The Complainant is FABI SPA of Monte San Giusto, Italy, represented by Inpat & Law, Italy.
The Respondent is wenzhoushifabixieyeyouxiangongsi of Wenzhou, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2012. On October 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 16, 2012 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 amendment to the Complaint on October 17, 2012. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 17, 2012. On October 16, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceedings. On October 17, 2012, the Complainant confirmed its request that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings by the specified due date.
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 October 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2012.
The Center appointed Jonathan Agmon as the sole panelist in this matter on November 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. 4. Factual Background
The Complainant, FABI SPA, is an Italian company that engages in the field of shoes and was founded in 1965.
The Complainant's products are distributed worldwide under the mark FABI.
The Complainant is the owner of multiple worldwide trademark registrations for the mark FABI. For example: International trademark registration No. 675174 – FABI (logo), with the registration date of June 10, 1997; International trademark registration No. 1111107 – FABI, with the registration date of August 16, 2011; Community trademark registration No. 002063881 – FABI (logo), with the registration date of August 19, 2005; Community trademark registration No. 002553980 – FABI, with the registration date of April 25, 2005; United States of America trademark registration No. 4195825 – FABI, with the registration date of August 21, 2012 and many others.
The Complainant and its affiliates have also developed a presence on the Internet and are the owners of numerous domain names that consist of the FABI mark. For example: , , , , , and many others.
The disputed domain name was created on August 4, 2011.
The disputed domain name resolves to a website that promotes footwear products. 5. Parties’ Contentions A. Complainant
The Complainant argues that it was the winner of "China Trader Award 2010" that was organized by Cathay Pacific Airways because of its business activities developed in China.
The Complainant further argues that the disputed domain name is confusingly similar to the Complainant's FABI trademark. The Complainant contends that the additional word "shoes" does not avoid confusing similarity.
The Complainant further argues that the Respondent is not known by the disputed domain name.
The Complainant further argues it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the FABI trademark in any manner.
The Complainant further argues that the Respondent registered the disputed domain name to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s mark FABI as to the source, sponsorship, affiliation of the disputed domain name.
The Complainant further argues that the Respondent was aware of the Complainant’s existence and of the FABI trademark and products at the time the Respondent registered the disputed domain name.
The Complainant further argues that on May 31, 2012 the Complainant sent a cease and desist letter, through its agents in China, to the address that is displayed on the website under the disputed domain name. The Complainant contends that no one has replied.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceedings
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by 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, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of proceedings should be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of proceedings:
a) The disputed domain name incorporates the English word "shoes";
b) The Respondent is operating a website under the disputed domain name, which promotes footwear, while using the English language.
c) The disputed domain name consists of English letters, rather than Chinese characters;
d) The Respondent did not object to the Complainant’s request that English be the language of proceedings.
Upon considering the above, the Panel decides to render the Complainant’s request and rules that English be the language of proceedings. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant is the owner of multiple worldwide trademark registrations for the mark FABI. For example: International trademark registration No. 675174 – FABI (logo), with the registration date of June 10, 1997; International trademark registration No. 1111107 – FABI, with the registration date of August 16, 2011; Community trademark registration No. 002063881 – FABI (logo), with the registration date of August 19, 2005; Community trademark registration No. 002553980 – FABI, with the registration date of April 25, 2005; United States of America trademark registration No. 4195825 – FABI, with the registration date of August 21, 2012 and many others.
The disputed domain name differs from the registered FABI trademark by the additional hyphen, the word “shoes” and the additional gTLD “.com”.
The disputed domain name integrates the Complainant’s FABI trademark in its entirety, as a dominant element.
The additional word “shoes” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s FABI trademark, as it is a common term directly relating to the Complainant’s business.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
Indeed, “[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
Also, the use of a hyphen in the disputed domain name cannot avoid a finding of confusing similarity (see Fort Knox National Company v. Ekaterina Phillipova,WIPO Case No. D2004-0281).
The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. (See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the FABI trademark, or a variation thereof.
The Respondent had not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the FABI trademark at least since the year 1997. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.
The disputed domain name leads Internet users to a website that engages in promoting footwear products that are similar to the Complainant's products.
The Respondent’s use of the disputed domain name, which promotes goods similar or identical to the goods being offered by the Complainant is clear evidence, in the Panel’s view, that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making of its trademark and intended to trade off the value of these. The Respondent’s actions therefore constitute bad faith. (See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”).
The Panel also notes that the Respondent failed to respond to the cease and desist letter that was sent by the Complainant. It is well established and accepted that failure to respond to cease and desist letters without legitimate reason may be is evidence of bad faith registration and use (Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022).
In light of the Respondent's use of a confusingly similar disputed domain name and the Respondent's lack of response to the Complainant's cease and desist letter, and in view of the above the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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.
Jonathan Agmon
Sole Panelist
Dated: December 5, 2012
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