WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FEIYUE v. FeiYue Sneaker LTD. / HostMonster.com Inc.
Case No. D2010-1506
1. The Parties
The Complainant is FEIYUE of Paris, France, represented by Gilbey Delorey of France.
The Respondents are FeiYue Sneaker LTD., Lex Yu, of Shenzhen, China; and HostMonster.com INC. of Provo, Utah, United States of America.
2. The Domain Name and Registrar
The disputed domain name <feiyue-sneaker.com> is registered with FastDomain, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2010. On September 8, 2010, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the disputed domain name. On September 8, 2010, FastDomain, Inc. 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 September 13, 2010, 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 on September 17, 2010.
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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on September 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2010. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on October 12, 2010.
The Center appointed Hariram Jayaram as the sole panelist in this matter on October 21, 2010. 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
FEIYUE is a simplified joint-stock company (société par actions simpliféé) organized under the laws of France and registered with the Company Registrar of Paris under the number B 487 492 654.
The Complainant has registered the following trade marks:
registered as an International Registration (registration no. 948536) for clothing, footwear (except orthopedic footwear), headgear in class 25 on November 14, 2007.
registered in the United States of America (registration no. 3253429) for canvas shoes; leather shoes; training shoes in class 25 on June 19, 2007.
registered in Canada (registration No. TMA735034) for canvas shoes, vulcanized shoes, sneakers, sport shoes in class 25 on February 24, 2009.
registered as a Community Trade Mark (registration No. 006362669) for footwear except orthopedic in class 25 on December 4, 2008.
The disputed domain name was registered on May 28, 2010.
5. Parties’ Contentions
The Complainant is a French company which creates, manufactures and sells shoes, notably sneakers under the FEIYUE trade mark. The Complainant’s mark is intensively used, notably for shoes in canvas which enjoy considerable success worldwide, particularly in Europe. Feiyue is the owner of the domain name <feiyue-shoes.com> registered on November 18, 2005, which includes the mark FEIYUE, and which is used by the Complainant in connection with its activities particularly to promote and sell FEIYUE branded sneakers via its online shop. The disputed domain name is used to offer for sale and to sell sneakers. The disputed domain name includes the word “feiyue”, which constitutes the main element of the Complainant’s earlier trade mark registrations and is followed by the generic word “sneakers” which describes the products promoted on the website. Placed in first position and followed by the descriptive word “sneaker”, the consumers' attention will be most concentrated on the highly distinctive word “feiyue”. The addition of the word “sneaker”, which describes the goods designated by the earlier trade mark and sold both by the Respondents and by the Complainant, not only fails to differentiate the disputed domain name from the earlier FEIYUE trade mark, but exacerbates the likelihood of confusion for the consumer who is inclined to believe that the website has been somehow authorized by the Complainant. The addition of the hyphenation and of the gTLD ".com", which is technically required to operate the domain name, does not avoid the confusion between the disputed domain name and the trademark. The likelihood of confusion is further aggravated by the fact that the “www.feiyue-sneaker.com” website reproduces the trade mark owned by the Complainant and offers for sale FEIYUE branded sneakers without the authorization of the trade mark owner. The products offered for sale on the website are identical to the ones designated by FEIYUE trade mark and intensively sold by the Complainant. Furthermore, the “www.feiyue-sneaker.com” website is in English and therefore directed to consumers in countries where the above trade mark registrations are registered and used. As a consequence, the consumers could legitimately and mistakenly consider that the goods sold on the “www.feiyue-sneaker.com” website originate from the Complainant, or at least that the Respondents are authorized to sell those goods by the Complainant, which is not the case. The disputed domain name is thus confusingly similar to the earlier FEIYUE trade mark owned by the Complainant.
According to online databases, the Respondents are not the owner of any European, Canadian or United States trade marks for FEIYUE or marks containing the word “feiyue”. The Respondents do not have any relationship with the Complainant and are not authorized by the Complainant to use its trade mark, particularly as a domain name. The Respondent is not commonly known under the name “FEIYUE-SNEAKER” or “FEIYUE”. The Respondents are not making a "legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark at issue" within the meaning of the Policy. On the contrary, the disputed domain name leads the consumer to a website which promotes sneakers on which the FEIYUE trade mark is affixed without the authorization of the Complainant. The use of the Complainant's trade mark, without its authorization, and in connection with identical or similar goods to those provided by the Complainant would violate the exclusive trade mark rights of the Complainant and as a consequence does not constitute a legitimate non-commercial or fair use of the domain name. Furthermore, the Respondents do not use the disputed domain name in relation to a “bona fide offering of goods”. The use of the FEIYUE trade mark as a domain name and the promotion of goods infringing the Complainant's trade mark on the related website are only aimed to harm the Complainant's reputation for the Respondents’ own commercial benefit. Such use of the disputed domain name including the Complainant's trade mark for commercial purposes does not constitute a bona fide use.
The Respondents use the FEIYUE trade mark as a domain name and also on the “www.feiyue-sneaker.com” website to promote the sale of FEIYUE branded sneakers which directly compete with the goods sold by the Complainant. The Complainant has never authorized the Respondents to use its trade marks, in any manner whatsoever. The Complainant has never authorized the Respondents to register the disputed domain name, nor to sell goods similar to the ones sold by the Complainant particularly on its “www.feiyue-shoes.com” website under the Complainant’s trade mark. The use of the Complainant's FEIYUE trade mark by the Respondents as a domain name and on the website is evidence of the Respondents’ knowledge of the FEIYUE trade mark at the time of the registration of the disputed domain name on May 28, 2010. The Respondents’ website is indeed in English and therefore intentionally directed to consumers in countries where the Complainant owns and uses its trade mark. This unauthorized registration and use of FEIYUE trade mark has obviously been done "to attract for commercial gain, Internet users to the Respondent's 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 the Respondent's web site or location or of a product or service on the Respondent's web site or location" within the meaning of the Policy.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order for the domain name to be transferred to it:
- The domain name registered by the Respondents is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
- The Respondents have no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
As the Respondents did not submit any response, the Panel will, in accordance with paragraph 5(e) of the Rules, decide this dispute based on the Complaint.
A. Identical or Confusingly Similar
The Complainant has registrations for the FEIYUE trade mark in many jurisdictions in class 25 for inter alia footwear and shoes. The Complainant has intensively used its FEIYUE trade mark for its shoe products worldwide. The Complainant also has an online shop which promotes and sells its shoe products. The disputed domain name incorporates the Complainant’s FEIYUE trade mark in its entirety with the addition of the word “sneaker”, a hyphen between the words “feiyue” and “sneaker” and the gTLD “.com”. Such additions are insufficient in distinguishing the disputed domain name from the Complainant’s FEIYUE trade mark because the gTLD “.com” is a technical requirement for operating a domain name; a hyphen between the words “feiyue” and “sneaker” serves the purpose of separating the two words, and the word “sneaker” is a generic word and descriptive of the Complainant’s business. Several WIPO UDRP decisions on domain name disputes have confirmed that the mere addition of generic or descriptive words to a trade mark owned by another to form a domain name will not diminish the confusing similarity between the domain name and said trade mark. Some of these cases are as follows:
- In Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Above.com Domain Privacy/Transure Enterprise Ltd, WIPO Case No. D2009-1253, the disputed domain name <drmartenshoes.com> was found to be confusingly similar to the DR. MARTENS trade mark
- In NIKE, Inc v. Bestinfo, WIPO Case No. D2002-0543, the disputed domain name <nikeshoes.com> was found to be confusingly similar to the NIKE trade mark
- In Hugo Boss A.G. v. Robert F. Walsh, WIPO Case No. D2000-1135, the disputed domain names <bossshoes.com>, <bossshoes.net> and <bossshoes.org> were found to be confusingly similar to the BOSS, HUGO BOSS and BOSS HUGO BOSS trade marks
- In FEIYUE v. Lhk Gallery, WIPO Case No. D2009-1070, the disputed domain name <feiyue-sneakers.com> was found to be confusingly similar to the FEIYUE trade mark
- In ECCO Sko A/S v. He Shaonan, Lin Zhiyuan, Qinghuo Ou, WIPO Case No. D2010-0650, the disputed domain names <eccoshoesoutlet.com>, <eccoshoesoutlets.com and <eccoshoesoutlets.net> were found to be confusingly similar to the ECCO trade mark
In the above mentioned FEIYUE v. Lhk Gallery, WIPO Case No. D2009-1070, a dispute involving the same Complainant and a similar disputed domain name, the panel held:
“…by including the word [‘]sneakers[‘] with the Complainant’s mark FEIYUE to form the corresponding disputed domain name, the potential for user confusion is greatly exacerbated, not reduced. By appending that word to the Complainant’s mark, an Internet user would clearly be deceived into thinking that the Respondent’s site and the products offered there through were somehow affiliated, related to or sponsored by or even originating from the Complainant when, in fact, they are not. This clearly is the Respondent’s intended result inasmuch as both parties manufacture sneakers but Respondent’s website depicts a mark that is a rather close and likely infringing replica of Complainant’s FEIYUE Mark and that Respondent’s sneakers identically depict the Complainant’s mark.”
The Panel agrees with the above decisions and concludes that the disputed domain name is confusingly similar to the Complainant’s FEIYUE trade mark.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made allegations against the Respondents as to the Respondents’ lack of rights and legitimate interests. Online trade mark searches carried out by the Complainant revealed no results of any trade marks containing the word “feiyue” registered under the name of the Respondents. The Complainant has no relationship with the Respondents and the Complainant has not granted any license or authorization to the Respondents to use the FEIYUE trade mark particularly as a domain name. The disputed domain name resolves to a website which promotes sneakers with the FEIYUE trade mark without the Complainant’s authorization. The Panel also notes that there appears to be nothing at the website with the disputed domain name to identify the Respondents vis-à-vis the Complainant but rather that the website is designed in a manner that would make a viewer of the website to consider it is one that has an affiliation with the Complainant. In this Panel’s view, such use and purpose of the disputed domain name without the authorization of the bona fide trade mark owner shows that the Respondents are not making a legitimate non-commercial or fair use of the disputed domain name or a bona fide offering of goods and services. All these allegations have gone unchallenged by the Respondents who have chosen not to submit a response.
Although one of the Respondents, FeiYue Sneaker LTD., carries the word “FeiYue” in its name, the said Respondent has not submitted any evidence as to its rights in the said name for the Panel’s consideration. Thus the Panel finds from the submissions in the Complaint that the Respondents are not making use of the disputed domain name for a bona fide offering of goods and services and a legitimate noncommercial or fair use of the disputed domain name.
In GoDaddy.com, Inc., v. GoDaddysDomain.com, Clark Signs, Graham Clark, WIPO Case No. D2007-0303, the panel held:
“Further, no evidence exists of record that the Complainant has ever authorized the Respondent to utilize any of its DADDY Marks or any mark confusingly similar thereto in conjunction with the specific goods and services which the Complainant provides under its DADDY Marks, nor does the Complainant apparently have any relationship or association whatsoever with the Respondent. As such, any use to which the Respondent were to put the marks DADDY or GO DADDY or one confusingly similar thereto, in connection with the goods or services provided by the Complainant or those similar thereto, would violate the exclusive rights now residing in the Complainant.”
The Panel agrees with the above decision and finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name resolves to a website which promotes and offers for sale, sneakers, in direct competition with the Complainant. The goods sold on the said website are affixed with the Complainant’s FEIYUE trade mark which has been registered in many jurisdictions before the creation of the disputed domain name. The Respondents have not obtained an authorization from the Complainant to register the Complainant’s FEIYUE trade mark as part of a domain name or to use the Complainant’s FEIYUE trade mark on a website or on goods in competition to the Complainant. The choice of the disputed domain name also shows that the Respondents are well aware of the Complainant and its business and the disputed domain name has been created with the intention to reap commercial benefit generated through the confusion and customer diversion. This is an obvious attempt to capitalize on the Complainant’s trade mark and, as alleged by the Complainant, to attract for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the Respondents’ website.
These submissions by the Complainant coupled with the fact that the Respondents have engaged in an activity which falls within the list of bad faith conduct in paragraph 4(b) of the Policy, and the fact that the Respondents have not provided any evidence of a good faith use of the disputed domain name, the Panel is persuaded that the disputed domain name has been registered and is being used by the Respondents in bad faith.1
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <feiyue-sneaker.com> be transferred to the Complainant.
Dated: November 3, 2010
1 This is further corroborated by the fact that at the date of this decision, the website merely contains the following text: “Domain for sell. Please contract: email@example.com!”