The Complainant is Feiyue of Paris, France, represented by Cabinet Gilbey Delorey, France.
The Respondent is Junqiang Chen of Guangdong, 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 22, 2011. On July 22, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On July 24, 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 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2011.
The Center appointed Francine Tan as the sole panelist in this matter on August 23, 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 is a French company which manufactures and sells shoes under the trade mark FEIYUE through its various distribution channels. The Complainant claims to own numerous trade marks and submitted evidence of its International, United States, Canadian, European and Singaporean trade mark registrations for a word and device combination mark, , in respect of footwear. Footwear, in particular, canvas shoes sold under the Complainant’s mark have been featured in many fashion magazines, and the Complainant asserts its brand of shoes has been very successful worldwide.
The Complainant owns the domain name which is used in relation to its website from which FEIYUE-branded shoes are sold and promoted. The domain name was registered on November 18, 2005.
The disputed domain name was registered on June 25, 2011. The said website is used for the online sales of shoes. The Complainant submitted evidence that its trade marks and content of the Complainant’s website were reproduced on the Respondent’s website. 5. Parties’ Contentions A. Complainant
The Complainant asserts that:
(1) The disputed domain name is confusingly similar to its FEIYUE trade mark as it incorporates the mark and is combined with the generic words “shoes” and “outlet”. The word “shoes” describes the products offered for sale on the Respondent’s website and “outlet” is a term commonly used in commerce as referring to a place of business for the retail of goods.
Numerous administrative decisions rendered under the UDRP have held that the addition of a generic
or descriptive word(s) to a trade mark in respect of which a complainant has rights, is insufficient to distinguish the domain name from the complainant’s trade mark. In support of its submission on this point, reference was made to numerous precedent cases including FEIYUE v. Renqijian /jet.renqj,WIPO Case No. D2010-1651; Feiyue v.Long Wang,WIPO Case No. D2010-1521; FEIYUE v. Ren Qijian, WIPO Case No. D2010-0023; and FEIYUE v. FeiYue Sneaker LTD./HostM Inc.,WIPO Case No. D2010-1506.
The addition of the words “shoes” and “oulet” in the disputed domain name not only fails to differentiate the disputed domain name from the Complainant’s trade mark FEIYUE, it in fact exacerbates the likelihood of confusion as consumers would be misled into believing that the Respondent’s website is authorized by the Complainant.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name:
(a) From what the Complainant has found according to online databases, the Respondent is not the owner of any International, European, Canadian and United States trade mark registrations for the FEIYUE mark or any mark containing the word “Feiyue”.
(b) The Respondent does not have any relationship with the Complainant and is not authorized by the Complainant to use its trade mark, in particular as a domain name.
(c) The Respondent is not commonly known under the name “Feiyue”.
(d) The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark at issue, within the meaning of the Policy.
(e) The Respondent is not using the disputed domain name in relation to a bona fide offering of goods.
(3) The disputed domain name was registered and is being used in bad faith. The Respondent uses the Complainant’s FEIYUE trade mark not only in the disputed domain name but also on his website to promote and sell shoes, under the brand FEIYUE, which are similar to the shoes sold by the Complainant. This shows the Respondent’s knowledge of the Complainant and of the FEIYUE trade mark. This unauthorized use of the Complainant’s trade mark was for the obvious purpose of attracting “for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website 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 all of the following:
(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 has proven it has rights in the trade mark FEIYUE.
The Panel accepts the Complainant’s submission of confusing similarity between the disputed domain name and the Complainant’s trade mark, which is consistent with the established view of WIPO panelists that:
“The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name. The principal exception that some panels have found in certain cases is where a trademark (especially one of a descriptive nature) is incorporated or subsumed within other words or textual elements so that the trademark is not clearly the dominant component of the domain name.” (Extract of paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”).
In this case, the dominant or principal component of the disputed domain name is the trade mark FEIYUE. The words “shoes” and “outlet” do not at all serve to eliminate confusion to consumers but rather, add to it.
In the circumstances, the Panel finds that the Complainant has satisfied the first condition under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel finds that the Complainant has satisfied its burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence that remotely suggests that the Respondent has any rights or legitimate interests, nor any evidence that he is known by the name “Feiyue”. The Complainant has strongly denied any relationship with the Respondent and the evidence on file indicates that the latter had blatantly copied content from the Complainant’s website and given the false impression of association with the Complainant by the use of the Complainant’s FEIYUE/ trade mark.
Paragraph 2.1 of the WIPO Overview 2.0 states that “once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
The Panel notes that the following statement appears on the page “About Us” on the Respondent’s website: “Feiyue-Shoes-O is operated by Shanghai Dafu Rubber Factory which is the original owner of ‘Feiyue’ Brand”. Notwithstanding such a claim on the Respondent’s website, the Respondent has not participated in these proceedings and failed to refute the Complainant’s claims.
In the absence of any response or other contrary evidence from the Respondent which would prove he has rights or legitimate interests, the Panel concludes that the second condition under paragraph 4(a) of the Policy has been met. C. Registered and Used in Bad Faith
On the basis of the evidence presented, the Panel is persuaded that the disputed domain name was registered and is being used in bad faith. The Respondent obviously knew of the Complainant and of its trade mark FEIYUE/ . The Panel is also persuaded that the subsequent use of the disputed domain name was for the purposes of attracting Internet users by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the website, for financial gain. The manner of use of the Respondent’s website also indicates bad faith use. The Respondent’s website has been used to pass off the business as that of, or licensed by, the Complainant, with its prominent use of the Complainant’s FEIYUE/ mark and the flagrant copying of materials (e.g. photographs) from the Complainant’s website.
In the circumstances, the Panel finds that the Complainant has satisfied the third condition under paragraph 4(a) of the Policy. 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 be transferred to the Complainant.
Francine Tan
Sole Panelist
Dated: August 25, 2011
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