Montres Breguet S.A. v. Alexei Doicev
Claim Number: FA1008001343675
Complainant is Montres Breguet S.A. (“Complainant”), represented by Jess M. Collen, of COLLEN IP, Intellectual Property, P.C., New York, USA. Respondent is Alexei Doicev (“Respondent”), Moldova.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <breguet.biz>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2010.
On August 27, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <breguet.biz> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 30, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 2010 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.biz by e-mail. Also on August 30, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 October 5, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has 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 a Written Notice, as defined in Rule 1. 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.
A. Complainant makes the following assertions:
1. Respondent’s <breguet.biz> domain name is identical to Complainant’s BREGUET mark.
2. Respondent does not have any rights or legitimate interests in the <breguet.biz> domain name.
3. Respondent registered and used the <breguet.biz> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Montres Breguet S.A., produces and sells jewelery, watches, and horological and chronometric instruments under the BREGUET mark. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for the BREGUET mark (e.g., Reg. No. 3,042,405 filed December 2, 2002; issued January 10, 2006).
Respondent, Alexei Doicev, registered the <breguet.biz> domain name on August 4, 2005. Respondent’s disputed domain name resolves to a website the sells unauthorized versions of Complainant’s products.
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."
In view of 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 draw such inferences it 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.”).
Paragraph 4(a) of the Policy requires that Complainant must 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.
The Panel finds that Respondent has established rights in its BREGUET mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 3,042,405 filed December 2, 2002; issued January 10, 2006). The Panel notes that while Respondent’s registration date for the disptued domain name of August 4, 2005 predates Complainant’s trademark registration date of January 10, 2006, that Complainant’s rights in its mark date back to the filing date, which in this case is December 2, 2002. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”) see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant contends that the <breguet.biz> domain name is identical to its BREGUET mark under Policy ¶ 4(a)(i) because the domain name contains Complainant’s entire mark while merely adding the generic top-level domain (“gTLD”) “.biz.” The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) where the only difference between the two is the addition of the required gTLD “.biz.” See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (finding that the domain name <continentalairlines.biz> is identical to the complainant’s CONTINENTAL AIRLINES mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Complainant is required to establish a prima facie case in support of such contentions to shift the burden of proof to Respondent. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds that Complainant has produced a prima facie case that Respondent lacks rights and legitimate interests in the domain name. Further, the Panel finds that Respondent’s failure to respond to these proceedings indicates that Respondent does not have rights and legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel will continue to evaluate the evidence on record to determine whether Respondent has rights and legitimate interests in the <breguet.biz> domain name under Policy ¶ 4(c).
The WHOIS information for the <breguet.biz> domain name does not indicate that Respondent is commonly known by the disputed domain name, and Respondent has not come forward with evidence indicating that it is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also 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 using the disputed domain name to send Internet users to Respondent’s website that features information on Complainant’s watch company and advertises and sells counterfeit versions of Complainant’s products without authorization. Complainant argues that Respondent’s use of the domain name for the purpose of profiting from Complainant’s mark is evidence that Respondent lacks rights and legitimate interests in the domain name. The Panel agrees and finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of 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 of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent is selling counterfeit or replica versions of Complainant’s products without authorization. The Panel finds that such use leads to the disruption of Complainant’s business because some Internet users will be redirected to Respondent’s competing products. The Panel finds that such use is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Complainant argues that Respondent is using the disputed domain name to sell the counterfeit or replica products of Complainant without authorization. Complainant contends that Respondent’s use of an identical domain name to gain commercially in this manner is evidence of bad faith registration and use. The Panel agrees and finds that Respondent registered and is using the <breguet.biz> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
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.biz> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 6, 2010
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