Montres Breguet S.A. v. HUANG WEIJIE
Claim Number: FA1411001589636
Complainant is Montres Breguet S.A. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is HUANG WEIJIE (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <breguet.club>, registered with GoDaddy.com, Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 12, 2014; the National Arbitration Forum received payment November 24, 2014.
On November 12, 2014, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <breguet.club> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 15, 2014, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@breguet.club. Also on November 24, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant makes the following allegations in this proceeding:
Complainant owns the BREGUET mark through registrations with trademark agencies including the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,042,405, registered Jan. 10, 2006). Complainant has used the BREGUET mark since 1775 in connection with luxury timepieces and wristwatches. The <breguet.club> domain name incorporates the mark in full, and merely adds the top-level domain (“TLD”) “.club.” The addition of a TLD is irrelevant to the confusing similarity analysis, but if anything, “.club” serves to increase confusion as collectors of Complainant’s watches might believe this group is authorized by Complainant.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name or “BREGUET,” and has no affiliation with Complainant. Respondent is not using the <breguet.club> domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. The disputed domain name resolves to a classic pay-per-click website with links related to and competing with Complainant’s wristwatches. After the filing of this Complainant, Respondent claimed to have spent time designing and building an associated website. Respondent’s post-dispute evidence cannot demonstrate preparation of a bona fide business and should be deemed suspect.
Respondent registered and is using the disputed domain name in bad faith. Respondent relies on the disputed domain name and resolving website to mislead users as to Complainant’s affiliation with the domain name. As Respondent generates click-through profit from the promoted links, Respondent is in violation of Policy ¶ 4(b)(iv). Further, Respondent registered the disputed domain name with Complainant in mind. Registration of the <breguet.club> domain name with actual knowledge of Complainant and its rights in the famous BREGUET mark demonstrate Respondent’s bad faith.
Respondent's contentions in this proceeding:
Respondent did not submit a Response.
The Panel notes that Respondent registered the disputed domain name June 14, 2014.
Complainant established that it has rights to and legitimate interests in the disputed domain name that contains Complainant’s protected mark.
Respondent has no such rights or legitimate interests in the disputed domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered and used the domain name containing Complainant’s protected mark in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical or Confusingly Similar:
Complainant used the BREGUET mark since 1775 in connection with luxury timepieces and wristwatches. Complainant owns the BREGUET mark through registrations with trademark agencies, including the USPTO (Reg. No. 3,042,405, registered Jan. 10, 2006). The Panel finds that Complainant’s trademark registrations with the USPTO, and other such agencies, adequately demonstrates Complainant’s rights in the BREGUET mark for purposes of Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant argues that the disputed domain name is confusingly similar to the subject mark. Complainant asserts that the <breguet.club> domain name incorporates the mark in full merely adding the TLD “.club.” Complainant notes that addition of a TLD is considered irrelevant to the confusing similarity analysis, but asserts that here the “.club” actually serves to increase confusion as collectors of Complainant’s watches might believe that this group is authorized by Complainant. In support, Complainant cites to DD IP Holder LLC v. Manpreet Badhwar, FA 1562029 (Nat. Arb. Forum July 14, 2014), where the panel wrote: “[B]ecause there is a reference to food and restaurants inherent in the new gTLD ‘.menu’, the combination of the ‘dunkin’ element with the ‘.menu’ gTLD extension adds further to the confusing character of the domain in issue in the present case.” The Panel agree that the <breguet.club> domain name is identical to the BREGUET mark for purposes of Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant urges that Respondent is not commonly known by the disputed domain name or “BREGUET” and that Complainant is not affiliated with Respondent in any way. The Panel notes that the WHOIS information lists “HUANG WEIJIE” as registrant. The Panel agrees that no basis supports a finding that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent is not using the <breguet.club> domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant claims that the disputed domain name resolves to a classic pay-per-click website with links related to and competing with Complainant’s wristwatches. The Panel notes that Complainant submitted a screenshot of the resolving page, which includes links such as “Men’s Watches for Less,” “Seiko Watch,” and “Genuine Rolexes on Sale.” See Compl., at Attached Ex. F 1. The Panel agrees that Respondent’s use of the disputed domain name to promote links to watchmakers in competition with Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant claims that Respondent relies on the disputed domain name and resolving website to mislead users as to Complainant’s affiliation with the domain name. Because Respondent generates profit from this diversionary scheme by click-through links, Complainant argues that Respondent is violating Policy ¶ 4(b)(iv). The Panel notes that the disputed domain name resolves to feature commercial links, several of which promote watchmakers in competition with Complainant, notably Rolex and Seiko. See Compl., at Attached Ex. F 1. Prior panels have found bad faith under Policy ¶ 4(b)(iv) where the respondent has used the confusingly similar domain name to redirect users to competing hyperlinks from which the respondent presumably generated revenue. For example, the panel in Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), wrote: “Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably benefited commercially from the misleading domain name by receiving ‘click-through-fees.’” At present, the Panel finds evidence of Policy ¶ 4(b)(iv) as Respondent uses the <breguet.club> domain name in connection with commercial hyperlinks both related to and competing with Complainant’s timepieces.
Complainant also claims that Respondent registered the disputed domain name with Complainant in mind. Complainant argues that Respondent’s registration of the <breguet.club> domain name was done with actual knowledge of Complainant and its rights in the famous BREGUET mark and that this conduct demonstrates Respondent’s bad faith. While previous panels have been hesitant to find evidence of bad faith based on constructive knowledge, panels have made an inference of actual knowledge based on the same and similar circumstances. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, the Panel makes such an inference that Respondent had prior knowledge based on the notoriety of Complainant’s trademark and the use of this confusingly similar domain name to promote products from Complainant’s field of watch making. Accordingly, the Panel finds that Respondent’s registration of the disputed domain name was done with actual knowledge of Complainant’s mark and this shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <breguet.club> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 5, 2015.
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