The Complainant is FEIYUE of Paris, France, represented by Gilbey Delorey, France.
The Respondent is renqijian / jet.renqj of Beijing, the People’s Republic of China. 2. The Domain Names and Registrar
The disputed domain names , , , , are registered with HiChina Zhicheng Technology Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2010. On September 30, 2010, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain names. On October 8, 2010, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 8, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 14, 2010.
The Center verified that the Complaint together with the amended 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”).
Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise. According to information from the concerned Registrar, the language of the registration agreement for the disputed domain name is Chinese. On October 8, 2010, the Center transmitted by email to the parties in both Chinese and English a communication regarding the language of proceedings. On October 12, 2010, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. The Panel notes that the disputed domain name resolves to a website with content in English, so it appears that the Respondent is familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties have been transmitted in both Chinese and English. Given the provided submissions and circumstances of this case, the Panel chooses at its discretion to render the decision in English.
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 October 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2010.
The Center appointed Linda Chang as the sole panelist in this matter on November 8, 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.
Due to special circumstances, the Panel has extended the decision due date. 4. Factual Background
The Complainant is a French company which is renowned internationally for its shoes in canvas. The Complainant owns a number of international trademark registrations for the trademark FEIYUE in class 25 in numerous jurisdictions. The official domain name of the Complainant is .
The Respondent registered disputed domain names on May 9, 2010, on May 24, 2010, and , , , on June 25, 2010. The disputed domain names are used in connection with websites selling shoes branded FEIYUE. 5. Parties’ Contentions A. Complainant
The Disputed Domain Names Are Confusingly Similar to the Complainant’s Trademark
The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s trademark to which the Complainant has rights.
The Complainant states that it owns several registrations for the trademark FEIYUE in numerous countries all over the world.
The Complainant asserts that the disputed domain names , , , , incorporate the Complainant’s trademark FEIYUE in full, deviates from the mark only with the addition of the generic word with no distinguishing power in the context of the domain names “chaussures” (meaning ‘shoes’), “footwear”, “sneakers”, “ shoes”, “China”, thus establishing confusing similarity.
Citing precedents: Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662; ECCO Sko A/S v. He Shaonan, Lin Zhiyuan, Qinghuo Ou,WIPO Case No. D2010-0650; Dr.Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. A Domain Privacy / Transure Eterprise Ltd.,WIPO Case No. D2009-1253; NIKE, Inc. v. Bestinfo,WIPO Case No. D2002-0543; Hugo Boss A.G. v. Robert F. Walsh, WIPO Case No.D2000-1135; Ticketmaster v. Ren Chenhua,WIPO Case No. D2008-1519; Casio Keisanki Kabushiki Kaisha dba Casio Computer Co., Ltd v. Taizhou Kaixuan Entertainment Co., Ltd.,WIPO Case No. D2005-0870; Wedgwood Ltd. Corp. v. RegisterF, Domain Registration,WIPO Case No. D2005-0876; FEIYUE v. Ren qijian,WIPO Case No. D2010-0023, the Complainant contends that the addition of generic wordings to a registered trademark is insufficient to distinguish the disputes domain names from the Complainant’s trademark. Citing the precedent FEIYUE v. Lhk Gallery,WIPO Case No. D2009-1070, the Complainant further alleges that the addition of the wordings “chaussures”, “footwear”, “sneakers”, “ shoes”, “China” does not negate the similarity but increases the risk of confusion for the consumers, as the words refer to the nature of the goods distinguished by the trademark of the Complainant thus it is very likely that the consumers would believe that the websites at the disputed domain names represent the Complainant’s Internet store, or an affiliated or associated business.
In addition, the Complainant asserts that the reproduction of the content of the Complainant’s official website and the sale of sneakers branded FEIYUE on the websites connected to the disputed domains without authorization of the trademark owner further contributes to confusing similarity.
The Respondent has No Rights or Legitimate Interests in the Disputed Domain Names
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names on the basis of the following reasons:
Firstly, the disputed domain names do not correspond to a trademark registered in the name of the Respondent.
Secondly, the Complainant states that it has never licensed or otherwise permitted the Respondent to use its trademark, nor to apply for domain names incorporating its trademark, nor to sell goods under its trademark similar to the ones sold by the Complainant in particular on its official website. Therefore, there is no relationship whatsoever between the Complainant and the Respondent.
Thirdly, there is no evidence of any fair or non-commercial or bona fide uses of the disputed domain names, citing the precedents: F. Hoffmann-La Roche AG v. Transliner Consultants,WIPO Case No. D2007-1359; ECCO Sko A/S v. He Shaonan, Lin Zhiyuan, Qinghuo Ou,WIPO Case No. D2010-0650; GoD, Inc., v. GoDaddysD, Clark Signs, Graham Clark,WIPO Case No. D2007-0303; National Football League v. Peter Blusher d/b/a BluTech Tickets,WIPO Case No. D2007-1064.
Registered and Used in Bad Faith
The Complainant contends that the disputed domain names were registered and used in bad faith on the basis of the following reasons:
Firstly, the use of the trademark FEIYUE by the Respondent and the promotion of goods bearing the trademark FEIYUE using the disputed domain names evidence the Respondent’s knowledge of the existence of the Complainant’s trademark FEIYUE prior to registering the disputed domain names.
Secondly, the Complainant argues that the Respondent uses the disputed domain names in bad faith because the unauthorized use of the Complainant’s trademark evidence the Respondent’s intentional attempt to attract present and potential new Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark and its official website.
Thirdly, the Complainant asserts that the Respondent is using the websites connected with the disputed domain names to sell shoes branded FEIYUE that are similar to the shoes sold by the Complainant thus harming the Complainant’s reputation and further constitutes bad faith in use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
There being no Response, under paragraphs 5(e) and 14(a) of the Rules, the Panel, in the absence of exceptional circumstances, decides the dispute on the basis of the Complaint.
Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceeding:
(A) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(B) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(C) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is the registered owner of the trademark FEIYUE in many countries around the world. The Complainant has acquired substantial goodwill in this trademark.
Compared to the Complainant’s trademark, the disputed domain names completely reproduce the trademark with the only difference being addition of generic words “chaussures”, “footwear”, “sneakers”, “shoes”, “China”.
Pursuant to the principle established by numerous prior decisions, for example, FEIYUE v. Luk Gallery,WIPO Case No. D2009-1070, the Panel holds that the addition of a generic term does not negate the confusing similarity between the disputed domain names and the Complainant’s trademark. On the contrary, the aforesaid terms are not only generic but also associated with the nature of products offered by the Complainant and the Respondent.
Therefore, the Panel finds that the disputed domain names are clearly, and intentionally, confusingly similar to the Complainant’s trademarks. Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interest in the disputed domain names. There is nothing in the record to suggest the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services, to suggest that it has been commonly known by the disputed domain names, or to suggest that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names. Therefore, the burden of production shifts to the Respondent to prove otherwise. However, the Respondent has not responded to the Complainant’s claims.
The Complainant contends that the goods being offered for sale on the websites connected to the disputed domain names may be counterfeits of the Complainant’s products. Given inter alia that there is no Response, citing Vibram S.p.A .v. Dai Xiu Mei,WIPO Case No. D2010-0846, the Panel considers it unnecessary to decide if the products on sale are counterfeit in this case.
The Panel bases its decision on the information and evidence submitted before it, and given the circumstances, finds it more likely then not that the Respondent does not have any rights or legitimate interests in the disputed domain names.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant has developed a reputation for the trademark FEIYUE in the footwear area and the Complainant’s products under this trademark are sold worldwide. Moreover, the Respondent’s unauthorized sale of products (shoes) branded FEIYUE (counterfeit or otherwise) very strongly suggests that the Respondent knew of the Complainant’s trademarks prior to registration. Given also that the Respondent has not responded, it is reasonable to infer that the aim of the registration of the disputed domain names is to exploit consumer confusion for commercial gain.
In addition, the Respondent’s lack of rights or legitimate interests in the name FEIYUE as well as the fact that the disputed domain names have been used to sell shoes that are similar to the Complainant’s products without authorization, the Panel is convinced that the purpose of the Respondent’s registration of the domain names is to capitalize on the goodwill of the trademark by merely registering the trademark as domain names to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating this consumer confusion on the source, sponsorship, affiliation or endorsement of its websites. This behavior constitutes bad faith registration and use of the domain names.
The Panel finds that the Complainant has established that the Respondent has registered and used the disputed domain names in bad faith and has met the requirements of 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 names , , , , be transferred to the Complainant.
Linda Chang
Sole Panelist
Date: December 14, 2010
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