The Complainant is Frey Wille GmbH & Co. KG of Vienna, Austria, represented by Salomonowitz | Horak, Austria.
The Respondent is Longbiao Li of Putian Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2017. On April 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on April 24, 2014.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2017.
The Center appointed Alexandre Nappey as the sole panelist in this matter on June 9, 2017. 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 FREY WILLE, an Austrian company producing and selling arty jewelry, decoration and accessories under the FREY WILLE brand in many countries: the Complainant is operating more than 100 Flagship-Boutiques worldwide.
The Complainant is the owner of numerous trademarks registrations for the word FREY WILE throughout the world, among which:
- International trademark FREY WILLE no. 824396, registered since August 25, 2003;
- International trademark FREY WILLE no. 1047059, registered since March 3, 2010;
The Complainant spends over EUR 6 million on its marketing each year.
Due to their extensive international use, the distinctive FREY WILLE trademarks have become internationally well known.
The disputed domain name was registered by the Respondent on August 26, 2012 and resolves to a website displaying an online jewelry store. 5. Parties’ Contentions A. Complainant
(1) The Complainant first alleges that the disputed domain name is confusingly similar to its earlier trademark FREY WILLE.
The disputed domain name incorporates the Complainant’s earlier trademark FREY WILLE in its entirety.
The addition of the word “prix”, the hyphens and the generic Top-Level Domain (“gTLD”) “.info” does not reduce the confusing similarity between disputed domain name and the Complainant’s earlier trademark FREY WILLE.
(2) Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is operating an online store for counterfeit jewelry under the disputed domain name and misleadingly uses Complainant’s trademarks to attract Internet users.
The Respondent is not an authorized dealer for the Complainant’s products.
The Complainant has never granted any license or other right to the Respondent to use any of the Complainant’s trademarks or to register any domain incorporating the trademark FREY WILLE.
The content of the website at the disputed domain name clearly shows that the Respondent was well aware of the Complainant’s activities and trademarks.
Neither the website nor the WhoIs data contain even the slightest indication that the Respondent might be known under the name FREY WILLE.
In any event, the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services.
The main image which is serving as a decoration of the website at the disputed domain name is a genuine image which the Respondent has obviously copied from older versions of the Complainant’s website and/or catalogue.
The Respondent is obviously trying to take a freeride on the Complainant’s reputation and goodwill.
(3) Finally, the Complainant claims that the disputed domain name was registered and is being used in bad faith.
Registered in bad faith:
The Complainant alleges that FREY WILLE is a famous trademark.
It is certain that the Respondent was aware of this fact at the time of registration of the disputed domain name.
It is evident that the disputed domain name has been registered solely for the purpose of tricking users into buying counterfeit products to make a maximum profit as quickly as possible.
Used in bad faith:
The Complainant claims that the Respondent is deliberately creating the false and misleading impression that it is affiliated with the Complainant: it is using the FREY WILLE Sphinx logo which creates the impression that it is an official distributor.
It is obvious that by using the disputed domain name, the Respondent has intentionally attempted to attract users for commercial gain by creating a likelihood of confusion with the Complainant’s famous marks. Moreover, the use of the disputed domain name disrupts the Complainant’s business. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Notwithstanding the lack of a response from the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.
Having consideration to the Parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above mentioned elements are the following: A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns exclusive trademark rights in FREY WILLE, which predate the registration of the disputed domain name .
The Panel finds that the disputed domain name is confusingly similar to the registered FREY WILLE trademark owned by the Complainant.
Indeed, the disputed domain name incorporates the entirety of the Complainant’s FREY WILLE trademark with the mere addition of:
- hyphens;
- the descriptive term “prix” which means “price” in French;
- the gTLD “.info” which might suggest that the disputed website gives information about the price for the FREY WILLE products.
There is no doubt that the dominant part of the disputed domain name is the Complainant’s trademark FREY WILLE, and the addition of the descriptive term “prix” and the gTLD “.info” does not avoid confusing similarity.
See in similar circumstances F. Hoffmann-La Roche AG v. NicProxy Cusotmer / Oksana Gerasimova,WIPO Case No. D2015-0076, regarding the domain name (transfer):
“The disputed domain name differs from the Complainant’s trademarks only by the addition of the French term “prix” which means “price” in the English language. In the Panel’s view, this addition does not negate the confusing similarity between the Complainant’s trademarks and the disputed domain name. The Panel finds that this additional incorporation is purely descriptive and does not distinguish the disputed domain name from the Complainant’s trademarks.”
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(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.
Considering the difficulty to demonstrate a negative, UDRP panels generally find that if a complainant raises a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the policy, the burden shifts to the respondent to demonstrate its rights or legitimate interests.
See De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-1465.
Here, the Complainant has stated that it has not authorized, licensed or consented to the Respondent any use of its FREY WILLE trademark.
It results from the circumstances that the Respondent does not own any rights in the trademark FREY WILLE or is commonly known by the disputed domain name.
In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
As the Respondent has not provided otherwise, and in light of the finding under the third element, the Panel finds from the available record that the second element of paragraph 4(a) of the Policy is fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name.
It provides that:
“For the purposes of Paragraph 4(a)(iii), 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:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
Since FREY WILLE has been registered for over a decade and the Complainant has used its mark internationally in connection with jewelry, it may be assumed that the Respondent was aware of the Complainant’s trademark at the time it registered the disputed domain name .
Moreover, the Complainant submitted printouts showing that the website operated under the disputed domain name is an online store for jewelry using the Complainant’s trademark and Sphinx logo.
It appears therefore that the Respondent, by making reference to the FREY WILLE trademark, is trying to create a likelihood of confusion in order to attract, for commercial gain, Internet users who will be led to think that the Respondent is affiliated with the Complainant or is an official distributor.
The Panel finds that the Respondent’s use of the disputed domain name cannot therefore constitute a bona fide offering of the goods or services.
Conversely, the Panel finds that the Respondent registered the disputed domain name with the Complainant in mind and with the intention of capitalizing on the reputation of the Complainant within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of 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.
Alexandre Nappey
Sole Panelist
Date: June 23, 2017
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