WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION FEIYUE v. Ren qijian Case No. D2010-0023 1. The Parties
The Complainant is FEIYUE of Paris, France, represented by Cabinet Moutard, France.
The Respondent is Ren qijian of Hangzhou, Zhejiang, People's Republic of China, appearing pro se. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on January 7, 2010. On January 7, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On January 7, 2010, GoD, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the Respondent's contact details. The Center has verified that the Complaint satisfies 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced, on January 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2010. The Response was filed with the Center on January 25, 2010.
The Center appointed Sebastian Hughes as the sole panelist in this matter on January 29, 2010. 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 A. The Complainant
The Complainant is a company incorporated in France and the owner of registrations for the device trade mark comprising the wording FEIYUE. in respect of footwear in numerous jurisdictions worldwide, including the European Union, the United States of America and Canada, the earliest registered since May 2006 (“the Trade Mark”). The Trade Mark is as follows:
B. The Respondent
The Respondent is an individual based in China.
The disputed domain name was registered on October 12, 2009. 5. Parties' Contentions A. The Complainant
The following facts are alleged by the Complainant in the Complaint. A. The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The disputed domain name is strongly similar to the Trade Mark. The term “shoes” is totally descriptive of the goods sold by the Respondent. The term “China” which designates a country is descriptive of the origin of the goods sold by the Respondent. Since the terms “shoes” and “China” are descriptive, only the term “feiyue” is the distinctive and dominant element of the disputed domain name.
The disputed domain name is phonetically, visually and conceptually very similar to the Trade Mark.
Furthermore, the website to which the disputed domain name resolves (“the Website”) is using the entire Trade Mark (including its logo) identically.
The Respondent is selling shoes identical to the shoes sold by the Complainant on the Website.
For all of these reasons, the average consumer will be misled and will perceive the disputed domain name as coming from the Complainant. B. The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:
- before the present notice of the dispute to the Respondent, there is no evidence of the use of the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
- the Respondent has not been commonly known by the disputed domain name;
- the Respondent is making illegitimate commercial and non-fair use of the disputed domain name: indeed, consumers are misled since when they buy shoes via the disputed domain name, they think that the disputed domain name belongs to the Complainant. They consequently think that the disputed domain name and are both domain names which belong to the Complainant. They also think that shoes sold on the Website are shoes which come from the Complainant. C. The disputed domain name was registered and is being used in bad faith.
In registering and using the disputed domain name, the Respondent has intentionally attempted to attract for commercial gain Internet users to the Website by creating a likelihood of confusion with the Trade Mark.
Consumers of average attention think that the Complainant has approved or is
the source of the registration and use of the disputed domain name. They also think that the Complainant has approved or is the source of the shoes sold on the Website.
The Respondent has created further confusion by writing in the “Blog” section of the Website:
“This small shoe made of light material that has guided the paths of all social classes in China, as crossed continents, arriving in Europe in 2006, where it was picked up by a team of French enthusiasts, fascinated by sneakers and urban culture. the price of 50 Eur per pair is so expensive. you can buy shoes from Chinese online shop, it is much more cheaper.”
Therefore, consumers of average attention think that the shoes sold on the
Website are the original FEIYUE shoes of the Complainant. B. Respondent
The following facts are alleged by the Respondent in the Response.
The disputed domain name is identical to the Chinese trade mark 飞跃(FEIYUE) No.101303 registered on March 1, 2003 owned by Shanghai XiangJiao First Factory and registered in respect of “sneakers”.
The term “China” in the disputed domain name means “Chinese trade mark”. The term “feiyue” is the Chinese pronunciation of 飞跃. The term “shoes” means the products designated by the trade mark 飞跃 in class 25, namely “sneakers”.
The Respondent sells classic feiyue Kungfu/Wushu shoes made by Shanghai XiangJiao First Factory which has rights in the Chinese trade mark 飞跃(FEIYUE). 飞跃(FEIYUE) is an old Chinese brand that has specialised in manufacturing Kungfu/Wushu shoes since the 1920s. In 2005, 飞跃(FEIYUE) was spotted by Patrice Bastian. Patrice registered the overseas franchise of Feiyue in France, and re-designed the FEIYUE trade mark which specialised in fashion shoes.
The Respondent has rights and legitimate interests in respect of the disputed domain name. The Respondent is a local agent of the Chinese brand 飞 跃（FEIYUE）. The Respondent registered the disputed domain name to sell classic feiyue shoes. The Respondent believes the rights to the disputed domain name belong to the Respondent instead of the French company (the Complainant). The Complainant doesn't have rights or legitimate interests in respect of the disputed domain name. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate by over three years the date of registration of the disputed domain name.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662). UDRP panels have also consistently held that, in determining the question of identity or confusing similarity between a complainant's mark and a domain name, the logo or device component of the mark in question need not be taken into consideration. For the purposes of this proceeding, the relevant portion of the Trade Mark in determining the question of confusing similarity is the wording component of the mark.
The addition of the generic words “China” and “shoes” does not serve to distinguish the disputed domain name in any way, particularly given the fact the Trade Mark is used by the Complainant in respect of shoes sourced from China. Both of these words should be disregarded in determining the question of confusing similarity.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark or similar mark. The Complainant has prior rights in the Trade Mark which precede the Respondent's registration of the disputed domain name. There is therefore a likely prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name, and the burden is therefore on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has referred to a trade mark registration in China for the following device mark, apparently registered in the name of Shanghai XiangJiao First Factory, and the Respondent (an individual) claims to be selling on the Website sneakers manufactured by this factory:
Other than this bald assertion, however, there has been no evidence filed to establish that the Respondent has been authorised, licensed or permitted by Shanghai XiangJiao First Factory to use its trade mark in any manner. Furthermore, it appears the Website is directed to consumers in the countries in which the Complainant operates. The Website is an English language website and, most pertinently, it features several identical and highly similar reproductions of the Trade Mark, as well as footwear bearing the Trade Mark or similar marks. The Website does not feature any reference to Shanghai XiangJiao First Factory or its footwear products, nor does it feature the Shanghai XiangJiao First Factory logo trade mark, or any footwear or other products bearing this mark.
The Panel finds that, on the evidence filed, the disputed domain name has been registered and the Website set up by the Respondent in order to trade off the goodwill and reputation of the Trade Mark by, without the licence or approval of the Complainant, offering for sale and selling footwear bearing the Trade Mark directly to consumers in countries in which the Trade Mark is registered and in which the Complainant operates.
The Panel therefore concludes that the Respondent has failed to show that it has acquired any legitimate trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Respondent did not file any submissions with respect to the Complainant's allegations of registration and use of the disputed domain name in bad faith.
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with the Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Website and the products offered by the Respondent on the Website bearing and by reference to the Trade Mark.
Not only does the disputed domain name comprise the Trade Mark, but the Respondent has been, without authorisation, using the Trade Mark, as well as images of footwear bearing the Trade Mark, on the Website, thereby increasing the likelihood of consumer confusion.
The Panel therefore concludes that the Respondent's registration and use of the disputed domain name falls under paragraph 4(b)(iv).
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled 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 be cancelled as requested by the Complainant.
Sebastian Hughes
Sole Panelist
Dated: February 11, 2010
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