Complainant is Fendi S.r.l. of Rome, Italy, represented by Studio Barbero S.p.A., Italy.
Respondent is Wenxin Huang, Online Store Co., Ltd, of Fuzhou, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2018. On December 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 10, 2019.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on January 21, 2019. 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
Complainant is worldwide famous Italian fashion house whose first shop opened in 1925. For over ninety years, Complainant has used the mark FENDI in connection with the sale of high-fashion and leather products, including clothing and handbags. Complainant owns several international registrations for its FENDI mark, including, for example, Registration No. 483395 (registered March 22, 1984) designating China. In addition, Complainant claims ownership of numerous FENDI trademark registrations (including Chinese Trademark Registration No. 1130243, registered June 6, 2012) held by Fendi Adele S.r.l. by virtue of Fendi Adele S.r.l.’s merger by incorporation into Complainant. In 2001, the multinational luxury goods conglomerate LVMH Moët Hennessy Louis Vuitton SE acquired Complainant.
Operating over 200 stores across the world including 19 flagship stores in China, Complainant had revenue in excess of one billion Euros in 2016. Complainant promotes the FENDI brand in diverse ways, including worldwide advertising campaigns, large fashion shows and social media websites.
Complainant has registered several domain names, including the domain name for its principal website .
Respondent registered the disputed domain name on March 29, 2018. The disputed domain name does not presently resolve to a website, although Complainant captured several screenshots of the associated website when it was active. On May 29, 2018, Complainant sent a letter to Respondent via email alleging that Respondent was offering counterfeit Fendi products for sale through the website. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has rights in the FENDI mark through its various trademark registrations and that the disputed domain name is confusingly similar to Complainant’s mark because it merely incorporates an additional “e” into Complainant’s mark.
Complainant further contends that although Respondent is not a licensee or authorized agent of Complainant, the disputed domain name redirects to a commercial website offering counterfeit FENDI-branded products for sale at heavily discounted prices. There is no disclaimer. On the contrary, Respondent falsely proclaims on the website: “Proudly created with Fendi.”
Complainant contends that Respondent registered and has used the disputed domain name in bad faith. Given the fame of the FENDI mark worldwide, including in China, Complainant asserts that it is impossible that Respondent was unaware of Complainant’s mark. Complainant also alleges that Respondent had actual knowledge of Complainant’s mark, as evident from the use of Complainant’s mark and products on the website. Complainant further contends that Respondent’s failure to reply to the cease and desist letter demonstrates bad faith use. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant’s trademark registrations establish Complainant’s rights in the FENDI mark. In addition, Complainant has submitted uncontested evidence that it owns the FENDI registrations registered by Fendi Adele S.r.l. The disputed domain name fully incorporates Complainant’s mark and the inclusion of an additional letter does not alleviate the confusing similarity.
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. This is not a case of nominative use by a legitimate Fendi reseller or distributor. Complainant offers credible evidence that Respondent uses the disputed domain name to peddle counterfeit goods. For example, Respondent offers for EUR 107 a Fendi bag that Complainant sells for EUR 1,390. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.13.2 (“Evidence that goods are offered disproportionately below market value” supports a claim of illegal activity such as counterfeiting).
Respondent has failed to rebut Complainant’s allegations or otherwise show that it is making a bona fide offering of goods or services.
The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Respondent registered the disputed domain name in bad faith. Respondent obviously mimicked Complainant’s FENDI mark when it registered the disputed domain name, adding a single additional letter to Complainant’s famous mark. Respondent also used the disputed domain name in bad faith to trade in counterfeit Fendi products. The FENDI mark is prominently displayed on the associated website. A legend at the base of the webpage declares an affiliation with Complainant. The website features high-fashion models and runways scenes - images often associated with FENDI. The website displays goods similar in appearance to those sold by Complainant. Respondent even incorporates Complainant’s product names into those of the products it sells. These facts support the finding that Respondent is engaged in an intentional attempt to create a false association with Complainant and to attract Internet users to its website for its own commercial gain.
Moreover, Respondent’s failure to answer Complainant’s letter accusing Respondent of engaging in illegal activity (counterfeiting) - an accusation which a good faith actor would reasonably be expected to rebut - underscores the Panel’s finding of bad faith.
The Panel finds that Complainant has satisfied 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 Complainant.
Lawrence K. Nodine
Sole Panelist
Date: February 4, 2019
Full & Egal Universal Law Academy