WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PROJETCLUB v. Мікловші Андрій Олександрович / Miklovshiy Andrey

Case No. D2020-0275

1. The Parties

The Complainant is PROJETCLUB, France, represented by AARPI Scan Avocats, France.

The Respondent is Мікловші Андрій Олександрович / Miklovshiy Andrey, Ukraine.

2. The Domain Names and Registrar

The disputed domain names <easybreath.fun>, <easybreathmask.shop>, <easybreathmask.space>, <easybreath.shop>, <easybreath.space>, <mask-easybreath.shop> and <snork-easybreath.shop> are registered with Hosting Ukraine LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2020. On February 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 7, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint.

The Center sent an email communication to the Complainant on February 10, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a first amended Complaint on February 12, 2020, adding the disputed domain names <easybreath.fun> and <easybreath.space> to the Complaint.

On February 10, 2020, the Center sent the language of the proceeding document to the Parties in English and Russian. On February 12, 2020, the Complainant requested that the language of the proceeding be English. The Respondent did not comment on the language of the proceeding.

On February 20, 2020, the Complainant filed a second amended Complaint adding the disputed domain names <snork-easybreath.shop> and <easybreathmask.space> to the Complaint.

The Center verified that the Complaint together with the amended Complaints 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 in Russian and English, and the proceedings commenced on March 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 25, 2020.

The Center appointed Irina Savelieva as the sole panelist in this matter on April 17, 2020.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 Compliant is PROJETCLUB, a company engaged in business support service. This company is a subsidiary of Decathlon and is administered by it. Decathlon is a major French company specialized in inventing, manufacturing, and retailing of sporting and leisure goods, which has existed since 1976 and was incorporated on March 13, 1980. Decathlon is among the largest retailers of sport equipment and accessories in the world operating more than 1,520 stores in 54 countries.

Decathlon designs and manufactures several lines of it own which are known as “Passion Brands”, among those is the brand dedicated to diving which includes an innovative snorkeling mask under the trademark EASYBREATH. This innovative snorkeling mask is the first all-inclusive snorkeling device offering users the possibility of breathing easily under the water through the nose and the mouth just as they do in land.

The Complainant has registered a large number of trademarks EASYBREATH (word) in France and abroad, including:

- French trademark No. 13/4053624 for EASYBREATH (word) registered on December 10, 2013; and

- International trademark No. 1227496 for EASYBREATH (word) registered on June 10, 2014, designating various countries including Ukraine.

Since its launch in 2014, the Complainant devoted substantial resources to advertise and promote its products under EASYBREATH marks. This product was a subject of several articles and promotions in media.

The Complainant offers for sale its sporting and leisure goods online through official websites at “www.decathlon.com” and “www.subea.com”.

The Respondent has no relations with the Complainant. On January 20, 2020, January 30, 2020, February 2, 2020, February 9, 2020, February 12, 2020 and February 16, 2020 the Respondent registered several disputed domain names <easybreath.fun>, <easybreathmask.shop>, <easybreathmask.space>, <easybreath.shop>, <easybreath.space> and <mask-easybreath.shop> and <snork-easybreath.shop> (hereinafter “disputed domain names”). The disputed domain names, except <snork-easybreath.shop>, resolve to a website using the EASYBREATH mark to sell snorkeling masks, which the Complaint claims are counterfeit copies of the Complainant’s masks. Another disputed domain name, <snork-easybreath.shop>, is not resolving to any active website.

5. Parties’ Contentions

A. Complainant

a) Identical or confusingly similar

The Complainant contends that the generic Top-Level-Domains (“gTLDs”) “shop”, “space”, and “fun” do not have any distinguishing effect and must be removed from further analysis of identity or similarity quoting consensus UDRP practice and a number of WIPO decisions. Further, the Complainant draws attention to the fact that the disputed domain names entirety reproduce and/or are confusingly similar to the Complainant’s trademarks and should be considered as identical or confusingly similar. Furthermore, the addition of the terms “mask” or “snork”, or the addition of a hyphen, do not prevent confusing similarity to the Complainant’s trademark.

b) Rights or legitimate interests

The Complainant contends that the Respondent is not and has not been known under the disputed domain names and it has never filed any trademark applications identical or similar to the disputed domain names. The Respondent has no affiliation or relation to the business of the Complainant as its distributor or otherwise. Moreover, the Respondent has never been licensed, authorized or otherwise permitted by the Complainant to register a domain name or use a trademark of the Complainant. The Respondent cannot assert that he was using or prepared to use the disputed domain names in connection with bona fide offering of goods and services and is in fact involved in selling of counterfeited products of the Complainant.

c) Bad faith registration and use

The Complainant contends that the Respondent has registered the disputed domain names in bad faith for the following reasons:

- the disputed domain names were registered long after the Complainant registered its trademark EASYTBREATH;

- the disputed domain names were registered by the Respondent not coincidentally but with the full knowledge of the Complainant’s trademark;

- the Respondent’s choice to register the disputed domain names were to attract the Complainant’s customers;

- the Respondent’s selling of counterfeit goods has not only caused harm to the Complainant but has also created risks for consumers in terms of safety and security.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceedings

The language of the Registration Agreement is Russian.

Paragraph 11(a) of the Rules, states that 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.

The Complainant has requested English as the language of the proceedings for the following reasons: a) the disputed domain names are in Latin script, b) the website at the disputed domain names uses Latin characters, c) the requirement of the Complaint in Russian will put the Complainant under substantial burden and expense, which could cause undue delay, and d) it is obvious that the Respondent understands English.

In light of the above, the Panel finds that there is evidence showing that the Respondent may be familiar with the English language.

Further, the Respondent did not reply to the submission of the Complainant about English as the language of the proceedings. Therefore, Panel proceeds to a decision in English.

B. Identical or Confusingly Similar

The Complainant has registered the trademark EASYBREATH worldwide in word format from 2014 and this mark is well known in the area of sporting and leisure products. The Complainant submits that the disputed domain names are identical or confusingly similar to its trademarks. The disputed domain names incorporate the trademark EASYBREATH in its entirety. The disputed domain names have added additional terms or gTLDs to the Complainant’s trademark, such as: “fun”, “shop”, “space”, “mask”, and “snork”.

The Panel refers to consistent practice and past UDRP decisions, which confirm that incorporating a trademark in its entirety with addition of other terms does not negate finding a confusing similarity. It was specifically highlighted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) where in section 1.8 it states that “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The addition of dictionary terms or dashes does not differentiate the disputed domain names from the registered trademarks. Furthermore, as stated in section 1.11 of the WIPO Overview 3.0, the gTLD in a domain name is viewed as a standard registration requirement and as such is typically disregarded under the first element confusing similarity test.

In the Panel view, the disputed domain names are confusingly similar to EASYBREATH trademark which is reproduced in its entirety and is clearly recognizable within the disputed domain names.

The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy as the first element of the Policy.

C. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names.

Even though the Respondent has not filed a response to the Complaint and has not contested the Complainant’s assertions, the Panel will have to consider whether the Respondent’s use of the disputed domain name would indicate the Respondent’s rights or legitimate interests in the disputed domain name.

According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:

(i) before any notice to the respondent 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 prior to notice of the dispute; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark 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 trademark or service mark at issue.

A respondent may show its rights or legitimate interests, non-exhaustively, by producing evidence to support the circumstances under paragraphs 4(c) of the Policy.

By not responding to the Complainant’s contentions, the Respondent in this proceeding has not attempted to demonstrate his rights or legitimate interests.

The Panel further notes that there is no evidence that before any notice of the dispute with the Complainant, that the Respondent was using the disputed domain name for a bona fide offering of goods or services.

According to the Complainant, the website at the disputed domain names is in the Russian language and is engaged in selling competing, if not counterfeit products, under the Complainant’s trademark EASYBREATH. Therefore, the disputed domain names are used to create a likelihood that it is associated with the Complaint by using the Complainant’s trademark.

The described use of the disputed domain names, <easybreath.fun>, <easybreathmask.shop>, <easybreathmask.space>, <easybreath.shop>, <easybreath.space> and <mask-easybreath.shop>, in the Panel’s view, proves that the Respondent was not involved in bona fide offering of goods or services in respect of the disputed domain name under paragraph 4(c)(i) of the Policy.

According to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 the use of a trademark as a domain name by an authorized or non-authorized third party is only to be regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c) of the Policy if the following conditions are satisfied:

a) the respondent must actually be offering the goods or services at issue;

b) the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;

c) the site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents; and

the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

The Panel finds that the Respondent fails at least on two elements of the above test: firstly, the Respondent does not publish a disclaimer on his website; and secondly, the Respondent presents himself as the trademark owner by using the Complainant’s EASYBREATH trademarks.

As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain name.

The Panel recalls that the Respondent registered the disputed domain names in January and February 2020, which is long after the Complainant has registered its distinctive EASYBREATH trademark in 2013 and 2014. The EASYBREATH trademark and the Complainant’s activity is well-known and highly recognized within its industry.

There is no further evidence that the Respondent is making or has made legitimate noncommercial or fair use of the disputed domain name. Moreover, the Respondent is using the disputed domain names with the purpose of gaining profit and moreover – selling potentially counterfeited goods. Therefore, paragraph 4(c)(iii) of the Policy does not apply.

Furthermore, the Panel finds that the Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name <snork-easybreath.shop>, which does not resolve to an active website. The above-mentioned use of the other disputed domain names supports such a finding.

The Panel finds the Complainant has established its prima facie case to show that the Respondent has no rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent and, accordingly, the Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy as the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using 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) 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

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

The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain names have been registered with the Respondent’s knowledge of the Complainant’s trademarks, worldwide activity, and reputation.

The Complainant’s first use and registration of trademark EASYBREATH predate any use the Respondent may have made of the disputed domain names. The disputed domain names was registered in 2020. The website at the disputed domain names allegedly offers the Complainant’s products for sale. It is the Panel’s view, under the present circumstances, that the Respondent most likely registered the disputed domain names with full awareness of the Complainant’s trademark as well as the goodwill associated with it.

It is clear in the Panel’s opinion that in the mind of an Internet user, the disputed domain names could be directly associated with the Complainant’s trademarks, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (see AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327).

Further, the Respondent has never been granted permission to register the disputed domain names. The Respondent takes advantage of the EASYBREATH trademarks by intentionally attempting to attract visitors to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites or a product or service on the Respondent’s websites.

The Panel finds that the Respondent’s registration and use of the disputed domain names show the Respondent’s intent to rely on a risk of confusion with the Complainant’s activity and trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name and website associated with it.

This conduct has been considered as bad faith under the Policy, as in Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946, in which the Panel stated: “It follows from what has been said about legitimacy that the panel is satisfied that Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his website. Pursuant to Policy paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii).”

The Panel draws attention to the fact that it is likely that the products sold at the Respondent’s website could counterfeit products which could not only harm the Complainant’s reputation, but also create risks for consumers in terms of safety and security.

Furthermore, the Panel notes section 3.3. of the WIPO Overview 3.0, states that non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. The disputed domain name <snork-easybreath.shop> does not resolve to an active website. However, the circumstances of the present case, including the failure of the Respondent to submit a response and the implausibility of any good faith use to which the disputed domain name may be put, support a finding of bad faith. The above-mentioned use of the other disputed domain names also supports an inference that the disputed domain name <snork-easybreath.shop> has been registered and used in bad faith.

These findings, together with the finding that the Respondent has no rights or legitimate interests in the disputed domain name, lead the Panel to conclude that the disputed domain names were registered and are being used by the Respondent in bad faith.

In the Panel’s view, the fact that the Respondent fails to respond to the Complainant’s contentions, shall be interpreted negatively against the Respondent.

Therefore, the Panel finds that the Respondent registered and used the disputed domain names in bad faith and, accordingly, the Complainant has satisfied the requirements of Paragraph 4(b) of the Policy as the third 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 names <easybreath.fun>, <easybreathmask.shop>, <easybreathmask.space>, <easybreath.shop>, <easybreath.space>, <mask-easybreath.shop> and <snork-easybreath.shop> be transferred to the Complainant.

Irina Savelieva
Sole Panelist
Date: May 1, 2020