The Complainant is Frey Wille GmbH & Co KG of Wien, Austria, represented by Schonherr Rechtsanwalte GmbH, Austria.
The Respondent is Zhuang Yong of Jinjiang, Fujian, China. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , and (the "Disputed Domain Names") are 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 21, 2014. The Complainant filed subsequent amendments to the Complaint requesting to add additional domain names to the proceeding on October 27, 30 and November 3, 2014. On October 21, 28, 30 and November 4, 2014, the Center transmitted by email to the Registrar requests for registrar verification in connection with the Disputed Domain Names. On October 23, 29, 31 and November 5, 2014, the Registrar transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
On November 6, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amendments 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 in both Chinese and English, and the proceedings commenced on November 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 5, 2014.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on December 30, 2014. 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 an Austrian company producing and selling jewelry, decoration and accessories under the FREY WILLE trademark in many countries. The Complainant has produced registration information of several trademarks, inter alia: FREY WILLE, International trademark, protected in China, Registration No. 824396, class 3, 14, 16, 18, 25, registered on August 25, 2003; FREYWILLE, International trademark, protected in China, Registration No. 1047059, class 14, 16, 18, 25, registered on March 3, 2010.
According to the WhoIs data and the Registrar's verification response, the Respondent is Zhuang Yong. The Disputed Domain Names registered by the Respondent are as follows:
: registered on September 10, 2014; valid until September 10, 2015.
: registered on October 24, 2014; valid until October 24, 2015.
: registered on October 30, 2014; valid until October 30, 2015.
: registered on September 18, 2014; valid until September 18, 2015.
: registered on September 6, 2014; valid until September 6, 2015.
: registered on August 31, 2014; valid until August 31, 2015.
: registered on July 2, 2014; valid until July 2, 2015.
: registered on August 20, 2014; valid until August 20, 2015.
: registered on May 26, 2014; valid until May 26, 2015.
The Registrar confirmed, in its email of October 23, 29, 31 and November 5, 2014 that the Registration Agreements for the Disputed Domain Names are in Chinese. 5. Parties' Contentions A. Complainant
The Complainant requests the Disputed Domain Names be transferred to the Complaint based on the following grounds:
(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Disputed Domain Names integrate the FREY WILLE trademark in their entirety. In all the Disputed Domain Names, the distinctive part is "Frey Wille", which is identical with the Complainant's FREY WILLE trademark. The generic Top-Level Domains (gTLDs) ".net", ".com" and ".org" should be ignored when assessing identity or confusing similarity of the Complainant's FREY WILLE trademark. The only deviation is that the Respondent added the English letter "s", or descriptive terms "jewelry", "online" and hyphens to the Disputed Domain Names, which cannot change the fact that the Disputed Domain Names are confusingly similar with the famous brand of the Complainant.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
The Complainant has not licensed or otherwise permitted the Respondent to use the trademarks FREY WILLE, or to register or use any domain names that incorporate the FREY WILLE trademark. Moreover, there is no connection between the Respondent and the Complainant. The Respondent is not an official distributor of the Complainant to sell its goods. Therefore, the Respondent is not making any legitimate noncommercial or fair use of the Disputed Domain Names as the Respondent uses the Dispute Domain Names for the commercial purpose of selling goods labeled with the Complainant's trademark.
(iii) The Disputed Domain Names have been registered and are being used in bad faith.
The Respondent registered the Disputed Domain Names incorporating the FREY WILLE trademark and it is apparent that the intent of the Respondent is to exploit the famous reputation of the Complainant and its activities. At the time of registering the Disputed Domain Names, the Respondent could not have been unaware of the existence of the Complainant's well-known FREY WILLE trademark. Thus, the Respondent registered the Disputed Domain Names in bad faith.
The Disputed Domain Names , , and are used by the Respondent to sell goods that do not originate from the Complainant under a prominent display of the Complainant's FREY WILLE trademark. The Respondent is using the Complainant's famous trademark without permission in order to get traffic on its web portal and to obtain commercial gain. And it cannot be excluded that the Respondent registered the Disputed Domain Names for the purpose of selling them to the Complainant. The Disputed Domain Names , , , and are not being used to direct Internet users to active websites, but the result of the reverse WhoIs lookup-search shows that the Respondent engages in a pattern of conduct by registering domain names corresponding to famous trademarks. Accordingly, all of the Disputed Domain Names are being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Preliminary Procedural Issues A. Addition of Disputed Domain Names
After filing the Complaint, the Complainant submitted its first request to the Center to include as one of the Disputed Domain Names in the Complaint on October 27, 2014. Afterward, the Complainant requested to include and as Disputed Domain Names in the Complaint on October 30, 2014. Finally, the Complainant requested to include , , , and as Disputed Domain Names in the Complaint on November 3, 2014. The Complainant requested the Panel to issue a decision that all 9 Disputed Domain Names be transferred to the Complainant.
The Panel accepts the Complainant's requests to amend the Complaint and decides that , , , , , , , be incorporated into the Complaint as the Disputed Domain Names for below reasons (paragraph 4.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"); Tractor Supply Co. of Texas LP and Tractor Supply Company v. S / Troy Rushton,WIPO Case No. D2010-0795):
1. Two of the additional Disputed Domain Names , were registered shortly after filing of the Complaint.
2. All of the additional Disputed Domain Names are registered by the same Respondent.
3. The Complainant contends that the factual basis and legal grounds for the additional Disputed Domain Names remain exactly the same with respect to the Disputed Domain Name . B. Language of Proceeding
Paragraph 11(a) of the Rules provides that "[u]nless 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 Rules allow the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical applicance co. ltd.,WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceeding should not be 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). WIPO Overview 2.0 further states: "in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement". (See paragraph 4.3 of WIPO Overview 2.0).
The Registration Agreements for the Disputed Domain Names are in Chinese. Therefore, the language of the administrative proceeding should generally be Chinese, though the Panel may determine otherwise, by taking into consideration the relevant circumstances of the administrative proceeding, according to paragraph 11(a) of the Rules. In this proceeding, the Complainant requests the language of the proceeding should be English. Given the following factors, the Panel decides that the language of the proceedings shall be English.
1. The websites under the Disputed Domain Names , , , contain considerable content in English, which suggest that the websites are designed to attract Internet users from around the world rather than only Chinese users (Dolce & Gabbana S.r.l. v. Shuangzhi Lee,WIPO Case No. D2013-1103).
2. The Panel finds that the Complainant is not in a position to conduct these proceedings in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese.
3. The Center's communication to the Respondent uses both English and Chinese and has given the Respondent an opportunity to object to the Complaints' request. The Respondent did not reply to the Center. 7. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that "[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]"
The Complainant has established that it is the owner of the FREY WILLE trademark. The Complainant registered the FREY WILLE trademark in class 14, jewelry.
The Disputed Domain Names, , , , , , , , , , all incorporate the entirety of the FREY WILLE trademark. The addition of the English letter "s", the descriptive terms "jewelry", "online" and hyphens cannot distinguish the Disputed Domain Names from the Complainant's FREY WILLE trademark. Also, the gTLDs ".com" ".net" and ".com" do not serve to distinguish the Disputed Domain Names from the Complainant's FREY WILLE trademark.
The only distinctive part of the each of the Disputed Domain Names is the "Frey Wille" element, which contains the Complainant's trademark in its entirety. Furthermore, the addition of terms "jewelry" and "online" strengthen Internet user's confusion with the Complainant's business.
The Panel finds that the Disputed Domain Names are confusingly similar to the Complainant's FREY WILLE trademark so as to meet the first element's requirement under paragraph 4(a)(i) of the Policy, and the Panel can proceed to review the second and third elements under the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that "[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]"
Paragraph 4(c) of the Policy sets out the following several circumstances "[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent's] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]:
(i) before any notice to [the respondent] of the dispute, [the respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] 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 trademark or service mark at issue."
The consensus view of UDRP panels on the rights or legitimate interests of a reseller or distributor under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.3 of the WIPO Overview 2.0, whereby: "[n]ormally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. […]." (See also, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; National Association of Realtors v. John Fothergill,WIPO Case No. D2010-1284).
The Complainant has established it is the owner of the FREY WILLE trademark and confirmed that it has no connection or affiliation with the Respondent and no authorization was granted to the Respondent to use the trademark.
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names. The burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Names.
The Respondent did not submit any evidence or allegation proving that it has rights or legitimate interests as demonstrated in paragraph 4(c) of the Policy in respect of the Disputed Domain Names. The Respondent did not allege nor provide evidence to establish that it is a legally authorized reseller of the Complainant. The Respondent does not accurately and prominently disclose its relationship with the Complainant. Therefore, the Respondent cannot claim that it, as a reseller of the Complainant's products, has rights or legitimate interests in the Disputed Domain Names.
According to the record in the WhoIs database, there is no evidence showing that the Disputed Domain Names have any connection with the Respondent's name or the Respondent is commonly known by the Disputed Domain Names. The websites to which the Disputed Domain Names , , , resolve are used to sell the Respondent's products under the Complainant's FREY WILLE trademark, for commercial purposes.
According to the above, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that "[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent's] domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy explicitly states, in relevant part, that "the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] web site or location or of a product or service on [the respondent's] web site or location."
The Complainant's FREY WILLE trademarks have been registered in many countries around the world and are protected in China through international trademark registration. The Respondent chose the FREY WILLE trademark as the only distinctive part of the Disputed Domain Names and there is no allegation or evidence suggesting that the Respondent selected the FREY WILLE trademark as used in the Disputed Domain Names for any reason other than the reputation of the trademark. Moreover, the screenshots of the websites to which the Disputed Domain Names , , and resolve show that the Respondent obviously knows the Complainant's trademark and such intentional registration shows the bad faith of the Respondent. The Panel finds that the Disputed Domain Names were registered in bad faith.
The Respondent uses the FREY WILLE trademark on the websites to which the Disputed Domain Names , , , resolve. The screenshots of the websites indicate that the websites sell jewelry and accessories under the Complainant's FREY WILLE trademark. Moreover, the design of products sold on the websites is identical or highly similar to the Complainant's products. The features will create an impression with Internet users that these websites are official websites of the Complainant, or are endorsed or sponsored by the Complainant. On the top left-hand side of the home page of the websites to which these Disputed Domain Names resolve, the Respondent uses the identical FREY WILLE trademark. At the very bottom of the websites to which these Disputed Domain Names resolve, the Respondent has posted statements: "Copyright 2013-2014 Frey Wille Outlet, Powered by Frey Wille, Frey Wille Jewelry.", "Copyright 2014-2015 Frey Wille Online, Powered by Frey Wille, Frey Wille Jewelry." The Respondent's use of the Complainant's FREY WILLE trademark on these websites and the incorporation of reference to the copyright ownership etc., are likely to cause Internet users to believe that they are official websites of the Complainant or otherwise sponsored or endorsed by the Complainant. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion. The Panel concludes that the aforementioned Disputed Domain Names are being used in bad faith.
The Disputed Domain Names , , , and do not resolve to any active websites. With regard to these Disputed Domain Names that are currently inactive, the fact that the Respondent passively holds the inactive Disputed Domain Names does not prevent the Panel from a finding of use in bad faith. The Panel must still examine all the circumstances of the case to determine whether the Respondent is acting in bad faith (paragraph 3.2 of WIPO Overview 2.0). In reviewing the present case in its entirety, the Panel finds that the Respondent has engaged in the large scale registration of domain names that incorporate the FREY WILLE trademark as the sole distinctive element. The Complainant has also provided a Reverse WhoIs report demonstrating that the Respondent has registered or exerts control over more than 50 domain names containing different well-known trademarks. It appears very likely that the Respondent passively holds the inactive Disputed Domain Names for some future active use in a way that would be competitive with or otherwise detrimental to the Complainant (J. Choo Limited v. Lin Zhiqiang, Linzhiqiang, Zhiqiang Lin/Lin Zhi Qiang, logworm,WIPO Case No. D2012-2429). According to the foregoing facts, the Panel finds that the Respondent's passive holding of these Disputed Domain Names that are currently inactive constitutes use in bad faith.
The condition of paragraph 4(a)(iii) of the Policy has been fulfilled since the Disputed Domain Names have been registered and are being used in bad faith. 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 Names, , , , , , , , and be transferred to the Complainant.
Peter J. Dernbach
Sole Panelist
Date: January 12, 2015
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