WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FEIYUE v. Long Wang
Case No. D2010-1521
1. The Parties
The Complainant is Feiyue of Paris, France, represented by Gilbey Delorey, France.
The Respondent is Long Wang of Guangzhou, Guangdong, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <feiyue-kungfu-shoes.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2010. On September 10, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 11, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 15, 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 Respondent of the Complaint, and the proceedings commenced on September 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2010.
The Center appointed Hariram Jayaram as the sole panelist in this matter on October 13, 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 March 4, 2010.
5. Parties’ Contentions
The Complainant is a French company which creates, manufactures and sells shoes, most notably sneakers under the FEIYUE trade mark. The said Complainant’s mark is intensively used, notably for shoes in canvas, and enjoys considerable success worldwide, in particular in Europe. The Complainant 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 shoes via its online shop. The disputed domain name which is used to offer for sale and to sell canvas shoes includes the word “feiyue” which constitutes the main element of the Complainant’s earlier trade mark registrations. This is followed by the generic word “shoes” which describes the products promoted on the website, and by the generic sport term “kungfu”. Placed in first position and followed by the descriptive words “shoes” and “kungfu” the consumers’ attention will be most concentrated on the highly distinctive word “feiyue”, which is individualized by the use of hyphens. The addition of the word “shoes”, which describes the goods designated by the earlier trade mark and sold both by the Respondent and by the Complainant, not only fails to differentiate the disputed domain name from the earlier FEIYUE trade mark, but also 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 the gTLD “.com” which is technically required to operate the domain name, does not avoid the confusion between the disputed domain name and the trade mark. The likelihood of confusion is further aggravated by the fact that the “www.feiyue-kungfu-shoes.com” website reproduces the trade mark owned by the Complainant; reproduces in the “Blog” tab, a photo belonging to the Complainant and displayed on the Complainant’s “www.feiyue-shoes.com” website to promote its own products, and an extract of the Complainant’s Winter 2007 catalogue; and offers for sale FEIYUE branded shoes without the authorization of the trade mark owner. The “www.feiyue-kungfu-shoes.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-kungfu-shoes.com” website originate from the Complainant, or at least that the Respondent is 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.
The Respondent’s name does not include the word “feiyue-kungfu-shoes” or “feiyue”. According to online databases, the Respondent is not the owner of any European, Canadian, United States trade marks for FEIYUE or trade marks containing the word “feiyue”. The Respondent does not have any relationship with the Complainant and is not authorized by the Complainant to use its trade mark, particularly in a domain name. The Respondent is not commonly known under the name “FEIYUE-KUNGFU-SHOES” or “FEIYUE”. The Respondent is not making a “legitimate noncommercial 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 canvas shoes 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, by the Respondent 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 noncommercial or fair use of the domain name. The Respondent does not use the 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 at harming the Complainant’s reputation for the Respondent’s own commercial benefit. Such use of the disputed domain name including the Complainant’s trade mark for commercial purposes does not constitute a bone fide use.
The Respondent uses the FEIYUE trade mark as a domain name and also displayed said mark on the
“www.feiyue-kungfu-shoes.com” website to promote the sale of FEIYUE branded canvas shoes which directly compete with the goods sold by the Complainant. The Complainant has never authorized the Respondent to use its trade mark in any manner whatsoever. The Complainant has neither authorized the Respondent to register the disputed domain name, nor to sell goods similar to the ones sold by the Complainant particularly on the “www.feiyue-shoes.com” website under the Complainant’s trade mark. The use of the Complainant’s word and device trade mark FEIYUE by the Respondent as a domain name and on the website is evidence of the Respondent’s knowledge of the FEIYUE trade mark at the time of the registration of the disputed domain name on March 4, 2010. The Respondent’s 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 Respondent 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 Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
- The Respondent has 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 Respondent 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/or 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 is made up as follows:
- the Complainant’s FEIYUE trade mark in its entirety
- the addition of the words “kungfu” and “shoes” after the word “feiyue”
- a hyphen between the words “feiyue” and “kungfu” and “kungfu” and “shoes”
- the gTLD “.com”
The words “kungfu” and “shoes” are generic and descriptive words. The word ”shoes” relates to the industry the Complainant is in, and the word “kungfu” is a term used for a type of sports/martial arts. Thus the addition of the said words to the disputed domain name will not diminish the confusing similarity between the Complainant’s FEIYUE trade mark and the disputed domain name as the said words are descriptive or suggestive of the Complainant’s business. This is confirmed in the following decisions:
- 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 PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case D2003-0696, the disputed domain names inter alia <pepsibasketball.com>, <pepsicricket.com>, <pepsifootball.net>, <pepsigolf.com>, <pepsihockey.com>, <pepsirugby.com>, <pepsiski.com>, <pepsisoccer.com>, <pepsitennis.com> and <pepsivolleyball.com> were found to be confusingly similar to the PEPSI trade mark.
- In adidas-Salomon AG v. Digi Real Estate Foundation, Patrick Williamson, WIPO Case No. D2006-0748, the disputed domain names inter alia <addidasgolf.com>, <adidasfootball.com>, <adidasskate.com> and <adidassoccer.com> were found to be confusingly similar to the ADIDAS trade mark.
- In Reebok International Limited v. Domain Privacy Service, Hong Kong Names LLC, WIPO Case No. D2008-0359, the disputed domain name <reebokhockey.com> was found to be confusingly similar to the REEBOK trade mark.
In the above mentioned FEIYUE v. Lhk Gallery, WIPO Case No. D2009-1070, a dispute involving the same Complainant, 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 in this matter 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 Respondent as to its lack of rights and legitimate interests. The Respondent’s name, as shown in the public WhoIs record and as confirmed by the Registrar, does not include the words “feiyue-kungfu-shoes” or “feiyue” and the Respondent does not appear to be from the evidence available in the present record commonly known as “feiyue-kungfu-shoes” or “feiyue”. Online trade mark searches carried out by the Complainant reveal no results of any trade marks containing the word “feiyue” registered under the name of the Respondent. The Complainant has no relationship with the Respondent and the Complainant has not granted any license or authorization to the Respondent to use the FEIYUE trade mark, particularly as a domain name. The disputed domain name formerly resolved to a website which offered canvas shoes with the FEIYUE trade mark for sale. Such use and purpose of the disputed domain name without the authorization of the bona fide trade mark owner shows that the Respondent is not making a legitimate noncommercial 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 Respondent who has chosen not to submit a Response. Thus the Panel finds from the submissions in the Complaint that the Respondent is 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 rationale of the above decision and finds that in this matter, after considering all of the available evidence, 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 offers for sale, shoes, in direct competition with the Complainant. The goods sold on the said website appear to be affixed with the Complainant’s FEIYUE word and device trade mark which has been registered in many jurisdictions before the creation of the disputed domain name. The Respondent has also reproduced on its website the Complainant’s materials such as photos and an extract of a catalogue which have been taken from the Complainant’s official website. These submissions by the Complainant, coupled with the choice of the disputed domain name, show that the Respondent was 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 creation of Internet user 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 Respondent’s website. Such registration and use of the disputed domain name constitutes registration and use in bad faith within the meaning of the Policy.
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-kungfu-shoes.com> be transferred to the Complainant.
Dated: October 27, 2010