The Complainant is FEIYUE of Paris, France, represented by Gilbey Delorey, France.
The Respondent is jianjun chen of Zhejiang, China with an administrative and technical contact, Qijian Ren, of Hangzhouo, China. 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 September 6, 2010. On September 7, 2010, the Center transmitted by email to GoD, Inc., a request for registrar verification in connection with the disputed domain name. On September 8, 2010, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed amended annexes on September 14, 2010.
The Center verified that the Complaint and amended annexes 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2010.
The Center appointed Hariram Jayaram as the sole panelist in this matter on October 13, 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
FEIYUE is a simplified joint-stock company (société par actions simpliféé) organised under the laws of France and registered with the Company Registrar of Paris under the number B 487 492 654.
The Complainant has registered the following trade marks:
registered as an International Registration (registration no. 948536) for clothing, footwear (except orthopedic footwear), headgear in class 25 on November 14, 2007.
registered in the United States of America (registration no. 3253429) for canvas shoes; leather shoes; training shoes in class 25 on June 19, 2007.
registered in Canada (registration no. TMA 735034) for canvas shoes, vulcanized shoes, sneakers, sport shoes in class 25 on February 24, 2009.
registered as a Community Trade Mark (registration No. 006362669) for clothing, footwear (except orthopedic) and headgear in class 25 on December 4, 2008.
The disputed domain name was registered on May 1, 2010. 5. Parties’ Contentions A. Complainant
The Complainant is a French company which creates, manufactures and sells shoes, and notably sneakers under the trade mark FEIYUE. The Complainant’s mark is intensively used, notably for shoes in canvas and leather which enjoy considerable success worldwide, particularly in France. The Complainant is the owner of the domain name registered on November 18, 2005, which includes the mark FEIYUE, and which is used by the Complainant in connection with its activities, particularly to promote and sell FEIYUE branded shoes via its online shop. The disputed domain name which is used to offer for sale and to sell sneakers, includes the word ”feiyue”, which constitutes the main element of the Complainant’s earlier trade mark registrations. This is followed by the generic word ‘chaussure’, which is the French translation for ’shoes’ and which describes the products promoted on the website. The addition of the word ‘chaussure’, which describes the goods designated by the Complainant’s trade mark and sold by both, the Respondent and the Complainant, not only fails to differentiate the disputed domain name from the Complainant’s FEIYUE trade mark, but exacerbates the likelihood of confusion for the consumer who is inclined to believe that the website has been somehow authorized by the Complainant. The addition of a generic or highly descriptive words and/or the addition of the gTLD ".com", which is technically required to operate the domain name, to a registered trademark is insufficient to distinguish the disputed domain name from the Complainant's trade mark since it does not avoid the confusion between the disputed domain name and the trade mark. The likelihood of confusion is further aggravated by the fact that the website “www.” reproduces the Complainant’s trade mark and the contents of the website “www.” run by the Complainant particularly, the photos of the products which are offered for sale together with the particulars of the points of sale of goods sold by the Complainant and offers for sale FEIYUE branded shoes without the authorization of the Complainant. The products offered for sale on the “www.” website are identical to the ones designated by the Complainant’s FEIYUE trade mark and intensively sold by the Complainant. Furthermore, the website “www.” is in French and therefore directed to consumers in countries where the Complainant’s trademarks are registered and used. Placed in first position and followed by the descriptive word “chaussure” will lead the consumers' attention to be most concentrated on the highly distinctive word “feiyue”. As a consequence, the consumers could legitimately and mistakenly consider that the goods sold on the “www.” website originate from the Complainant, or at least that the Respondent is authorized to sell those goods by the Complainant, which is not the case. The Complainant became aware of the registration and use of the disputed domain name when some consumers contacted the Complainant further to their purchase of shoes on the “www.” website, believing that they had bought the products on an official website owned by the Complainant, and encountering some problems with the delivery of their shoes. The disputed domain name is thus confusingly similar to the Complainant’s FEIYUE trade mark.
The Respondent's name does not include the word ‘feiyuechaussure’ or ‘feiyue’. According to online databases, the Respondent is not the owner of any European, Canadian, or United States trade marks for FEIYUE or trade marks containing the word FEIYUE. The Respondent does not have any relationship with the Complainant and is not authorized by the Complainant to use its trade mark, particularly as a domain name. The Respondent is not commonly known under the name FEIYUECHAUSSURE or FEIYUE. The Respondent is not making a "legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark at issue" within the meaning of the Policy. On the contrary, the disputed domain name leads the consumer to a website which promotes shoes on which the FEIYUE trade mark is affixed without the authorization of the Complainant. The use of the Complainant's trade marks, without its authorization, by the Respondent in connection with identical or similar goods to those provided by the Complainant would violate the exclusive trade mark rights of the Complainant and as a consequence does not constitute a legitimate noncommercial or fair use of the disputed domain name. The Respondent does not use the disputed domain name in relation to a "bona fide offering of goods". The use of the FElYUE trade mark as a domain name and the promotion of goods infringing the Complainant's trade mark on the related website are only aimed to harm the Complainant's reputation for the Respondent's own commercial benefit. Such use of the disputed domain name including the Complainant's trade mark for commercial purposes does not constitute a bone fide use.
The Respondent uses the FEIYUE trade mark as a domain name and promotes the sale of FEIYUE branded sneakers which directly compete with the goods sold by the Complainant. The Complainant has never authorized the Respondent to use its trade mark in any manner whatsoever. The Complainant has never authorized the Respondent to register the disputed domain name, nor to sell goods similar to the ones sold by the Complainant particularly on its website “www.” under its trade mark. The use of the Complainant's FEIYUE trade mark by the Respondent as a domain name and on the website is evidence of the Respondent's knowledge of the FEIYUE trade mark at the time of the registration of the disputed domain name on May 1, 2010. The Respondent’s website is indeed in French and therefore intentionally directed to consumers in countries where Feiyue owns and uses its trademarks. This unauthorized registration and use of FEIYUE trade mark has obviously been done to "to attract for commercial gain, Internet users to the Respondent’s 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 the Respondent's web site or location or of a product or service on the Respondent's web site or location" within the meaning of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order for the domain name to be transferred to it:
- The domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
As the Respondent did not submit any response, the Panel will, in accordance with paragraph 5(e) of the Rules, decide this dispute based on the Complaint. A. Identical or Confusingly Similar
The Complainant has registrations for the FEIYUE trade mark in many jurisdictions in class 25 for, inter alia, footwear and shoes. The Complainant has intensively used its FEIYUE trade mark for its shoe products worldwide. The Complainant also has an online shop which promotes and sells its shoe products. The disputed domain name incorporates the Complainant’s FEIYUE trade mark in its entirety with the addition of the word “chaussure” and the gTLD “.com”. The word “chaussure” is the French translation for “shoes” and thus is a generic and a descriptive word. The addition of the word “chaussure”, which is descriptive of the Complainant’s goods, will not diminish the confusing similarity but heighten it as the Complainant is a French company and its products are well recognized in France. Such an addition merely serves to enhance the disputed domain name’s confusing similarity to the trade mark. This is lent weight by the following decisions:
- In Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. A Domain Privacy/Transure Enterprise Ltd,WIPO Case No. D2009-1253, the disputed domain name was found to be confusingly similar to the DR. MARTENS trade mark
- In NIKE, Inc v. Bestinfo,WIPO Case No. D2002-0543, the disputed domain name was found to be confusingly similar to the NIKE trade mark
- In Hugo Boss A.G. v. Robert F. Walsh,WIPO Case No. D2000-1135, the disputed domain names , and were found to be confusingly similar to the BOSS, HUGO BOSS and BOSS HUGO BOSS trade marks
- In FEIYUE v. Lhk Gallery,WIPO Case No. D2009-1070, the disputed domain name was found to be confusingly similar to the FEIYUE trade mark
- In ECCO Sko A/S v. He Shaonan, Lin Zhiyuan, Qinghuo Ou,WIPO Case No. D2010-0650, the disputed domain names , were found to be confusingly similar to the ECCO trade mark
The Panel agrees with the above decisions and concludes that the addition of the “chaussure” in the disputed domain name will not prevent the disputed domain name from being confusingly similar to the Complainant’s FEIYUE trade mark.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made allegations against the Respondent as to its lack of rights and legitimate interests. The Respondent’s name does not include the words “feiyuechaussure” or “feiyue” and the Respondent is not commonly known as “feiyuechaussure” or “feiyue”. Online trade mark searches carried out by the Complainant revealed no results of any trade marks containing the word “feiyue” registered under the name of the Respondent. The Complainant has no relationship with the Respondent, and the Complainant has not granted any license or authorization to the Respondent to use the FEIYUE trade mark as a domain name. The disputed domain name resolves to a website which offers shoes with the FEIYUE trade mark for sale. Such use and purpose of the disputed domain name without the authorization of the bona fide trade mark owner shows that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name or a bona fide offering of goods and services. All these allegations have gone unchallenged by the Respondent, who has chosen not to submit a response. Thus, the Panel finds from the submissions in the Complaint that the Respondent is not making use of the disputed domain name for a bona fide offering of goods and services and a legitimate noncommercial or fair use of the disputed domain name.
In F. Hoffmann-La Roche AG v. Transliner Consultants,WIPO Case No. D2007-1359, the panel held:
“The Complainant has never authorized the Respondent to utilize its mark TAMIFLU or any mark confusingly similar thereto in conjunction with the goods with which the Complainant uses that mark, nor does the Complainant apparently have any relationship or association whatsoever with the Respondent. As such, any use to which the Respondent were to put the mark TAMIFLU or one confusingly similar thereto in connection with the identical or similar goods to those currently provided by the Complainant would violate the exclusive trademark rights now residing with the Complainant.”
The Panel agrees with the above decision and finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The disputed domain name resolves to a website which offers for sale, shoes, in direct competition with the Complainant. The Respondent has not only used the Complainant’s FEIYUE trade mark in forming the disputed domain name but has also used it on the “www.” website wherein the goods sold on the website are affixed with the Complainant’s FEIYUE word mark as well as the device mark which has been registered in many jurisdictions before the creation of the disputed domain name. The fact that the domain name incorporates the Complainant’s trade mark in its entirety with the word “chaussure” which is the French translation of the generic and descriptive word “shoes” and the disputed domain name resolves to a website which offers goods in competition with the Complainant’s goods shows that the Respondent is well aware of the Complainant and its business. The Complainant has also alleged that there have been actual instances of confusion and customer diversion, which factual claim the Respondent has not contested. The Panel is satisfied that the Respondent’s registration and use of the disputed domain name thus attracts Internet users to the “www.” website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Such registration and use of the disputed domain name constitutes registration and use in bad faith within the meaning of the Policy.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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 transferred to the Complainant.
Hariram Jayaram
Sole Panelist
Dated: October 27, 2010
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