The Complainant is Edmund Frette S.a.r.l., Luxembourg, represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is jian wang, shenzhenshizhonghewangluokeji, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2021. On July 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 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 August 2, 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 amendment to the Complaint on August 5, 2021.
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 August 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2021. The Respondent did not submit any formal response except that on August 6, 2021, the Center received an email from the Respondent in response to the Registrar’s email indicating that someone tried to contact the Respondent regarding the disputed domain name in relation to a trademark dispute; no other reaction was however received from the Respondent. Accordingly, the Center notified the Parties on September 13, 2021 that it would proceed to the panel appointment process.
The Center appointed David Stone as the sole panelist in this matter on September 21, 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 BackgroundThe Complainant is Edmund Frette S.a.r.l. The Complainant produces luxury bed linens; their products can be found at over 100 retailers and 1,000 luxury hotels worldwide. The Complainant’s business was founded in 1860.
The Complainant owns the following trade marks (the “Marks”), among others:
- FRETTE (word), European Union (“EU”) registration no 002442606, filed on November 8, 2001 and registered on March 11, 2003 for goods and services in classes 3, 4, 8, 18, 21, 24, 25, 27, 28, 35, and 42;
- FRETTE 1860 (figurative) (see above), EU registration no 015077481, filed on February 4, 2016 and registered on July 12, 2016 for goods in classes 3, 21, 24, and 25;
- FRETTE 1860 (figurative) (see above), International registration no 1382564 registered on March 28, 2017 for goods and services in in classes 3, 20, 21, 24, 25, and 35, designating, relevantly, China;
- FRETTE, United States (“US”) federal registration no 4153282 filed on September 12, 2011 and registered on June 5, 2012, for goods in classes 3, 8, 18, and 21; and
- FRETTE, US federal registration no 73243367 filed on December 18, 1979 and registered on March 23, 1982, for goods in classes 24 and 25.
The Complainant also owns the following domain names that incorporate FRETTE, among others:
-
-
The disputed domain name was registered on May 20, 2021.
Upon discovery of the disputed domain name, the Complainant attempted to contact the Respondent, but was unable to do so as the contact details of the Respondent were not available on the public WhoIs record except for the province and country where the Respondent is located.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is confusingly similar to the Complainant’s Marks. Disregarding the Top-Level Domain (“TLD”), “.com”, the disputed domain name differs from the word Marks only by the omission of the first letter “e”. The Complainant submits that this is a common, obvious or intentional misspelling of its Marks. It therefore contains sufficiently recognizable aspects of the Marks that makes it confusingly similar to them.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has never authorized any third party to make use of its Marks. The Complainant denies that the Respondent is an authorized agent, dealer, distributor, wholesaler, or retailer of FRETTE products and/or services. The Complainant is not aware of any evidence that the Respondent is known by the disputed domain name, nor has the Respondent provided the Complainant with any evidence of its use of the disputed domain name in connection with any bone fide offering of goods or services. The Complainant submits that, because FRETTE is a fanciful word, the Respondent registered the disputed domain name for the sole purpose of misleading customers. In addition, given that the particular misspelling “frtte” does not have any other independent meaning, it is difficult to conceive of any right or legitimate interest which the Respondent could have in it.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant’s Marks are well-known internationally, and FRETTE is a fanciful word. Therefore, it is not possible to conceive of a use of the disputed domain name which is not related to the Complainant’s activities. On this basis, it is inconceivable that the Respondent was not well aware of the Complainant’s Marks at the time of the registration of the disputed domain name. The Complainant therefore submits that the Respondent’s purpose in registering the disputed domain name was to capitalize on the reputation of the Complainant’s Marks by misleadingly diverting Internet users to the Respondent’s own website.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to succeed:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarOn the evidence provided by the Complainant, the Panel is satisfied that the Complainant has rights in the Marks. In assessing similarity between the Marks and the disputed domain name, it is permissible to ignore the TLD “.com”. As the Complainant contends, the word Marks and the disputed domain name differ only by the omission of the first letter “e”. Despite the absence of this letter, the dominant elements of the Marks are still clearly recognizable in the disputed domain name. The disputed domain name is therefore confusingly similar to the Marks (see section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel concludes that the condition in paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets out the criteria that determine whether a domain name registrant has rights or legitimate interests in a 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 trade mark 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 misleadingly to divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name. Accordingly, the burden shifts to the Respondent to prove that such rights and interests do exist. The Respondent has provided no evidence to prove this.
On the facts before the Panel, the Respondent has not demonstrated that it is commonly known by the disputed domain name, nor that it has been authorized to use the Complainant’s Marks.
The Respondent has not demonstrated use, or preparations for use, of the disputed domain name in connection with a bone fide offering of goods or services. Further, the Respondent has submitted no evidence to prove its legitimate noncommercial or fair use. As the Complainant submits, FRETTE is an invented word and FRTTE has no known meaning other than the reference to the Complainant and its products/services. The Panel therefore finds that there is no legitimate reason for the Respondent to choose the disputed domain name, other than as an attempt to create a false impression of association with the Complainant.
The Panel concludes that the condition in paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad FaithParagraph 4(a) of the Policy sets out the test for Bad Faith, namely that the disputed domain name “has been registered and is being used in bad faith” by the Respondent.
Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith. Generally, for the purposes of the Policy, bad faith constitutes registration and use of a domain name in order to:
(i) sell, rent or transfer the domain name to the trade mark owner (or a competitor thereof) for a profit; or
(ii) prevent the trade mark owner from registering its trade mark in a domain name, provided that the respondent is engaged in a pattern of such conduct; or
(iii) disrupt the business of a competitor; or
(iv) divert Internet traffic for commercial gain.
In the present case, it is helpful to consider the issues of bad faith registration and bad faith use separately.
As previously stated, FRETTE is an invented word, whose meaning solely relates to the Complainant’s Marks. In addition, the disputed domain name lacks any inherent meaning. The Complainant’s registration of the Marks (including in China, where the Respondent is based) also significantly predates the registration of the disputed domain name. On this basis, the Panel finds that it is inconceivable that the Respondent was not well aware of the Complainant’s Marks at the time of registration. In the absence of any contradictory evidence from the Respondent, the Panel therefore finds that the Respondent registered the disputed domain name in bad faith.
In terms of bad faith use, the disputed domain name currently leads to a static holding page displaying the words “Sorry, this shop is currently unavailable” (see Annex 4). This does not constitute a positive action in bad faith, as would be the case if the disputed domain name contained sponsored links for example. However, it is an established principle that passive holding of a domain name by the respondent such as in the present case can still amount to the disputed domain name being used in bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003, and section 3.3 of the WIPO Overview 3.0). In such circumstances, the Panel must examine all the facts of the case to determine whether the static holding page still amounts to bad faith use on behalf of the Respondent.
The Panel concludes that the static holding page at the disputed domain name does constitute bad faith use. The reasoning is as follows:
(i) The Complainant’s Marks have a strong reputation and are widely known globally;
(ii) The Respondent has failed to provide any evidence of good faith use in the disputed domain name; and
(iii) It is not possible to conceive of any other legitimate use of the disputed domain name by the Respondent.
The Panel concludes that the condition in paragraph 4(a)(iii) of the Policy is satisfied.
7. DecisionFor 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
David Stone
Sole Panelist
Date: October 5, 2021