DECISION

 

Breitling SA v. Privacy Protect / My Domain Provider

Claim Number: FA2502002140778

PARTIES

Complainant is Breitling SA ("Complainant"), represented by Arthur Fouré of IP Twins, France. Respondent is Privacy Protect / My Domain Provider ("Respondent"), Netherlands.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <breitling.com.de>, registered with HOSTINGER operations, UAB.

 

PANEL

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.

 

The Honorable Neil Anthony Brown KC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 19, 2025; Forum received payment on February 19, 2025.

 

On February 19, 2025, CentralNic confirmed by e-mail to Forum that the <breitling.com.de> domain name is registered by Respondent and Respondent is bound by the CentralNic Dispute Resolution Policy (the "CDRP Policy"). CentralNic further verified that mediation was conducted and failed.

 

On February 20, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 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@breitling.com.de. Also on February 20, 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 March 13, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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 to the CDRP Dispute Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant made the following contentions.

1.       The Complainant is a renowned Swiss company engaged in the provision of high-end chronographs, watches and related accessories and has been so engaged since 1884.

2.       The Complainant provides its goods and services under the trademark for BREITLING. In particular, the evidence will establish that the Complainant has acquired registered trademark rights in the BREITLING trademark by virtue of its registration of the International trademark  for BREITLING (device), registered number 279322, registered on 31 January 1964 and other trademarks domestically and internationally for BREITLING (collectively "the BREITLING trademark"). The Complainant has used that trademark since its registration to offer its goods and services.  

3.       The BREITLING trademark has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.

4.       As well as its trademark, the Complainant has registered the domain name <breitling.com> that it uses in its business and in particular for its website at www.breitling.com where it markets its products under the BREITLING trademark and brand.

5.       The Respondent has registered the <breitling.com.de> domain name ("the disputed domain name") well after the Complainant had established its aforesaid trademark rights and after the trademark had become famous. The date of registration has not been provided.

6.       The disputed domain name embodies, without the consent of the Complainant, the BREITLING trademark with the addition of the generic Top Level Domain ".com". and the ".de" country code top-level domain for Germany. 

7.       The disputed domain name is identical to the BREITLING trademark.

8.       The Respondent has no rights or legitimate interests in the disputed domain name. That is so because:

(a)       the Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii);

(b)        the Respondent has acquired no trademark rights in BREITLING;

(c)        the Respondent reproduces the BREITLING trademark without any license or authorization from the Complainant;

(d)        the Respondent has not used the domain name for a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) but rather it has caused the disputed domain name to resolve to a default registrar parking page;

(e)        since the adoption and extensive use by the Complainant of the BREITLING trademark predates the registration of the disputed domain name, the burden is on the Respondent to establish the Respondent's rights or legitimate interests in the domain name and it is in default and has not shown any evidence to meet that burden; 

(f)       the Respondent has not used the domain name for a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii) but rather has used the domain name for improper commercial gain; and

(g)        there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the disputed domain name under the CDRP Policy or otherwise.

9.       The Respondent has registered or used the disputed domain name in bad faith. That is so because:

(a)                      the Complainant and its trademark are so widely well-known that it is inconceivable that the Respondent could have not known of the Complainant's prior rights in the BREITLING trademark which in any event was very well-known in view of the Complainant's presence on Facebook and Instagram and could have been easily revealed by a simple online search, showing that the Respondent knew or should have known when registering the domain name that this was in violation of the trademark and the Complainant's prior rights in it; clearly the Complainant is of such renown and has had that renown for many years that its name, trademark and brand have become widely known internationally; it is therefore hard to believe that the Respondent was unaware of the BREITLING name, trademark and brand when it registered the domain name; thus a bad faith intention must be imputed to the Respondent at the time it registered the domain name;

(b)                       the evidence shows that it is very likely that the Respondent chose the domain name because of its identity with the BREITLING trademark and in the expectation that Internet users searching for the Complainant and its goods and services would instead come across the Respondent's internet site; the Panel accepts this submission because the Respondent must have registered the domain name for some reason and as the domain name is identical to the trademark, the reason must have been that it is identical to the trademark, that it had the potential to mislead internet users and probably that the Respondent believed that it could induce the Complainant to buy it or that it could be used to create confusion with the BREITLING trademark for some commercial benefit;

(c)                      it is inconceivable that the Respondent could use the domain name in connection with a bona fide offer of products or services; indeed, any use of the BREITLING trademark would amount to trademark infringement and damage to the repute of the trademark; this has already been established by the evidence;

(d)                      the Respondent has attempted to prevent the Complainant from reflecting its trademark in a domain name; the Panel finds that this is a probably also a reason for the Respondent having registered the domain name and for holding it in abeyance on the parking page to which it resolves;

(e)                      the evidence is that the Complainant's registration of the BREITLING trademark significantly predates the registration date of the disputed domain name; accordingly it must be concluded that the Respondent had knowledge of the Complainant and the BREITLING trademark at the time it registered the domain name, which is a well-established ground for finding bad faith registration; and

(f)                      all of the acts, facts, matters and circumstances to be revealed by the evidence will show that the Respondent registered or used the disputed domain name in bad faith.

The evidence has therefore established that the Complainant has made out all of the grounds it must establish and that it is entitled to the relief that it seeks.

B. Respondent

    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.       The Complainant is a renowned Swiss company engaged in the provision of high-end chronographs, watches and related accessories and has been so engaged since 1884.

2.       The Complainant provides its goods and services under the trademark for BREITLING. In particular, the evidence has established that the Complainant has acquired registered trademark rights in the BREITLING trademark by virtue of its registration of the International trademark for BREITLING (device), registered number 279322, registered on 31 January 1964 and other trademarks domestically and internationally for BREITLING (collectively "the BREITLING trademark"). The Complainant has used that trademark since its registration to offer its goods and services.  

3.       The Respondent registered the <breitling.com.de>, domain name on September 12, 2023 ("the disputed domain name"), well after the Complainant had established its aforesaid trademark rights.

4.       The Respondent has caused the disputed domain name to resolve to a default registrar parking page website which was an infringement the Complainant's trademark.

5.       By reason of the matters aforesaid, and as established by the evidence, the disputed domain name is identical to the BREITLING trademark, the Respondent has no rights or legitimate interests in the disputed domain name and the disputed domain name has been registered or used in bad faith.

6.       Accordingly, the disputed domain name should be transferred from the Respondent to 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 or is being used in bad faith.

 

The CDRP also requires that Complainant has participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint, which it was.

        

Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the CDRP Policy, the Panel will draw upon prior UDRP decisions as being applicable in rendering its decision.

 

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 first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely in this proceeding. The evidence establishes that the Complainant provides its goods and services under the trademark for BREITLING. In particular, the evidence has established that the Complainant has acquired registered trademark rights in the BREITLING trademark by virtue of its registration of the International trademark for BREITLING (device), registered number 279322, registered on 31 January 1964 and other trademarks domestically and internationally for BREITLING (collectively "the BREITLING trademark"). The Complainant has used that trademark since its registration to offer its goods and services.  

The aforesaid facts have been established by documentary evidence that the Panel has examined and finds to be in order.

The Complainant has thus established its trademark rights and hence its standing to bring this proceeding.

The next question that arises is whether the disputed domain name is identical or confusingly similar to the Complainant's BREITLING trademark.

The Panel finds that the disputed domain name is identical to the BREITLING trademark. The disputed domain name embodies, without the consent of the Complainant, the entirety of BREITLING trademark with no additions or alterations but with the addition of the generic Top Level Domain ".com" and the ".de" country code top-level domain name for Germany. Thus, internet users would read the domain name as invoking the BREITLING trademark and as dealing with the Complainant's goods and services offered under the trademark, including in Germany, and as being either a domain name of the Complainant itself or one that has been registered with its consent.

The addition of the generic Top Level Domain ".com" and the ".de" country code top-level domain name for Germany is ignored in making the comparison, because all domain names must have such an extension.

The Panel therefore finds that the disputed domain name is identical to the BREITLING trademark under Policy ¶ 4(a)(i).

The Complainant has thus made out the first of the three elements that it must establish under the Policy.

 

Rights or Legitimate Interests

It is now well established that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)).

 

The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name on all of the grounds relied on by the Complainant, namely:

(a)        the Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii); there is no evidence that the Respondent is known by the domain name and no evidence that it is known by any name other than its own;

(b)       the Respondent has acquired no trademark rights to the BREITLING term; the evidence shows that searches have been made and they reveal that neither the Respondent or any other party has any registered trademark for BREITLING nor any similar trademark;

(c)        the Respondent reproduces the BREITLING trademark without any license or authorization from the Complainant; the evidence is that the Complainant has never given any licence, permission or authority to the Respondent to use the BREITLING trademark or any similar mark and there has never been any affiliation or relationship between the Complainant and the Respondent; thus, it could not be suggested that the domain name was registered or used with any sort of permission or consent of the Complainant;

(d)        the Respondent has not used the domain name for a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i); the Complainant's Annex 10 shows that the Respondent has caused the disputed domain name to resolve to a default registrar's parking page; thus, the evidence shows that the domain name has not been used for an active and legitimate bona fide purpose;

(e)       the domain name was registered well after the Complainant acquired its trademark rights and the burden is therefore on the Respondent to establish its rights or legitimate interests in the domain name which it has not done and has not attempted to do;

(f)       the Respondent has not used the domain name for a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii) but rather has probably registered the domain name for improper commercial gain; there is nothing legitimate in taking another party's trademark and causing it to resolve to an inactive website; in all probability, this was done in the present case in the hope for some form of commercial gain to the Respondent and it is not fair for the Respondent to have done so, either to the Complainant or to internet users generally; and

(g)        there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the disputed domain name.

The Complainant has therefore made out a very persuasive case for all of the grounds it relies on to show that the Respondent does not have a right or legitimate interest in the disputed domain name.

 

All of these matters make out the prima facie case against the Respondent. The Respondent has not filed a Response and is in default and has thus not rebutted the prima facie case against it.

 

The Complainant has therefore made out the second of the three elements it must establish under the Policy.

 

Registration or Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered or used in bad faith. It is also clear that the criteria set out in the Policy ¶ 4(b) are not exclusive but that domain name proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

The Complainant has submitted that the Respondent has registered or used the disputed domain name in bad faith on several grounds. In view of the evidence discussed above, which is equally applicable to bad faith as it is to rights and legitimate interests and which it is not necessary to repeat, it is clear that the Complainant has made out all of the grounds relied on.

In particular, it is clear from the evidence that, as the Complainant has submitted:

(a)                      the Complainant and its trademarks are so widely well-known that it is inconceivable that the Respondent could have not known of the Complainant's prior rights in the BREITLING trademark which in any event were well-known in view of the Complainant's presence on Facebook and Instagram and could have been easily revealed by a simple online search, showing that the Respondent knew or should have known when registering or using the domain name that this was in violation of the Complainant's trademark rights; clearly the Complainant is of renown and has had that renown for many years and its name, trademark and brand have become so widely-known internationally that it is impossible to believe that the Respondent was unaware of the BREITLING name, trademark and brand when it registered the domain name; thus a bad faith intention must be imputed to the Respondent at the time it registered the domain name;

(b)                        the evidence shows that it is very likely that the Respondent chose the domain name because of its identity with the BREITLING trademark and in the expectation that Internet users searching for the Complainant and its goods and services would instead come across the Respondent's internet site; the Panel accepts this submission because the Respondent must have registered the domain name for some reason and as the domain name is identical to the trademark, the reason must have been because it is identical to the trademark and had the potential to mislead internet users and probably also that the Respondent could induce the Complainant to buy it or that it could be used to create confusion with the BREITLING trademark for some commercial benefit;

(c)                       it is inconceivable that the Respondent could use the domain name in connection with a bona fide offer of products or services; indeed, any use of the BREITLING trademark would amount to trademark infringement and damage to the reputation of the trademark; this has already been established by the evidence;

(d)                       the Respondent has attempted to prevent the Complainant from reflecting its trademark in a domain name; the Panel finds that this is probably also a reason for the Respondent having registered the domain name and for holding it in abeyance on the parking page to which it resolves; it is also a specific ground of bad faith under Policy ¶ 4(b)(ii);

(e)                       the evidence is that the Complainant's registration of the BREITLING trademark significantly predates the registration date of the disputed domain name; accordingly, it must be concluded that the Respondent had knowledge of the Complainant and the BREITLING trademark at the time it registered the domain name, which is a well-established ground for finding bad faith registration; and

(f)                      all of the acts, facts, matters and circumstances to be revealed by the evidence have shown that the Respondent registered or used the disputed domain name in bad faith.

Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the BREITLING trademark and in view of the conduct of the Respondent, as shown by all of the available evidence, the Respondent registered or used the disputed domain name in bad faith within the generally accepted meaning of that expression.

The Complainant has thus made out the third of the three elements that it must establish.

The Complainant has also cited several prior UDRP decisions that support all of its contentions

The Complainant has therefore established all of the elements that it must show under the Policy and it is entitled to the relief it seeks, namely transfer of the disputed domain name.

 

DECISION

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

 

Accordingly, it is Ordered that the <breitling.com.de> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

The Honorable Neil Anthony Brown KC,

Panelist

Dated: March 14, 2025