The Complainant is Fendi S.r.l., Italy, represented by Dreyfus & associés, France.
The Respondent is 谢伟霖 (Weilin Xie), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2021. On May 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2021, 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 May 22, 2021 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 amended Complaint in English on May 25, 2021. On May 22, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On May 25, 2021, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Center verified that the Complaint together with the amended 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 in English and Chinese of the Complaint, and the proceedings commenced on May 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 10, 2021. The Center appointed Rachel Tan as the sole panelist in this matter on July 22, 2021. 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 Italian luxury fashion house specializing in high fashion clothing, accessories, and furniture. In 1925, Adele and Edoardo Fendi opened a fur and leather shop in Rome called “Fendi House”. The Complainant was acquired by the LVMH Group in 2000. The Complainant is the owner of a range of trade mark registrations for its FENDI and FENDI CASA marks. For example, International Registration No. 1250010 for FENDI registered on February 26, 2015, designating, inter alia, the European Union and China in class 9; International Registration No. 1130243 for FENDI registered on June 6, 2012, designating, inter alia, Australia and Japan, in classes 3, 9, 14, 18, 20, 24, 25, 35 and 43; and Chinese Registration No. 21854734 for FENDI CASA registered on January 14, 2018, in class 20. The Complainant is also the owner of the domain names The Respondent is 谢伟霖 (Weilin Xie), China. The disputed domain name was registered on April 7, 2021. According to the evidence provided by the Complainant, the disputed domain name previously redirected Internet users to the log-in page of a gambling and lottery website in the Chinese and English language. However, at the time of this decision, the disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is virtually identical to the Complainant’s FENDI and FENDI CASA marks. The disputed domain name reproduces the Complainant’s FENDI mark in its entirety. The composition of the disputed domain name reproduces the entire FENDI mark with the generic term “casa” is likely to confuse Internet users into believing the disputed domain name will direct them to the Complainant’s official website, related to its furniture products sold under the FENDI CASA mark. The mere switch between the terms’ position is not sufficient to avoid any risk of confusion with the FENDI CASA mark. The extension “.com” is not to be taken into consideration when examining the similarity between the Complainant’s marks and the disputed domain name. The Complainant further alleges that the Respondent is neither affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register its trade mark, or to seek registration of any domain name incorporating said trade mark. The Respondent is not commonly known by the disputed domain name nor the name “FENDI”. The disputed domain name originally redirected to a log-in page of a Chinese gambling and lottery website. It seems that the Respondent is making a non-legitimate use of the disputed domain name with an intent for commercial gain to misleadingly divert consumers from the Complainant’s official websites. The Complainant finally asserts that it is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain name. The composition of the disputed domain name reproduces the Complainant’s highly distinctive FENDI mark with the addition of the generic term “casa”. The Complainant’s FENDI and FENDI CASA marks registrations significantly predate the registration date of the disputed domain name. It is most likely to be believed that the Respondent registered the disputed domain The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions. In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement as used by the registrant for the disputed domain name is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding for the reasons summarized below: (a) The Complainant is located in France and has no knowledge of Chinese. To proceed in Chinese, the Complainant would have to retain specialized translation services at a cost that is likely to be higher than the overall cost for the present proceedings. Consequently, the use of another language than English in the proceeding would impose burden on the Complainant which must be deemed significant in view of the cost for the present proceedings; (b) The disputed domain name only includes Latin characters which strongly suggests that the Respondent has knowledge of languages other than Chinese. The disputed domain name pointed to a website which is both in English and in Chinese. It can be assumed that the Respondent has knowledge of English; and (c) English is the primary language for international relations, and it is one of the working languages of the Center. 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 order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding. The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below. (a) The Complainant is a company based in Italy and the Complainant’s representative is located in France. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses; (b) The Respondent’s choice of Roman letters for the disputed domain name and the English content of the webpage under the disputed domain name, indicates some familiarity with the English language; (c) Even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request; and (d) The Respondent has failed to participate in the proceeding even though the Center sent the notification of the Complaint in English and Chinese, and has been notified of his default. The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English. Accordingly, the Panel will proceed with issuing this decision in English. 6.2 Substantive Issues A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the FENDI and FENDI CASA marks. The Panel finds the disputed domain name confusingly similar to the FENDI mark. The FENDI mark is entirely contained within the disputed domain name where it is instantly recognizable as the dominant feature. Moreover, it is accepted by previous UDRP panels that the addition to the complainant’s trade mark of other words or terms whether descriptive, geographical, pejorative, meaningless, or otherwise would not affect the confusing similarity of the domain name from the registered trade mark under the first element of the Policy. As such, the Panel finds that the additional element “casa” to the FENDI mark does not prevent a finding of confusing similarity between the FENDI mark and the disputed domain name. See sections 1.7 and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel also finds the disputed domain name confusingly similar to the FENDI CASA mark. The two elements of the Complainant’s mark, although in reverse order, are wholly encompassed within the disputed domain name. Lastly, it is permissible for the Panel to ignore the generic Top-Level Domain, in this case “.com”. See section 1.11.1 of the WIPO Overview 3.0. Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests In circumstances where the Complainant possesses exclusive rights to the FENDI and FENDI CASA marks, whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0. The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the terms “fendi” and “fendi casa” in the disputed domain name. Further, there is no indication to show that the Respondent is commonly known by the disputed domain name or otherwise has rights or legitimate interests in the disputed domain name. The Complainant has not granted the Respondent a license or authorization to use the Complainant’s FENDI and FENDI CASA marks or register the disputed domain name. However, the Respondent previously used the disputed domain name on a webpage featuring gambling content which is wholly unrelated to the Complainant’s business. None of these circumstances indicates a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c) of the Policy. For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith The Complainant’s FENDI and FENDI CASA marks have been registered well before the registration of the disputed domain name. The Complainant has opened retail stores and sold goods bearing the FENDI mark for decades in many countries of the world, including China. Through extensive use and advertising, the Complainant’s FENDI and FENDI CASA marks are known throughout the world. Moreover, the term “fendi” is not merely a surname. Search results using the key words “fendi” and “fendi casa” on popular search engines direct Internet users to the Complainant and its products, which indicates that an exclusive connection between the FENDI and FENDI CASA marks and the Complainant has been established. As such, the Respondent either knew or should have known of the Complainant’s FENDI and FENDI CASA marks when registering the disputed domain name. Section 3.1.4 of the WIPO Overview 3.0 states that “mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. In this case, the disputed domain name incorporates the Complainant’s well-known FENDI and FENDI CASA marks creating a presumption of bad faith. The Panel notes that the disputed domain name was previously used by the Respondent on a website featuring online gambling content, which demonstrates the Respondent’s intention to make commercial gain from the website by attracting Internet users by creating a likelihood of confusion with the Complainant’s marks. See paragraph 4(b)(iv) of the Policy. In addition, the Panel finds that the current inactive use of the disputed domain name in this case would not prevent a finding of bad faith under the doctrine of passive holding. In its determination, the Panel considered the degree of distinctiveness and reputation of the Complainant’s FENDI and FENDI CASA marks, as well as the Respondent’s failure to respond in the face of the Complainant’s allegations of bad faith. See section 3.3 of the WIPO Overview 3.0. Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the Respondent’s lack of rights or legitimate interests, and by registering and using the disputed domain name as discussed above, the Panel is led to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel finds that the Complainant has satisfied the third element under 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 Rachel Tan
name based on the notoriety and attractiveness of the Complainant’s mark to divert Internet traffic to his website and to profit from it. B. Respondent
Sole Panelist
Date: August 4, 2021
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