WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Breitling SA v. Manoj Kumar Alwani

Case No. D2018-1883

1. The Parties

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

The Respondent is Manoj Kumar Alwani of Oranjestad, Aruba, Netherlands.

2. The Domain Name and Registrar

The disputed domain names <breitlingboutique.com>, <breitlingshop.com> and <breitlingstore.com> are registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2018. On August 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 17, 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 and contact information for the disputed domain names.

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 August 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2018. The Respondent sent an email communication to the Center on August 30, 2018 offering the disputed domain names for sale at USD 885,001, and the day after a “tech consultant” of the Respondent sent a further email communication to the Center offering again the disputed domain names for sale, this time at USD 16,000.

The Center appointed Edoardo Fano as the sole panelist in this matter on September 18, 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 Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.

The language of the proceeding is English, being the language of the Registration Agreements, as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainant is Breitling SA, a Swiss company manufacturing high-end chronographs and watches, owning many trademark registrations for BREITLING, including:

- International Trademark Registration No. 890749 BREITLING, registered on June 1, 2006;

- United States Trademark Registration No. 2964474 BREITLING, registered on July 5, 2005.

The Complainant operates its website at “www.breitling.com”.

The Complainant provided evidence in support of the above.

The disputed domain names <breitlingboutique.com>, <breitlingshop.com> and <breitlingstore.com> were registered on March 11, 2018.

At the time of filing the Complaint, the websites at the disputed domain names <breitlingboutique.com>, <breitlingshop.com> and <breitlingstore.com> resolved to a webpage where they are for sale.

The Complainant’s representatives sent a cease and desist letter to the Respondent on April 11, 2018, to which the Respondent answered offering to sell the disputed domain names at USD 888,801.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain names <breitlingboutique.com>, <breitlingshop.com> and <breitlingstore.com> are confusingly similar to its trademark BREITLING.

Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it has not been authorized by the Complainant to use them, it is not commonly known by the disputed domain names, nor is the Respondent making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names.

The Complainant submits that the Respondent has registered the disputed domain names in bad faith, since the Complainant’s trademark BREITLING is distinctive and well known all around the world. Therefore, the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain names and the Complainant cannot see a use of the disputed domain names by the Respondent that would not amount to bad faith. Finally, the Complainant asserts that the Respondent’s request of USD 888,801 to sell to the Complainant the disputed domain names exceeds by far the Respondent’s out-of-pocket expenses.

B. Respondent

The Respondent has made no reply to the Complainant’s contentions and is in default, since the email communications sent to the Center cannot be considered as a formal reply to the Complaint. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.

A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Altavista Company v. Grandtotal Finances Limited et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288.)

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order 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 respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant is the owner of the trademark BREITLING, both by registration and by acquired reputation and that the disputed domain names <breitlingboutique.com>, <breitlingshop.com> and <breitlingstore.com> are confusingly similar to the trademark BREITLING.

The Panel notes that it is now well established that the addition of descriptive terms or letters to a domain name does not necessarily distinguish the domain name from a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the descriptive words “boutique”, “shop” and “store” does not therefore prevent the disputed domain names from being confusingly similar to the Complainant’s trademark.

It is also well accepted that a generic Top-Level Domain (“gTLD”) suffix, in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).

The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant’s trademarks, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Respondent has failed to file a response in accordance with the Rules, paragraph 5.

The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. It asserts that the Respondent is not using the disputed domain names for a legitimate non-commercial or fair use or in connection with a bona fide offering of goods or services.

The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain names, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.

The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, 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 [the respondent has] registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) that [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or

(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 respondent’s] website or location or of a product or service on [the respondent’s] website or location.”

Regarding the registration in bad faith of the disputed domain names, the reputation of the Complainant’s trademark BREITLING in the field of watches is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain names because they are confusingly similar to the Complainant’s trademark.

Regarding the use in bad faith of the disputed domain names, they all point to a parking pages website, where the disputed domain names are offered for sale.

In addition, the offers made by the Respondent to sell the disputed domain names for an amount of money that exceeds the out-of-pocket expenses of the Respondent is confirming this opinion.

The Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 names, <breitlingboutique.com>, <breitlingshop.com> and <breitlingstore.com> be transferred to the Complainant.

Edoardo Fano
Sole Panelist
Date: September 21, 2018