Westmore · UDRP DecisionEasybreathua.com
The Panel ordered transfer of <easybreathua.com>. It found the domain confusingly similar to the Complainant’s EASYBREATH mark because it incorporated the mark in full and merely added “ua,” corresponding to Ukraine. The Respondent lacked rights or legitimate interests because there was no authorization, evidence that the Respondent was commonly known by the domain, or bona fide or fair use. The domain had previously resolved to a Russian-language website offering alleged EASYBREATH masks without an appropriate disclaimer. Given the Complainant’s prior rights, including in Ukraine, and the commercial use targeting the same type of goods, the Panel found registration and use in bad faith through intentional confusion for commercial gain.
The timeline behind easybreathua.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind easybreathua.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The case illustrates a common UDRP pattern in which a trademark is combined with a country abbreviation and used for an unauthorized product-sales website. The decision shows that geographic additions generally do not avoid confusing similarity and that an undisclosed commercial website selling goods associated with the mark can be decisive for both legitimate-interest and bad-faith analysis. It also demonstrates that prior website evidence may remain relevant even when the domain is inactive when the decision is issued.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Projectclub v. Petrovich Vladimir Konchakovskii Case No. D2018-0502 1. The Parties The Complainant is Projectclub of Villeneuve d’Ascq, France, represented by AARPI Scan Avocats, France. The Respondent is Petrovich Vladimir Konchakovskii of Kiev, Ukraine. 2. The Domain Name and Registrar The disputed domain name <easybreathua.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2018. On March 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2018, the Registrar 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” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2018. The Center appointed Luca Barbero as the sole panelist in this matter on April 18, 2018. 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 Complainant is a company providing business support services which is fully owned and administered by Decathlon, a major French manufacturer specialized in the conception and retailing of sporting and leisure goods. Decathlon designs and manufactures several lines of its own which are marketed under 20 dedicated “Passion Brands”, including the TRIBORD brand, dedicated to water sports and the SUBEA brand, dedicated to diving. Among the products traded under the SUBEA brand, EASYBREATH identifies an innovative snorkeling mask. The Complainant’s sporting and leisure goods are offered for sale online through the websites “www.decathlon.com” and “www.subea.com”. The Complainant is the owner of several trademarks consisting of EASYBREATH in France and abroad, including in Ukraine, where the Respondent is located according to the WhoIs records. Amongst others, the Complainant owns the French trademark No. 4053624 for EASYBREATH (word mark), filed on December 10, 2013 and registered for goods and services in classes 9, 25 and 28; and the International trademark No. 1227496 for EASYBREATH (word mark), designating Ukraine, registered on June 10, 2014 for goods and services in classes 9, 25 and 28. The Complainant is also the owner of approximately 40 domain names consisting or including EASYBREATH, such as the domain name <easybreath.fr>, registered since October 23, 2013. The disputed domain name <easybreathua.com> was registered on March 22, 2017 and is currently not pointed to an active website. According to the screenshots submitted by the Complainant, the disputed domain name was previously pointed to a website in Russian which offered for sale snorkeling masks under the trademarks EASYBREATH, TRIBORD and SUBEA. 5. Parties’ Contentions A. Complainant The Complainant states that the disputed domain name <easybreathua.com> is confusingly similar to the Complainant’s trademark EASYBREATH, as it wholly incorporates the mark with the mere addition of the letters “ua”, which refer to Ukraine and are unable to dispel the likelihood of confusion between the signs at issue. The Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons: i) To the Complainant’s best knowledge, the Respondent is not currently, and has never been, known under the disputed domain name; ii) The Complainant conducted a trademark search on the Ukrainian trademark database over “easybreath” and “easybreathua” and found that the Respondent never filed any trademark identical or similar to its own rights; iii) The Complainant did not know the Respondent and ascertained that the Respondent is not related to its business, nor one of its distributors and does not carry out any activity for nor has itany business with the Complainant; iv) The Complainant has never licensed, authorized, or otherwise permitted the Respondent to register a domain name incorporating its trademark, nor to make any use of the trademark in order to distinguish its own business; v) The Respondent is using the disputed domain name to redirect users to a website offering competing, if not counterfeiting, products under the Complainant’s trademark EASYBREATH; vi) The use of a domain name reproducing a complainant’s trademark to sell competing or unauthorized products does not constitute a bona fide offering of goods, particularly when the respondent does not explicitly disclose its relationships with the complainant. The Complainant submits that the Respondent registered the disputed domain name in bad faith because: i) The Complainant’s EASYBREATH trademarks and domain names were registered before the disputed domain name; ii) The disputed domain name is confusingly similar to the Complainant’s marks; iii) Any search for “easybreath” conducted with a search engine such as Google leads in the first place to websites relating to the Complainant and its products; iv) the Respondent was fully aware of the Complainant’s prior rights and registered the disputed domain name for the sole purpose of attracting the Complainant’s customers, thereby misleading them to a third-party website; v) The disputed domain name resolved to a website selling confusingly similar, if not counterfeiting, snorkeling masks under the Complainant’s trademark EASYBREATH; vi) The Respondent’s is directly referring on its website to other relevant DECATHLON’s “passion trademarks” TRIBORD and SUBEA, which are dedicated to watersports and diving sports. The Complainant also states that the Respondent is using the disputed domain name in bad faith to capitalize on the reputation of the Complainant’s EASYBREATH marks by diverting Internet users seeking snorkeling masks products under the Complainant’s EASYBREATH marks to the Respondent’s own website, where consumers may purchase confusingly similar, if not counterfeit, masks offered and sold under the EASYBREATH mark. The Complainant submits that, by using the disputed domain name in such manner, the Respondent is not only causing harm to the Complainant to an economic point of view but may also create high risks for the consumers in terms of safety and security. The Complainant concludes that the Respondent is illegitimately identifying itself in a confusing manner and attracting visitors to its website by trading off on the Complainant’s goodwill in its EASYBREATH trademarks and awarded successful products. B. Respondent The Respondent did not reply to the Complainant’s contentions. 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, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has established rights in the trademark EASYBREATH based on the trademark registrations cited under Section 4 above. The disputed domain name incorporates the trademark EASYBREATH in its entirety, with the mere addition of the two-letter term “ua” and the generic Top-Level Domain suffix “.com”. As found in a number of prior cases decided under the Policy, where a trademark is recognizable within a domain name, the addition of geographic or descriptive terms does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In addition, as stated in section 1.11 of the WIPO Overview, the applicable Top-Level Domain in a domain name is viewed as a standard registration requirement and as such is typically disregarded under the first element confusing similarity test. The Panel notes that the “ua” suffix corresponds to the country code Top-Level Domain for Ukraine and finds that the addition of such element to the Complainant’s trademark in this disputed domain name is not distinctive in any way. See, along these lines, Compagnie Générale des Etablissements Michelin / Mikhail Bulateckij, WIPO D2011-0473 and Koninklijke Philips Electronics N.V. / Sergey Nikolaenko , WIPO D2010-1494. Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons. According to the evidence on record, there is no relationship between the Complainant and the Respondent and the Complainant has not authorized the Respondent to register or use its trademark or the disputed domain name. Moreover, there is no evidence that the Respondent might have been commonly known by the disputed domain name or that it might have used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use before receiving any notice of the dispute. On the contrary, the Respondent’s pointing of the disputed domain name to a website which featured the Complainant’s trademark and offered for sale alleged EASYBREATH masks without publishing an appropriate disclaimer, suggests an attempt to divert Internet users seeking for the Complainant by causing confusion with the Complainant’s trademark. Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith. In light of the Complainant’s prior registration and use of the trademark EASYBREATH, including in Ukraine, where the Respondent is based, of the confusing similarity of the disputed domain name with the trademark and of the use of the disputed domain name to advertise and offer for sale goods identical to the ones provided by the Complainant under the trademark, the Panel finds that the Respondent likely registered the disputed domain name having the Complainant’s trademark in mind. The Panel also finds that, in view of the use of the disputed domain name to redirect users to a website purportedly promoting the sale of masks under the trademark EASYBREATH without publishing an accurate disclaimer, the Respondent clearly intended to attract Internet users to its website for commercial gain, by causing a likelihood of confusion with the Complainant’s trademark and misleading users into believing that the Respondent and its products are affiliated with the Complainant. In light of the above, the Panel finds that the Complainant has proven that the Respondent registered and is using the disputed domain name in bad faith. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <easybreathua.com> be transferred to the Complainant. Luca Barbero Sole Panelist Date: May 3, 2018
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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