The Complainant is Binda Italia S.r.l. of Milan, Italy, represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is Yun Kun Li of Ezhou, Hubei, China.
The disputed domain name <it-breil.com> (the "Domain Name") is registered with Zhengzhou Zitian Network Technology Co., Ltd. (the "Registrar").
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on November 13, 2017. On November 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 14, 2017, 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. On November 16, 2017, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on November 17, 2017. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Chinese of the Complaint, and the proceedings commenced on November 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 18, 2017.
The Center appointed Karen Fong as the sole panelist in this matter on December 21, 2017. 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 an Italian watch, jewellery and leather accessories company founded by Innocente Binda in 1906. It is headquartered in Milan and led by brothers Marcello and Simone Binda, grandsons of the founder. The Complainant is part of the Group of companies owned by Binda International S.A., Luxemburg which also has subsidiaries in the United States of America, Brazil, the United Kingdom of Great Britain and Northern Ireland, Germany, Spain, Portugal and China and operates in more than 70 markets globally.
The Binda Group products are sold under a number of brands including the trade mark BREIL. Breil jewels and watches are made with stainless steel and semi-precious stones and characterized by non-conventional designs. Advertising campaigns of the Breil brand have involved famous International actresses such as Charlize Theron, Monica Bellucci and Eva Green. The Complainant has also been a sponsor of the Ducati team racing in the World Superbike Championship, the basketball team Olimpia Milano and Padiglione Italia during Expo 2015. In 2016, the Complainant took part as an exhibitor in the Hong Kong Watch and Clock Fair.
The Complainant and its holding company own numerous trade marks for BREIL in different territories including Europe and China including:
- BREIL, International registration no. 592074, designating among others China, registered on October 22, 1992 and duly renewed for goods in class 14;
- BREIL, Chinese registration no. 4671233 filed on May 23, 2005 and registered on October 14, 2008 for goods in class 14;
- BREIL, European Union registration no. 000328161 that dates back to July 29, 1996 (duly renewed) for goods in class 14.
(together "the Trade Mark").
- BREIL Device Mark, Chinese registration no. 5041838 filed on December 5, 2005 and registered on April 24, 2009 for goods in class 14;
("the Device Mark").
The Complainant's website and e-commerce sites are at "www.breil.com". It's social media presence include the following:
- www.facebook.com/breilofficial
- www.instagram.com/breil_official
- "pinterest.com/breilofficial"
- "www.youtube.com/user/Breilsitoufficiale"
The Respondent is a Chinese national who registered the Domain Name on June 15, 2017. It was connected to a website which prominently displayed the Trade Mark and the Device Mark and offered for sale discounted Breil jewellery and watches by reference to photos of products taken from the Complainant's website (the "Website"). The Respondent also used the Complainant's sub brands or collection names of the Breil products on the Website including "Crossing Love", "Pathos" and Mezzanotte".
The Website is currently inactive. The Complainant sent a cease-and-desist letter to the Respondent on July 21, 2017 but did not receive a response.
The Complainant contends that the Domain Name is identical to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits that the language of the proceeding should be English. The Complainant contends that the Domain Name is in Latin characters and the Website contains English words which suggest that the Respondent has knowledge of the English language. The Complainant and its legal representatives do not understand Chinese. If it has to conduct the proceeding in the Chinese language, it will be subject to disproportionate expense and undue delay caused by the cost of translation services and the inconvenience of having to conduct the proceeding in Chinese.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties' ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant's submissions. The Respondent has chosen not to respond. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to establish if the domain name is identical or confusingly similar to the complainant's trade mark. The trade mark would generally have to be recognizable within the domain name. In this case the Domain Name integrates the Trade Mark in its entirety plus the geographical prefix "it" for "Italy" and a hyphen. The addition of a geographical term and a hyphen does not negate the confusing similarity encouraged by the Respondent's complete integration of the Trade Mark in the Domain Name. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain ("gTLD"). It is viewed as a standard registration requirement.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of production always remaining on the complainant.
The Complainant contends that the Respondent is not commonly known by the Domain Name. The Complainant has no commercial link with the Respondent. It has not granted the Respondent any authorization, licence or any rights whatsoever to use the Trade Mark as part of the Domain Name. Nor is the Respondent an authorised dealer, licensee or distributor of the Complainant. He appears to be a reseller of products bearing the Trade Mark at a heavily discounted price.
Section 2.8.1 of the WIPO Overview 3.0 says this:
"Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant's trademark to undertake sales or repairs related to the complainant's goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the "Oki Data test", the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant's relationship with the trademark holder; and
(iv) the respondent must not try to "corner the market" in domain names that reflect the trademark.
The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant's trademark."
In this case, there was nothing on the Website explaining the relationship between the Complainant and the Respondent. Indeed there was minimal information on the Website about the Respondent. The fact that the Website was offering for sale the Complainant's watches and jewelry and has images from the Complainant's website, does strongly indicate to the Panel that the content of the Website is intended to mislead Internet users that there is a connection between the Complainant and the Respondent. The Panel therefore finds the Oki Data principles are not satisfied in this case.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant's trade mark when he registered the Domain Name. It is implausible that he was unaware of the Complainant when he registered the Domain Name given the reputation of the Complainant. In the WIPO Overview 3.0, section 3.2.2 states as follows:
"Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant's mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant's mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent's claim not to have been aware of the complainant's mark."
Further, the fact that the Respondent is selling products bearing the Trade Mark and using images belonging to the Complainant, it is clearly inconceivable that the Domain Name was selected by the Respondent without the Complainant in mind. As outlined under the second element above, the clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent's choice of the Domain Name is also a significant factor to consider (as stated in section 3.1.1 of WIPO Overview 3.0). The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith
The Panel also concludes that the actual use of the Domain Name is in bad faith. The use of the Trade Mark as the dominant part of the Domain Name is intended to capture Internet traffic from Internet users who are looking for the Complainant's products. The Domain Name and the content of the Website are calculated to confuse Internet users that the Respondent is somehow connected to the Complainant when this is not the case. It is also likely that the goods sold on the Website are counterfeit given that they are heavily discounted. The Website has been taken down following receipt of the Complainant's cease-and-desist letter. The lack of response by the Respondent is another indicator or typical cybersquatter behaviour. There is a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Website and the products sold on them were authorized or endorsed by the Complainant.
The above is clearly bad faith under paragraph 4(a)(iv) of the Policy and the Panel concludes that the Respondent's registration and use of the Domain Name is in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <it-breil.com> be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: January 3, 2018