WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Feiyue v. Liu Ji
Case No. D2011-0644
1. The Parties
The Complainant is Feiyue of Paris, France, represented by Cabinet Moutard, France.
The Respondent is Liu Ji of Harbin, Heilongjiang, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <feiyue.eu.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2011. On April 12, 2011, the Center transmitted by email to CentralNic a request for registrar verification in connection with the disputed domain name. On April 13, 2011, CentralNic transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complaint in hard copy was received by the Center on April 18, 2011.
The Center verified that the Complaint satisfied the formal requirements of the CentralNic Resolution Policy (the “Policy”) and the Rules for CentralNic Dispute Resolution Policy (the “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 April 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2011.
The Center appointed Adam Taylor as the sole panelist in this matter on May 16, 2011. 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 a French company which distributes footwear under the mark FEIYUE.
The Complainant owns a number of figurative trade marks for FEIYUE including Community Trade Mark No. 005085873 in Nice class 25 dated May 19, 2006.
The disputed domain name was registered on January 12, 2011.
As of April 12, 2011, there was a website at the disputed domain name which was branded FEIYUE.EU and which offered footwear for sale.
5. Parties’ Contentions
Identical or Confusingly Similar
The Respondent uses the disputed domain name to sell shoes in France, the United States and the United Kingdom of Great Britain and Northern Ireland. These are countries where the Complainant owns previous trade marks.
The disputed domain name is identical to the Complainant’s trade marks.
The Respondent uses the disputed domain name to sell goods which appear to be those of the Complainant.
The average consumer will be misled and will perceive the disputed domain name as being associated with the Complainant.
Rights or Legitimate Interests
So far as the Complainant is aware, the Respondent has no rights or legitimate interests in respect of the disputed domain name.
There is no evidence of the use of the disputed domain name in connection with a bona fide offering of goods or services;
The Respondent has not been commonly known by the disputed domain name.
The Respondent is using the disputed domain name in an illegitimate, commercial and unfair manner. Consumers are misled since when they buy shoes on the website at the disputed domain name, they think that it belongs to the Complainant and that the goods emanate from the Complainant.
Registered or Used in Bad Faith
By registering and using the disputed domain name, the Respondent has intentionally attempted to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
Consumers of average attention think that the Complainant has approved or is the source of the registration and use of disputed domain name and of the shoes sold on the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant owns figurative registered trade marks consisting of the stylized word “Feiyue” plus an adjacent arrow logo.
Paragraph 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) explains the approach to be taken in respect of the design elements of a trade mark when assessing identity or confusing similarity:
“[A] s figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark. However, design elements in a trademark may be relevant to the decision in certain circumstances - such as where, for example, they form an especially prominent or distinctive part of the trademark overall.”
Here, the term “feiyue” is the dominant feature of the Complainant’s marks and the design elements are minimal.
Accordingly, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade marks.
The Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP … If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorized the Respondent to use its trade marks.
As to paragraph 4(c)(i) of the Policy, the Complainant proceeds on the assumption that the goods being offered on the Respondent’s site are not in fact genuine Complainant products but it does not explain why or provide evidence.
If the Respondent is in fact reselling the Complainant’s own goods, then the consensus view of UDRP panels – as expressed in paragraph 2.3 of WIPO Overview 2.0 – is that to establish a bona fide offering in such circumstances, the Respondent must comply with certain requirements, including accurate disclosure of its relationship with the trade mark owner. In the Panel’s view, there is no such accurate disclosure in this case as the Respondent’s website is designed to imply a connection between the Respondent and the Complainant. Amongst other things, the home page is prominently branded FEIYUE.EU (with “.eu” in a smaller font than “Feiyue”) and it includes images of the models wearing shoes which appear to be branded with the Complainant’s logo.
If the Respondent is selling counterfeit goods, and not the Complainant’s genuine products, then clearly such conduct is even more egregious.
In either case, the use of the disputed domain name could not be said to be bona fide.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered or Used in Bad Faith
In the Panel’s view, it is obvious that the Respondent registered the disputed domain name with the Complainant’s trade mark in mind.
As mentioned above, the Respondent has offered either the Complainant’s own products, or counterfeit versions of those products, for sale via a website at the disputed domain name which deliberately sought to imply a connection with the Complainant.
The Respondent has not come forward to deny the Complainant’s assertions of bad faith.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
For 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.eu.com> be transferred to the Complainant.
Dated: May 26, 2011