Montres Breguet S.A. v. Domain Administrator / PortMedia
Claim Number: FA1111001417906
Complainant is Montres Breguet S.A. (“Complainant”), represented by David Ewen of Collen IP, Intellectual Property Law, P.C., New York, USA. Respondent is Domain Administrator / PortMedia (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <breuget.com>, registered with Moniker Online Services, 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.
Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2011; the National Arbitration Forum received payment on November 30, 2011.
On December 1, 2011, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <breuget.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 2011 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@breuget.com. Also on December 6, 2011, 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.
The Parties requested a Stay of Proceedings until February 4, 2012. The Forum granted the Stay on December 28, 2011.
On January 30, 2012, the Complainant requested that the Stay be lifted, which was granted by the Forum on January 30, 2012.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Karl V. Fink (Ret.) as Panelist.
Respondent submitted an untimely response dated February 1, 2012, which was not considered by the Panel.
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 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.
A. Complainant makes the following assertions:
1. Respondent’s <breuget.com> domain name is identical/confusingly similar to Complainant’s BREGUET mark.
2. Respondent does not have any rights or legitimate interests in the <breuget.com> domain name.
3. Respondent registered and used the <breuget.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Montres Breguet S.A., is a world-renowned purveyor of luxury watches and jewelry. Complainant owns multiple trademark registrations for the BREGUET mark with both the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,042,405 filed December 2, 2002 registered January 10, 2006) and the European Union Office of Harmonization for the Internal Market (“OHIM”) (e.g., Reg. No. 003440881 filed October 23, 2003 registered April 13, 2006). Complainant has built its brand name under the BREGUET mark, giving special value in the luxury market.
Respondent, Domain Administrator / PortMedia, registered the disputed domain name on October 12, 2005. The disputed domain name resolves to a website offering links to Complainant’s competitors in the watch-making industry.
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.
Complainant is asserting its rights in the BREGUET mark under Policy ¶ 4(a)(i) based upon the registrations it holds with both the USPTO (e.g., Reg. No. 3,042,405 filed December 2, 2002 registered January 10, 2006) and OHIM (e.g., Reg. No. 003440881 filed October 23, 2003 registered April 13, 2006). Complainant has submitted sufficient information to verify that it owns the registrations it claimed. The Panel finds that Complainant has established its rights in the BREGUET mark under Policy ¶ 4(a)(i), dating back to the filing of its registration with the relevant governmental trademark authority. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Complainant contends that Respondent’s disputed domain name is confusingly similar to its BREGUET mark. Respondent’s <breuget.com> domain name includes Complainant’s entire mark, merely transposing two of the letters and adding the generic top-level domain (“gTLD”) “.com.” It appears as though Respondent’s disputed domain name is a classic example of what the Panel would characterize as typosquatting, the practice of registering a domain name that is nearly identical to another’s mark but for a small typing mistake. The Panel concludes that Respondent’s disputed domain name is clearly confusingly similar to Complainant’s BREGUET mark under Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), if Complainant meets its initial prima facie burden of proof, which the Panel finds it has in this case, the burden of proof for demonstrating rights and legitimate interests shifts to Respondent. See F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”). Respondent, now bearing said burden, has failed to file a Response in this matter which allows the Panel to assume Respondent lacks any rights or legitimate interests. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, before arriving at any conclusions the Panel will examined the entire record and address Respondent’s rights or legitimate interests in the disputed domain name in accordance with the factors listed in Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the disputed domain name. Respondent did not submit any evidence to support a finding to the contrary. The WHOIS information obtained from the registrar identifies the registrant of the disputed domain name as “Domain Administrator / PortMedia.” Based upon the WHOIS information and the lack of contradicting evidence on record, the Panel determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant also alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolves to a website offering links to companies such as Diesel, Patek Philippe, and Gideon’s Jewelry, all competitors of Complainant in the watch and jewelry arena. Previous panels have held that using a disputed domain name for competitive purposes does not confer rights or legitimate interest in the domain to a respondent, even if the website is merely parked on behalf of a respondent. 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)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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 also State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”). The Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name Policy ¶ 4(c)(iii).
Complainant posits that Respondent’s disputed domain name is a classic example of typosquatting, which further supports a finding that Respondent lacks rights or legitimate interests in the disputed domain name. Previous panels have agreed with Complainant’s position on typosquatting. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”). Therefore, the Panel finds that Respondent has engaged in typosquatting, further indicating that it lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s disputed domain name disrupts its business, demonstrating bad faith registration and use. The disputed domain name resolves to a website offering links to third-party businesses. Many of the links resolve to Complainant’s competitors in the luxury watch-making industry (e.g., Patek Philippe). Internet users seeking Complainant’s watches may arrive at the website and then click-through one of the links offered. Once diverted to the linked site, that Internet user may then purchase a watch from Complainant’s competitor rather than Complainant. Clearly this use disrupts Complainant’s business; therefore, the Panel finds that Complainant has demonstrated bad faith registration and use on the part of Respondent under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant also contends that Respondent registered and is using the disputed domain name for its own commercial benefit, constituting bad faith registration and use. Respondent uses the confusingly similar domain name to offer links to Complainant’s competitors. Ostensibly in an attempt to confuse individuals browsing for Complainant’s products, Respondent offers links to those competitors to entice Internet users to click-through to the third-party websites. Respondent presumably collects a click-through fee for each Internet user diverted thereto. The Panel finds that this conduct constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“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 commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Lastly, Complainant asserts that Respondent’s disputed domain name is merely a typosquatted version of its mark in domain name format, indicating bad faith registration by Respondent. Respondent’s disputed domain name is almost identical to Complainant’s mark except that the adjacent letter “g” and “u” are transposed. Accidentally typing these letters out of order when trying to search for Complainant on the Internet will give that Internet user the precise spelling of Respondent’s disputed domain name. Therefore, the Panel finds that Respondent is guilty of typosquatting, which further indicates that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”)
The Panel finds that Complainant has established 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 <breuget.com> domain name be TRANSFERRED from Respondent to Complainant.
Karl V. Fink (Ret.), Panelist
Dated: February 7, 2012
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