The Complainant is Frey Wille GmbH & Co. KG of Vienna, Austria, represented by Schönherr Rechtsanwälte GmbH, Austria.
The Respondent is Steve Haiter of Xiamen, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with 1API GmbH. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2012. On July 17, 2012, the Center transmitted by email to 1API GmbH a request for registrar verification in connection with the disputed domain name. On July 18, 2012, 1API GmbH transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 20, 2012.
The Center verified that the Complaint together with the amendment to 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 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2012.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on August 22, 2012. 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.
The Panel determines that, pursuant to paragraph 11(a) of the Rules, the language of the proceeding is English, as requested by the Complainant, i.e. one of the two languages of the Registration Agreement with the concerned Registrar, 1API GmbH, a copy of which has been provided by the Complainant. 4. Factual Background
The Complainant is a famous manufacturer and distributor of artistic enameled jewelry and branded accessories, headquartered in Vienna, Austria. The Complainant sells its products directly or through exclusive distributors in 87 boutiques in Europe, the Middle East, the United States of America and Asia, including eleven in China where the Respondent resides.
The Complainant is the proprietor of several registered trademarks containing the mark FREY WILLE, such as International Registration Trademark FREY WILLE, No. 776831 (priority under Paris Convention on December 3, 2001) and International Registration Trademark FREY WILLE, No. 824396 (priority under Paris Convention on August 25, 2003), registered in many countries around the world. The mark FREY WILLE is based on the names of Michaela Frey, the founder of the company, and Dr. Friedrich Wille, the current owner of the company.
In addition, the Complainant has registered and is using the mark FREY WILLE as a domain name and is thus the proprietor of a large number of domain names containing the mark FREY WILLE, both under generic and country-code Top Level Domains, such as , , , , , and .
The Complainant's marketing policy is not to sell its products online.
The disputed domain name was created on July 20, 2011. 5. Parties’ Contentions A. Complainant
(i) The Complainant submits that the disputed domain name reproduces the mark FREY WILLE in which the Complainant has rights, and is confusingly similar to that mark insofar as the disputed domain name contains that mark in its entirety. The Complainant also asserts that the addition of the “store” generic suffix does not serve to distinguish the disputed domain name from the mark FREY WILLE.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it has not licensed or otherwise permitted the Respondent to use any of its trademarks or any variations thereof, or to register or use any domain name incorporating any of those marks or any variations thereof. The Complainant also asserts that the Respondent is not commonly known by the disputed domain name.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. It alleges that the Respondent has registered the disputed domain name to create the misleading impression that his business is in some way associated with the Complainant. The Complainant further submits that by registering the disputed domain name, the Respondent sought to exploit for commercial gain the fame and reputation of the Complainant's mark FREY WILLE, and that by using the disputed domain name, the Respondent has sowed confusion because any Internet user interested in the Complainant and its products is likely to assume that the Complainant is associated with the website identified by the disputed domain name.
Moreover, by intentionally attempting to attract Internet users to the Respondent’s website for commercial gain and by creating a deliberate confusion and/or deception with the Complainant’s mark as to the sponsorship or endorsement of the Respondent’s website, the Respondent is disrupting the legitimate use of the mark FREY WILLE and is misleadingly diverting Internet users, which amounts to bad faith use.
Finally, the Respondent acted in bath faith by violating the provisions of paragraph 2(a) of the Policy and using an incorrect address to register the disputed domain name.
(iv) The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Aspects
The Respondent is formally in default pursuant to paragraphs 5(e) and 14(a) of the Rules and paragraph 8(c) of the Supplemental Rules, because no Response was received from the Respondent within the time limit set by the Policy and the Rules.
Under the Rules, paragraphs 5(e) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name or other remedy have been met.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith. B. Requirements of Paragraph 4(a) of the Policy (i) Identical or Confusingly Similar
In comparing the mark FREY WILLE to the disputed domain name, it is evident that the latter, , consists solely of the mark FREY WILLE, followed by the generic term “store”. The addition of generic terms does not ordinarily serve to distinguish a domain name from registered marks. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor,WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672 and Allianz AG v. Marian Dinu,WIPO Case No. D2006-0318.
The Panel finds that the disputed domain name is confusingly similar to the mark FREY WILLE, which it incorporates in its entirety.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. (ii) Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
As previously noted, the Respondent did not submit a formal Response, thus offering no reason for selecting the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or a corresponding name or uses a corresponding name in a business.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent has (i) no rights or legitimate interests in the disputed domain name and (ii) no connection to or authorization from the Complainant.
The website associated with the disputed domain name is a commercial website, and no information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) has no rights or legitimate interests in the disputed domain name, (ii) has no connection to or authorization from the Complainant and (iii) is not commonly known by the disputed domain name.
In the circumstances, the Panel concludes that the Complainant has established the second requirement of paragraph 4(a)(ii) of the Policy. (iii) Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name similar to the Complainant’s mark.
It is established in prior UDRP decisions that the registration of a domain name confusingly similar to a famous trademark by any entity that has no relationship to that mark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Pfizer Inc. v. NA,WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin,WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Research in Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492.
At the time the disputed domain name was registered, the Complainant had widespread advertisement of its mark in the press, including in Chinese magazines. The Panel considers that the notoriety of the mark in China, where the Respondent is located, makes it highly unlikely that the Respondent would have chosen to register the disputed domain name randomly, not knowing of the Complainant’s rights in the mark prior to acquiring the disputed domain name. See Barney’s Inc. v. BNY Bulletin Board,WIPO Case No. D2000-0059; Kate Spade, L.L.C. v. Darmstadter Designs,WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028; SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092.
The Complainant has argued that the Respondent is not making (i) a bona fide use of the disputed domain name or (ii) a fair or legitimate noncommercial use of the disputed domain name, and has stressed that the commercial website offering online sale of goods, to which the disputed domain name resolves, states "Copyright © 2012 Frey Wille Online. Powered by Frey Wille", contrary to the Complainant's marketing policy not to sell its products online. In this respect, the Panel notes that many UDRP panels have held that bad faith use of a domain name by the respondent may also result from the fact its good faith use is in no way plausible (See Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.
Furthermore, the uncontradicted assertion that the Respondent knowingly provided inaccurate contact information to the Registrar when registering the disputed domain name, in violation of its representations pursuant to paragraph 2(a) of the Policy, is also evidence of bad faith. See Action Instruments, Inc. v. Technology Associates,WIPO Case No. D2003-0024.
Finally, some UDRP panels have held that in certain circumstances, persons who are registering domain names have an affirmative duty to abstain registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc v. B.B. de Boer,WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex,WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141.
The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name are in bad faith and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this 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 disputed domain name be transferred to the Complainant.
Louis B. Buchman
Sole Panelist
Dated: September 5, 2012
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