the Complainant, its business and products.
In view of the above, the Panel finds that the second element of the Policy has been met by the Complainant.
The Respondent has registered and has used the Disputed Domain Name for the purpose of attracting the Internet users to its competing website by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and of the products sold on it, see, e.g., Normalu SA v. Privacyprotect.org,WIPOCase No. D2011-0444 (“Another indication for bad faith registration and use is that the Respondent offers the same or at least confusingly similar stretch ceilings under the brand name Barrisol as done by the Complainant”). Taking into consideration that the Complainant is actively engaged in selling its masks under the EASYBREATH Trademark on the Internet, the Internet users will most likely consider that the Disputed Domain Name refers to the one of the Complainant’s or its distributor’s official websites where they can purchase the masks. Accessing the Disputed Domain Name, the Internet users would suppose that the Disputed Domain Name is definitely related to or associated with the Complainant and the Complainant’s products, and accordingly would suppose that offering products are original EASYBREATH masks.
According to the section 3.6 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where it appears that a respondent employs a privacy or proxy service merely to avoid being notified of a UDRP proceeding filed against it, panels tend to find that this supports an inference of bad faith; a respondent filing a response may refute such inference. In this case the Respondent did not file any response and did not take any attempts for justification its actions in respect of the Disputed Domain Name registration and use.
Taking into consideration that the Complainant’s EASYBREATH Trademark has been completely incorporated into the Disputed Domain Name and that the Respondent has tried to divert the consumers of the Complainant’s products to its website for commercial gain, the Panel finds that the Respondent has registered and has used the Disputed Domain Name in bad faith.
Accordingly, the Panel considers the third element has been successfully satisfied.
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 <easybreathsale.com> be transferred to the Complainant.
Mariya Koval
Sole Panelist
Date: April 27, 2018