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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Breitling SA, Breitling USA Inc. v. Acme Mail

Case No. D2008-1000

 

1. The Parties

The Complainant is Breitling SA of Grenchen, Switzerland, and Breitling USA Inc. of Connecticut, United States of America, represented by B.M.G. Avocats, of Geneva, Switzerland.

The Respondent is Acme Mail, of Florida, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <bretling.com> is registered with Intercosmos Media Group, Inc. doing business as directNIC.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2008. On July 3, 2008, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain name. On July 3, 2008, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2008.

On July 23, 2008, the Respondent submitted an email to the Center stating reasons why it should retain registration of the disputed domain name. On July 23, 2008, the Center replied to the Respondent, asking whether the Respondent’s email should be regarded as the Respondent’s complete Response. The Center indicated that if no confirmation was received on or before the due date for the Response, it would treat the email as the Response. No further correspondence was received, so the Respondent’s email of July 23, 2008 will be treated as the Response in this matter.

The Center appointed John Swinson as the sole panelist in this matter on August 7, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The first Complainant is a company based in Switzerland which manufacturers specialized chronographs and watches, as well as related accessories. (Chronographs are watches with both timekeeping and stopwatch functions.) The second Complainant is a related entity of the first Complainant, which is based in the United States of America (“United States”).

The Complainants’ watches are Swiss made, and widely-known for offering specialized aviation functions. The watches are also known for being luxurious articles, which are priced at the higher-end of the watch market.

The Complainants have several registered trade marks over BREITLING or similar terms in the United States, where the Respondent appears to be located:

- Trade mark registration no. 2964474 for BREITLING word mark, registered on July 5, 2005;

- Trade mark registration no. 2793926 for BREITLING word and logo, registered on December 16, 2003;

- Trade mark registration no. 2785670 for BREITLING word and logo, registered on November 25, 2003;

- Trade mark registration no. 2352162 for BREITLING word and logo, registered on May 23, 2000;

- Trade mark registration no. 2480171 for BREITLING word and logo, registered on August 21, 2001.

The Panel was unable to find any information about the Respondent.

The website operating from the disputed domain name resolves to a page with a Google search mechanism. There is nothing else on the page.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

Breitling is the name of a well known watch company founded in 1884. The Complainant has operated a website promoting its goods at “www.breitling.com” since June 1, 1995.

The trade mark BREITLING is registered around the world in respect of watch products. The second Complainant (Breitling USA Inc.) is responsible for the United States market, and has been assigned certain United States trade mark registrations by the first Complainant.

Registrations in the United States of America include trade mark registration no. 2964474 (BREITLING) from July 5, 2005; trade mark registration no. 0526421 (BREITLING and design) from June 13, 1950; and trade mark registration no. 2352162 (BREITLING B and design) from May 23, 2000. Registrations in Switzerland include trade mark registration no. 541912 (BREITLING) from December 7, 2005; trade mark registration no. P-324703 (BREITLING and design) from March 22, 1983 and trade mark registration no. 394956 (BREITLING B and design) from December 23, 1992. The Complainants also hold international trade mark registrations for BREITLING and BREITLING and design.

The BREITLING trade mark is a very distinctive and well known trade mark around the world.

The disputed domain name is confusingly similar to the BREITLING trade mark. There is no significant difference between “breitling” and “bretling”. The sole difference between the disputed domain name and the Complainants’ trade marks is the deletion of the letter “i” in the domain name. Internet users are likely to misspell the Complainants’ mark in this way, and the distinction between the two names is practically imperceptible. Deliberate misspellings of protected trade marks are usually considered as being confusingly similar.

The Respondent’s identity is Acme Mail and it is not known by (and has never been known by) the name “Bretling”. The Complainants did not know of the Respondent prior to this matter, and the Respondent is not related to the Complainants’ business in any way. For example, the Complainants have not licensed or authorized the Respondent to use their trade mark or register the disputed domain name on their behalf.

The Respondent’s website operating from the disputed domain name points to a webpage displaying the Google logo. The website has nothing to do with the Respondent or Breitling. Such use is not a bona fide offering of goods or services, nor noncommercial or fair use of the disputed domain name.

The Complainants’ trade mark has a reputation and is well known throughout the world as being associated with watches. The Respondent could not have made up the word “Bretling” which has no meaning and is clearly a misspelling of the Complainants’ trade mark.

There is no other plausible excuse as to why the Respondent chose the disputed domain name, other than to attract Internet users who were looking for the Complainants’ website. The Respondent has intentionally tried to redirect Internet users to its website, generating traffic for its own purposes. The Respondent must have a financial interest in this type of behaviour.

Examples of the Respondent acting in bad faith include the fact that the Complainants have a well known trade mark; the Respondent concealing its identity; and the impossibility of any good faith use of the disputed domain name.

The Respondent has been a respondent to a previous proceeding ( WIPO Case No. D2007-0355) and the outcome was that the domain name be transferred to the complainant in that proceeding. There were many similarities between this case and the case currently against the Respondent.

The Complainants sent two cease and desist letters to the postal address and email address provided by the Respondent to the registrar. An error message was received in relation to one email, and the letters sent were returned unopened. The Respondent has provided false contact details in breach of its registration agreement (which was also the case in the earlier proceeding the Respondent has been involved in). It has taken deliberate steps to ensure its true identity cannot be determined and communication cannot be made.

The disputed domain name resolves to a homepage displaying the Google logo. The Respondent is using the disputed domain name to steer Internet users to Google’s websites, and also to promote its own website.

B. Respondent

The Respondent made the following contentions in its email of July 23, 2008:

The Respondent did not register the disputed domain name with the purpose of selling or renting it to the Complainant. There is no evidence that the Respondent has ever sent a communication on such matters to the Complainant.

The website operating from the disputed domain name does not make any mention of the Complainants’ mark. The Respondent was not trying to commercially trade on the Complainants’ reputation by creating confusion for consumers. The disputed domain name is not in the same competitive market as the Complainants.

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy provides that the complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trademark or a service in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proof lies with the complainant to establish that all these three elements are satisfied.

A. Identical or Confusingly Similar

The Complainants have shown that they have registered trade mark rights in BREITLING in Switzerland and the United States. The Complainants also have international trade mark registrations over the same term.

Ignoring the TLD suffix “.com” which is irrelevant when comparing a disputed domain name to a trade mark, the only difference between the disputed domain name and the Complainants’ trade mark is that the domain name omits the first occurrence of the letter “i”. The omission of one letter is a mistake which an Internet user is likely to make when looking for a website.

The omission of the “i” is a very minor difference which may be difficult to perceive at first glance, and is therefore not sufficient to prevent a finding of confusing similarity.

Therefore, the disputed domain name is confusingly similar to the BREITLING trade mark in which the Complainants have rights.

The first element has been met.

B. Rights or Legitimate Interests

Paragraphs 4(c)(i)-(iii) of the Policy gives several examples of when a respondent may have rights or legitimate interests in a domain name that is confusingly similar to a complainant’s mark. None of those examples appear to be present in this case.

First, the Respondent does not appear to be known by the term “Bretling” or anything similar. According to the WHOIS record, and the email Response that was submitted by the Respondent, the Respondent is known as Acme Mail or AcmeMail.com.

Second, the Complainants have not licensed, authorized or otherwise permitted the Respondent to use its BREITLING trade mark, or to register the disputed domain name. There is no other relationship between the Complainants and the Respondent.

Finally, the Respondent does not appear to be making a bona fide offering of goods or services from the website. The website operating from the disputed domain name is almost a blank page, except for displaying a small Google search box. When a search term is entered, the site redirects to a Google website. There is no offering by the Respondent of goods or services, other than redirecting users to the services that Google provides.

The title for the website at the disputed domain name, as shown in the title bar, is “Mr. BRET LING”.

When the panel looked at the source code for the website at the disputed domain name, it includes the following:

<frame name=“MYTOPFRAME” src=“http://www.genuinesearch.com” noresize> <noframes> <body> <h1>Mr. BRET LING</h1> Click here<br>

Bret Ling was born in China<br>

<br> Click here to enter <ahref=“http://www.genuinesearch.com”>http://www.genuinesearch.com</a>

<hr> | Domain Name Registration and Domain Name Forwarding by <a href=“http://www.mydomain.com”>mydomain.com - Register your domain name</a>

</body>

Thus, it appears that the website at the disputed domain name diverts to a website located at genuinesearch.com. According to WHOIS records, the <genuinesearch.com> domain name is owned by “Click Search” from San Jose, California.

Searches conducted using the Google search box on the website accessible via the dispute domain name may result in revenue being paid to someone, presumably someone associated with the dispute domain name. This can be seen from the “publisher id” that is included in the url of the Google search results page returned when using the Google search box on the website at the disputed domain name.

As stated on the Google website,

“AdSense for search is a free solution that allows publishers to place a search box on their site and earn revenue from relevant ads on the search results page.”

See https://www.google.com/adsense/support/bin/answer.py?answer=9879&topic=144

Using a domain name to host a website that has a Google search box and nothing else, where revenue is earned via Google as a result, is not noncommercial or fair use, and in these circumstances is not a bona fide offering of goods or services from the website.

See also Robbie Williams v. Taylor, WIPO Case No. D2002-0588.

The Complainants have presented a prima facie case indicating that the Respondent does not have any rights or legitimate interests in the disputed domain name. While the Respondent has submitted a Response in this proceeding, it only deals with the third element of bad faith, and has no application to this element. The Respondent has also not explained who is Mr. Bret Ling and why he is referred to on the source code for the website. As such, the Respondent has failed to rebut the Complainants’ prima facie case.

Accordingly, the second element has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The grounds relied upon by the Complainants appear to be subparagraph (ii) and (iv).

Subparagraph (ii) provides for circumstances where the respondent has engaged in a pattern of conduct of registering domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name.

The Respondent was also a respondent in a previous panel decision: A.G. Edwards & Sons, Inc. v. Acme Mail, WIPO Case No. D2007-0355. In that case, the panel noted:

- the Respondent registered a domain name “agedward.com” which was virtually identical to the complainant’s famous AG Edwards trade mark;

- the Respondent initially directed this website towards the CNN news website, but later directed it to a website which offered goods and services in competition with the complainant’s goods and services;

- that the contact details provided by the Respondent to the registrar appeared to be incorrect (emails and letters were returned).

The panel decided in favor of the complainant and indicated that the Respondent had engaged in typo squatting.

The similarities with this matter are that the contact details provided by the Respondent again appear to be incorrect, and the Respondent has registered a domain name which is only slightly different to a well known trade mark.

Two cease and desist letters were sent by the Complainants to the Respondent, at the address provided in the relevant WHOIS database. Both letters were returned unopened. Two emails were also sent by the Complainants to the email address given in the WHOIS database, and no response was received apart from an error message.

Also, the Respondent has registered a domain name which only differs from a famous and internationally well known trade mark by one letter. The word that the Respondent has registered (Bretling) is not a common word and does not appear to have any meaning. It appears unlikely that the Respondent would make up this word (which appears to mean nothing on its own) without having regard to the Complainants’ famous trade mark and the possibility that Internet users will confuse it for the Complainants’ mark.

In its Response, the Respondent states that it never tried to profit from the registration, by selling or renting the disputed domain name to the Complainant. This was not raised by the Complainant as an alleged ground of bad faith, so it is of no relevance. However the Respondent also stated that the disputed domain name was not being used to compete with the Complainants’ goods or services, as the website does not refer to the Complainants’ mark. The Respondent states that it was not trying to trade off the Complainants’ reputation.

The Panel disagrees with the Respondent. The Respondent is using the disputed domain name to mis-direct web traffic to its website and then profit from the Google AdSense program whenever someone conducts a search at this website.

The Panel also finds that the Respondent registered and used the disputed domain name in bad faith, for the following additional reasons:

- the Respondent has attempted to conceal its identity, and has not responded to efforts made by the Complainants to contact it;

- on at least two occasions, the Respondent has registered a domain name which differs from widely-known trade marks in the United StatesAmerica by one letter;

- the Respondent is not making any bona fide use of the disputed domain name;

- the disputed domain name registered by the Respondent is not a common, everyday word, and it is very unlikely the Respondent thought of it without having regard to the Complainants’ distinctive and famous BREITLING trade mark.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <bretling.com> be transferred to Breitling SA.

---

John Swinson
Sole Panelist

Dated: August 24, 2008