Montres Breguet S.A. v. Denis Ponomarev
Claim Number: FA1205001443659
Complainant is Montres Breguet S.A. (“Complainant”), represented by David Ewen of COLLEN IP, Intellectual Property Law, P.C., New York, USA. Respondent is Denis Ponomarev (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <breguet.cc>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 11, 2012; the National Arbitration Forum received payment on May 11, 2012.
On May 15, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <breguet.cc> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 May 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 2012 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.cc. Also on May 15, 2012, 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 June 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 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 <breguet.com> domain name is confusingly similar to Complainant’s BREGUET mark.
2. Respondent does not have any rights or legitimate interests in the < breguet.com> domain name.
3. Respondent registered or used the <breguet.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in the BREGUET mark which it uses in connection with jewelry, watches, and horological and chronometric instruments for centuries;
2. Complainant has United States Patent and Trademark Office (“USPTO”) registrations for the BREGUET mark (e.g., Reg. No. 3,042,405 registered January 10, 2006);
3. The <breguet.cc> domain name is identical to the BREGUET mark;
4. Respondent is not commonly known by the <breguet.cc> domain name;
5. The <breguet.cc> domain name resolves to a website which displays Complainant’s mark, a picture of the Chairman of Complainant’s parent company, a message from the same man, and information about Complainant’s company;
6. The <breguet.cc> domain name is disruptive;
7. The <breguet.cc> domain name was registered and is being used in order to take commercial advantage of Internet users’ mistakes by creating a likelihood of confusion regarding the source of the <breguet.cc> domain name.
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 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.
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.”).
Complainant asserts that it has rights in the BREGUET mark. The BREGUET mark, Complainant contends, has been used for centuries in connection with jewelry, watches, and horological and chronometic instruments. Complainant supplies the Panel with evidence of its USPTO registrations for the BREGUET mark (e.g., Reg. No. 3,042,405 registered January 10, 2006). Panels have found that the registration of a mark, regardless of whether the respondent is within the bounds of the trademark authority, is sufficient evidence of rights in a mark to satisfy Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has rights in the BREGUET mark under Policy ¶ 4(a)(i).
Complainant contends that the <breguet.cc> domain name is identical to the BREGUET mark. Complainant asserts that Respondent simply adds the country-code top-level domain (“ccTLD”) “.cc” to the BREGUET mark in order to create the disputed domain name. The Panel finds that the mere addition of a ccTLD fails to distinguish a disputed domain name from an allegedly-infringed-upon mark. See State Farm Mut. Auto. Ins. Co. v. Newnic Corp., FA 105980 (Nat. Arb. Forum May 3, 2002) (holding that the addition of a ccTLD is insignificant for the purposes of a Policy ¶ 4(a)(i) analysis and does not bar a panel from finding that a disputed domain name is identical to the mark at issue). Therefore, the Panel finds that Respondent’s <breguet.cc> domain name is confusingly similar to the BREGUET mark under Policy ¶ 4(a)(i).
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 shifts to Respondent to show it does have 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 is not commonly known by the <breguet.cc> domain name. Complainant asserts that Respondent does not go by any name incorporating the BREGUET mark. Complainant asserts that the WHOIS record for the <breguet.cc> domain name lists “Denis Ponomarev” and contains no reference to the BREGUET mark. Therefore, the Panel finds that Respondent is not commonly known by the <breguet.cc> domain name pursuant to Policy ¶ 4(c)(ii) and thus does not have rights or legitimate interests in the <breguet.cc> domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name and that Respondent’s use of the <breguet.cc> domain name demonstrates this. Complainant asserts that the <breguet.cc> domain name resolves to a website which displays information about Complainant’s products and history, a photograph of the Chairman of Complainant’s parent company, and a message from the same man. Complainant asserts that this use is commercial. However, the Panel notes that Complainant does not explain how the use is commercial. Complainant argues that the use of the disputed domain name is simply intended to divert Internet users. Panels have found that when a complainant shows that the use of a disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use the complainant has also shown that the respondent does not have rights or legitimate interests in the disputed domain name. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit 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).”). Therefore, the Panel finds that Respondent’s use of the <breguet.cc> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant asserts that Respondent registered and is using the <breguet.cc> domain name in bad faith. Complainant argues that the <breguet.cc> domain name is disruptive to Complainant’s business. The <breguet.cc> domain name, Complainant contends, resolves to a website displaying information about Complainant and its products as well as displaying a message from and picture of the Chairman of Complainant’s parent company. Panels have found that a disputed domain name was registered and is used in bad faith where there is a competitive relationship between the parties and the respondent had an intent to disrupt the complainant. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion). The Panel therefore finds that Respondent’s registration and use of the <breguet.cc> domain name is disruptive to Complainant’s business under Policy ¶ 4(b)(iii) and, as a result, evidence Respondent’s bad faith.
Complainant asserts that Respondent’s bad faith registration and use of the <breguet.cc> domain name is further shown by Respondent’s intent for the <breguet.cc> domain name. Complainant claims that the purpose of the <breguet.cc> domain name was to profit from the unauthorized exploitation of Complainant’s BREGUET marks by confusing Internet users into inferring that the <breguet.cc> domain name is operated by or affiliated with Complainant. The Panel notes that Complainant does not explain how Respondent is supposedly profiting from the <breguet.cc> domain name and the screenshots provided by Complainant do not readily explain either. However, the Panel finds that Respondent registered and is using the <breguet.cc> domain name in order to attract, for commercial gain, Internet users to the <breguet.cc> domain name by creating a likelihood of confusion as to the source, sponsorship, or affiliation of the <breguet.cc> domain name under Policy ¶ 4(b)(iv), and that this establishes registration and use in bad faith. See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
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.cc> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 20, 2012
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