DECISION

 

Breville Pty Ltd. v. Schmitt Chris

Claim Number: FA2501002135162

 

PARTIES

Complainant is Breville Pty Ltd. ("Complainant"), represented by Griffin Barnett of Perkins Coie LLP, District of Columbia, USA. Respondent is Schmitt Chris ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <brevilleoutlets.com> and <brevilleus.com> ('the Domain Names'), registered with Cloudflare, Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 14, 2025; Forum received payment on January 14, 2025.

 

On January 16, 2025, Cloudflare, Inc. confirmed by e-mail to Forum that the <brevilleoutlets.com> and <brevilleus.com> Domain Names are registered with Cloudflare, Inc. and that Respondent is the current registrant of the names. Cloudflare, Inc. has verified that Respondent is bound by the Cloudflare, 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 January 17, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2025 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@brevilleoutlets.com and postmaster@brevilleus.com. Also on January 17, 2025, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On February 7, 2025 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the Domain Names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant owns the trade mark BREVILLE registered, inter alia,  in Australia for kitchen appliances since 1932. It owns <breville.com>.

 

The Domain Names registered in 2024 are confusingly similar to the Complainant's trade mark both containing it in its entirety and merely adding the generic term 'outlets' or 'US', and the gTLD .com none of which distinguishes the Domain Names or either of them from the Complainant's mark.

 

Respondent is not commonly known by the Domain Names and is not authorised by the Complainant. The web sites connected with the Domain Names used the Complainant's trade mark in its logo form in their mastheads to purport to be official sites of the Complainant which cannot be a bona fide offering of goods or services or a legitimate non commercial or fair use. It is registration and use in bad faith. The web sites attached to the Domain Names were designed to deceive Internet users that the web sites attached to the Domain Names were official sites of the Complainant and showed that the Respondent is aware of the Complainant and its business, rights and products. The Respondent is confusing Internet users for commercial gain and disrupting the Complainant's business.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant owns the trade mark BREVILLE registered, inter alia, in Australia for kitchen appliances since 1932. It owns <breville.com>.

 

The Domain Names registered in 2024 were pointed to web sites that used the Complainant's trade mark in its logo form in their mastheads to purport to be official sites of the Complainant.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

The Domain Names consist of the Complainant's BREVILLE mark (which is registered, inter alia, in Australia for kitchen appliances since 1932), the generic terms 'US' or 'outlets', and the gTLD .com.

 

Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). Accordingly the Panel holds that the addition of the generic terms 'US' or 'outlets' to the Complainant's trade mark in the Domain Names does not prevent confusing similarity between the Domain Names or either of them and the Complainant's mark.

 

The gTLD .com does not serve to distinguish either of the Domain Names from the Complainant's mark. See Red Hat Inc v Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

 

Accordingly, the Panel holds that the Domain Names are both confusingly similar to the Complainant's registered mark.

 

As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.

 

Rights or Legitimate Interests

The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Names or either of them. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).   The use of the Domain Names is commercial and therefore is not legitimate non commercial or fair use.

 

The web sites attached to the Domain Names used the Complainant's mark in its logo form in their mastheads and presented themselves as official sites of the Complainant. The Panel finds this use is deceptive and confusing. As such it cannot amount to the bona fide offering of goods and services. (See Am. Intl Group Inc v Benjamin, FA 944242 (Forum May 11, 2007) finding that the Respondent's use of a confusingly similar domain name to compete with the Complainant's business did not constitute a bona fide use of goods and services). 

 

The Respondent has not answered this Complaint or rebutted the prima facie case evidenced by the Complainant as set out herein.

 

As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names or either of them and that the Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

In the opinion of the panelist the use made of the Domain Names in relation to the Respondent's sites was confusing and disruptive in that visitors to the sites might reasonably have believed they were connected to or approved by the Complainant as they used the Complainant's trade mark in its logo form in their mastheads and gave the impression that they were official sites of the Complainant. The use of the Complainant's logo shows that the Respondent is aware of the Complainant its rights, business and products.

 

Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web sites likely to disrupt the business of the Complainant, thereby demonstrating bad faith. (See Asbury Auto Group Inc v Tex. Int'l Prop Assocs, FA 958542 (Forum May 29, 2007) finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use).

 

Additionally, the registration of two different domain names containing the Complainant's mark for two different similar web sites purporting to be official sites of the Complainant suggests a pattern of bad faith activity. See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (finding that registration of multiple domain names in a case satisfies the burden imposed by the Policy ¶ 4(b)(ii)).

 

As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(ii), (iii) and (iv).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <brevilleoutlets.com> and <brevilleus.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne, Panelist

Dated: February 7, 2025