The Complainant is Feiyue of France, represented by Cabinet Gilbey Delorey, France.
The Respondent is Zhangg San of 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 July 13, 2011. On July 13, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On July 14, 2011, 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 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2011.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on August 11, 2011. 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, Feiyue of France, is a French simplified joint-stock company (société par actions simplifiées) which creates, manufactures and sells shoes in canvas.
The Complainant owns several combined trademark registrations whose primary element consists of the word FEIYUE, such as:
- IR n° 948536, that was registered on November 14, 2007 under class 25 of the Nice classification;
- Canadian combined trademark n° TM735034, that was registered on February 24, 2009 under class 25 of the Nice classification with a priority date as of July 31, 2006;
- Singaporean registration n° T0719470J, that was registered on January 25, 2008 under class 25 of the Nice classification, with a priority date as of September 28, 2007;
- CTM registration n° 006362269, that was registered on December 4, 2008 under class 25 of the Nice classification, with a priority date as of November 2, 2007.
The Complainant also carries out its activities online under the domain name , that was registered on November 18, 2005.
The Respondent registered on June 25, 2011. The website attached to the domain name, entirely written in French, is used to sell sneakers bearing the trademark FEIYUE. 5. Parties’ Contentions A. Complainant
First, the Complainant contends that the domain name is confusingly similar to the trademark FEIYUE. The word FEIYUE constitutes the only distinctive word of the trademark, and the addition of the word , which is the French translation for “shoes”, clearly appears as merely descriptive of the activities carried out by the Complainant, for which its trademarks have all been registered.
Secondly, the Complainant asserts that the Respondent has no rights or legitimate interest in respect of the domain name. Respondent’s name does neither include the word nor . He is not the owner of any trademark the word FEIYUE and has never been authorized nor licensed by the Complainant to use or register any of these trademarks as a domain name.
Far from using the domain name in a legitimate way within the meaning of the policy, the Respondent has reproduced the combined trademarks on his website and the content of , namely the pictures of the products offered for sale as well as the webpage related to the points of sale. Added to the fact that the website is written in French in its entirety, all these circumstances underline the lack of rights or interest from Respondent.
As a result, the Complainant concludes that the domain name has been registered and is being used in bad faith, all the more than the Respondent has already been condemned in the past by prior Panels to transfer domain names consisting of the trademarks FEIYUE in favor of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) The Respondent has no right or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant proves to be the holder of several trademarks consisting as dominating element of the word FEIYUE.
It is widely agreed upon that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purposes of the Policy (see Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works,WIPO Case No. D2005-0941 and Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358).
Such happens to be the case here. The disputed domain name incorporates the trademark FEIYUE in its entirety, and merely adds the word chaussures which, as rightfully alleged by the Complainant, is the French translation of “shoes”.
As pointed out by prior Panels in cases involving the trademarks FEIYUE, the addition of a generic or highly descriptive words to a registered trademark is insufficient to exclude a likelihood of confusion (among others: FEIYUE v. Ren qijian,WIPO Case No. D2010-0023, related to the domain name ; FEIYUE v. Ren qijian,WIPO Case No. D2010-1151, related to the domain names , , , and ; FEIYUE v. FeiYue Sneaker Ltd.,WIPO Case No. D2010-1506 related to the domain name ; FEIYUE v. Qijian Ren,WIPO Case No. D2010-1505 related to the domain name ; FEIYUE v. Zhong Hua,WIPO Case No. D2010-1496 related to the domain name ).
As a result, the Panel finds that the Policy, paragraph 4(a)(i) has been satisfied. B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task.” Thus, in this decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent panels developed a consensual view that it was deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(b)(ii) of the Policy (see e.g. paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).
In the present case, the Panel finds that the Complainant has made a prima facie case showing that the Respondent has no right or legitimate interest in the disputed domain name. It is therefore the Respondent’s burden to demonstrate rights or legitimate interests by showing, among other circumstances, any of the following elements:
(i) Before any notice to it of the dispute, he used or made 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) The respondent is commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the case at hand, the Respondent did not respond to the Complainant’s allegations and therefore did not rebut the Complainant’s prima facie case, failing to invoke any circumstances that could demonstrate any rights or legitimate interests in the disputed domain name.
The Respondent’s lack of rights or legitimate interests in the domain name further results from the content of the website attached to the domain name. As convincingly pointed out by the Complainant, the Respondent has reproduced the official website to a large extent, in particular as to the products offered for sale. The unauthorized reproduction of third parties’ trademarks on a website for identical or similar products whose authenticity is more than doubtful clearly amounts to a trademark infringement (see, among others: 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). Such decisions are in line with another line of decisions according to which the use of third parties’ trademarks for commercial purposes do not constitute a bona fide use of these terms (Hoffmann-LaRoche AS v. Transliner Consultants,WIPO Case No. D2007-1359; National Football League v. Peter Blusher d/b/a BluTech Tickets,WIPO Case No. D2007-1074).
Consequently, in light of the above, the Panel considers the Policy, paragraph 4(a)(ii) to be fulfilled. C. Registered and Used in Bad Faith
For a complaint to succeed, a Panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
To have registered the disputed domain name in bad faith, the Respondent first must have been aware of the existence of the Complaint.
In that regard, the Panel first notes that the Complainant has been using the domain name since 2005, and that its trademarks consisting of the word FEIYUE have been registered between 2006 and 2008, i.e. prior to the registration of the disputed domain name in 2011.
In the present case, there is no doubt in the Panel’s opinion that the Respondent was perfectly aware of the existence of the Complainant’s trademarks when he registered the litigated domain name. One cannot explain why an individual located in China would choose as domain name two words consisting for the one of a third party trademark and for the other of a descriptive word, written in French, the primary market of the Complainant, to describe the very nature of the activities carried out by the Complainant. Bad faith becomes obvious when one takes a look at the content of the website, which reproduces to a large extent Complainant’s website, to offer products labeled under the trademark FEIYUE whose authenticity appears to be more than doubtful. Should the Respondent have been an official retailer, it would have been up to him to come forward with evidence substantiating such authorization; absent any explanation, and considering Complainant’s assertions that such an authorization has never been granted, the Panel is convinced that the domain name has been registered and is being used in bad faith. Such an opinion is strengthened by the fact that, earlier this year, the very same Respondent has already been condemned to transfer domain names consisting of the domain names and in the Complainant’s favor (FEIYUE v. Zhangg San,WIPO Case No. D2011-0695).
For these reasons, the Panel finds that the Respondent both registered and is using the disputed domain names in bad faith and that the Complainant has therefore made out the third element of its case. 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 domain name be transferred to the Complainant.
Philippe Gilliéron
Sole Panelist
Dated: 17 August 2011
Full & Egal Universal Law Academy