The Complainant is Fendi Srl, Italy, represented by Dreyfus & associés, France.
The Respondent is Ren Fu Rong(任芙蓉), 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 July 2, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 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 the same day 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 July 12, 2021. On July 9, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On July 12, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not explicitly comment on the language of the proceeding. However, the Respondent sent an email communication in Chinese to the Center on July 9, 2021, indicating “Sorry, I don’t’ understand. What is the Complaint?” 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 July 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2021. The Respondent did not submit any formal response. On August 30, 2021, the Center informed the Parties that it would proceed to panel appointment. The Center appointed Matthew Kennedy as the sole panelist in this matter on September 7, 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 fashion house that specializes in high fashion clothing, accessories, and furniture. It is named after its founders Adele and Edoardo Fendi. The Complainant holds multiple trademark registrations for a FENDI and device mark, including Chinese trademark registration number 262675, registered on September 20, 1986, specifying goods in class 25; Chinese trademark registration number 261724, registered on September 10, 1986, specifying goods in class 25; and International trademark registration number 561438, registered on November 19, 1990, designating China and specifying goods in classes 14, 18 and 25. The Complainant also holds International trademark registration number 1130243 for FENDI, registered on June 6, 2012, designating multiple jurisdictions including China and specifying other goods and services in classes 3, 9, 14, 18, 20, 24, 25, 35 and 43, including “bags, namely, shoulder bags, travelling bags, handbags, Boston bags, waist packs, sling bags for carrying infants, leather and canvas shopping bags, duffle bags, tote bags, clutch bags, trunks, wallets, purses, briefcases, attaché cases, pouches of leather or textile, school bags, suitcases, garment bags for travel, key cases made of leather, backpacks, rucksacks, vanity cases sold empty, carry-on bags, beach bags”. The above trademark registrations all remain current. The Complainant registered the domain name The Respondent is an individual resident in China. The disputed domain name was registered on March 3, 2021. It resolves to a website in Chinese and English for Wenzhou Fendy Packaging Co., Ltd, which assumed its current name in 2020. The website claims that the company produces various types of bags and has an annual production value of about USD 1 million. There are three product photographs of reusable shopping bags on the site, two of which are identical. At the time of this Decision, the disputed domain name does not resolve to any active website; rather, it is passively held. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s FENDI trademarks. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register its trademark, or to seek registration of any disputed domain name incorporating said trademark. The Respondent is not commonly known by the disputed domain name nor the name “Fendy”. The disputed domain name resolved to a website selling reusable shopping bags, then to an inactive page before being reactivated, none of which constitutes a legitimate and fair use of the disputed domain name. The disputed domain name was registered and is being used in bad faith. The Complainant is well known throughout the world, including in China where the Respondent is allegedly located. The composition of the disputed domain name reproducing the Complainant’s highly distinctive trademark FENDI, merely replacing the final letter “i” with a “y” and with the mere addition of the term “bags”, clearly demonstrates that the Respondent registered the disputed domain name based on the attractiveness of the Complainant’s trademark to divert Internet traffic to her website. B. Respondent Apart from an informal email communication, the Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding 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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese. The Complainant requests that the language of the proceeding be English. Its main arguments are that the Complainant has no knowledge of Chinese, use of a language other than English would impose an undue burden on the Complainant; and the website configured on the disputed domain name is accessible in English and Chinese, from which it can be assumed that the Respondent has knowledge of English. The Respondent appears to have claimed in an informal email communication in Chinese to the Center that she could not read the Complaint. Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293. The Panel observes that in this proceeding the Complaint was filed in English. The website to which the disputed domain name resolves is in Chinese and English, from which it is reasonable to infer that the Respondent is able to communicate in both languages, contrary to her apparent claim not to be able to read the Complaint. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay whereas accepting it in English does not create unfairness to either Party. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed. 6.2. Substantive Issues Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements: (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. A. Identical or Confusingly Similar Based on the evidence presented, the Panel finds that the Complainant has rights in the FENDI mark. The initial element of the disputed domain name is “fendy”, which is phonetically identical, and visually almost identical, to the FENDI mark. The disputed domain name also incorporates the word “bags”. Given that the trademark remains clearly recognizable within the disputed domain name, the Panel does not consider that the addition of this dictionary word prevents a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The disputed domain name includes a generic Top-Level Domain (“gTLD”) suffix (“.com”), which is a technical requirement of domain name registration. A gTLD suffix is normally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a 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. As regards the first and third circumstances above, the disputed domain name resolves to a website for Wenzhou Fendy Packaging Co., Ltd, which produces bags. “Fendy” is phonetically identical and visually almost identical to the FENDI mark, which the Complainant uses in relation to bags, among other things. The Complainant submits that the Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to use and register its FENDI trademark, or to seek registration of any disputed domain name incorporating said trademark. Accordingly, the Panel considers that the Complainant has made a prima facie case that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The website to which the disputed domain name resolves promotes a business, which indicates that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain. As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “Ren Fu Rong (任芙蓉)”, not the disputed domain name. Even assuming that the Respondent is associated with the Wenzhou Fendy Packaging Co., Ltd, there is no evidence apart from the website to which the disputed domain name resolves that that company is known by that name. Further, the website indicates that the company changed its name recently, in 2020. Accordingly, the evidence does not show that the Respondent, as an individual, business or other organization, has been commonly known by the disputed domain name. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because she did not respond to the Complainant’s contentions. Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The fourth of these is as follows: (iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online 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] website or location. With respect to registration, the disputed domain name was registered in 2021, years after the registration of the Complainant’s FENDI trademark. FENDI is a mark and a family name, not a descriptive word. The initial element of the disputed domain name is phonetically identical and visually almost identical to the FENDI mark. The combination of a misspelt version of the FENDI mark and the word “bags” does not appear coincidental but, rather, indicates an awareness of the Complainant and its products. The Respondent provides no explanation for her choice of the disputed domain name. Although the obvious inference is that the disputed domain name was partly based on the company name “Wenzhou Fendy Packaging Co., Ltd”, the Respondent provides no explanation as to why the company incorporates the misspelt version of FENDI mark, particularly when that company that produces bags. Accordingly, the Panel finds that the Respondent was aware of the Complainant at the time that she registered the disputed domain name and that she targeted the FENDI trademark. With respect to use, the disputed domain name, which is confusingly similar to the Complainant’s FENDI mark, resolves to a website to promote a company that produces bags. The Internet user only realizes that the website is not related to the Complainant after such user reaches the site, by which time the disputed domain name has already achieved its diversionary purpose. Given these circumstances, the Panel finds that the Respondent is using the disputed domain name intentionally to attract, for commercial gain, Internet users to her website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a service on the Respondent’s website, within the terms of paragraph 4(b)(iv) of the Policy. The Panel notes that the use of the disputed domain name has recently changed and that it no longer resolves to an active website. This change in use does not alter the Panel’s conclusions; it may actually constitute a further indication of bad faith. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in 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 Matthew Kennedy
Sole Panelist
Date: September 20, 2021
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