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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FEIYUE v. zhang san, zhangg san

Case No. D2011-0695

1. The Parties

The Complainant is FEIYUE of Paris, France, represented by Gilbey Delorey, France.

The Respondents are zhang san and zhangg san of the People’s Republic of China.

2. The Domain Names and Registrar

The disputed domain names <chaussuresfeiyue.net> and <feiyueshoes.net> are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2011. On April 21, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On April 22, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details.

The Center verified that 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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on April 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2011. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 18, 2011.

The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on May 24, 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.

According to the verification response transmitted by email to the Center by GoDaddy.com, Inc., the Respondents are zhang san and zhangg san, having the same contact details. In that connection, the Complainant contends that the Respondents would in fact be the same person and that the difference between “zhang” and “zhangg” would account to a typo mistake.

In the circumstances, and in the absence of a reply from the Respondents, the Panel finds that the Respondents zhang san and zhangg san are actually the same person and will treat them as one single Respondent.

4. Factual Background

The Complainant is a French company that creates, manufactures and sells shoes under the trademark FEIYUE.

The Complainant owns trademark registrations for FEIYUE, particularly an International registration No. 948536, registered on November 14, 2007, a United States registration No. 3253429, registered on June 19, 2007; a Canadian registration No. TMA735034, registered on February 24, 2009; a Singaporean registration No. T0719470J, registered on January 25, 2008; and a Community registration No. 006362669, registered on December 4, 2008, all of them in international class 25.

The disputed domain names <chaussuresfeiyue.net> and <feiyueshoes.net> were registered by the Respondent on March 25, 2011, and March 27, 2011, respectively.

5. Parties’ Contentions

A. Complainant

The Complainant contends the following:

The Complainant contends that it is a French leading company that creates, manufactures and sells shoes under the trademark FEIYUE.

The Complaint also contends that it has developed its activity on the Internet and that is the owner of the domain name <feiyue-shoes.com> which resolves to the website “www.feiyue-shoes.com”.

Moreover, the Complainant contends that it owns trademark registrations for FEIYUE. Particularly, it contends that it owns an International registration No. 948536, registered on November 14, 2007; a United States registration No. 3253429, registered on June 19, 2007; a Canadian registration No. TMA735034, registered on February 24, 2009; a Singaporean registration No. T0719470J, registered on January 25, 2008; and a Community registration No. 006362669, registered on December 4, 2008, all of them in international class 25.

In that connection, the Complainant contends that the disputed domain names <chaussuresfeiyue.net> and <feiyueshoes.net> are confusingly similar to a trademark in which the Complainant has rights. Moreover, the Complainant contends that the most distinctive term in the disputed domain names is “feiyue” and that the mere addition of the generic words “chaussures”, the English translation of which is “shoes”, and “shoes” are not sufficient to avoid the confusing similarity, and that under the circumstances of the case, would only exacerbate the confusing similarity as consumers would tend to believe that the websites to which the disputed domain names resolve are somehow related to the Complainant.

Furthermore, the Complainant contends that the websites to which the disputed domain names resolve reproduce the Complainant’s trademark FEIYUE and the content of the Complainant’s website “www.feiyue-shoes.com”.

On the other hand, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names and that the Complainant has not licensed or given any authorization to the Respondent to use the trademark FEIYUE.

In that connection, the Complainant contends that the Respondent is not commonly known as or identified neither by “chaussuresfeiyue” nor by “feiyueshoes”, nor has any rights in them. It also contends that the Respondent is neither authorized dealer nor distributor for Feiyue products.

Moreover, the Complainant contends that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, is not commonly known by the disputed domain names <chaussuresfeiyue.net> and <feiyueshoes.net>, and is not making a legitimate, noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s trademark.

In this connection, the Complainant contends that the Respondent is using the disputed domain names to resolve to websites that offer for sale competing products to those offered by the Complainant.

Furthermore, the Complainant also contends that the Respondent has registered the disputed domain names in bad faith as it was or should have been aware of the Complainant and its trademark FEIYUE at the time of registering the disputed domain names <chaussuresfeiyue.net> and <feiyueshoes.net>.

In that connection, the Complainant contends that the disputed domain names resolve to websites offering competing products to those of the Complainant, which means that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website and other online locations, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites.

In light of the foregoing, the Complainant requests that the disputed domain names <chaussuresfeiyue.net> and <feiyueshoes.net> be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

For the Complainant to succeed in a UDRP proceeding, under paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The disputed domain names are 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 names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant owns trademark registrations for FEIYUE, as noted under Section 4, “Factual Background” above.

The disputed domain names <chaussuresfeiyue.net> and <feiyueshoes.net> incorporate the trademark FEIYUE in its entirety. The mere addition to the disputed domain names of the terms “chaussures”, the English translation of which is “shoes”, and “shoes”, is not sufficient to avoid the confusing similarity.

Moreover, the Panel finds that under the circumstances of the case, the addition of “chaussures” and “shoes” would only increase such confusing similarity.

In view of the foregoing, the Panel finds that the disputed domain names <chaussuresfeiyue.net> and <feiyueshoes.net> are confusingly similar to a trademark in which the Complainant has rights, and therefore, the Complainant has succeeded on this first element under the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the Policy, the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Policy in paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.

Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then by concrete evidence demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.

The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and so the burden of production has effectively been shifted to the Respondent, who did not reply to the Complainant’s contentions and, therefore, has not made such showing.

In that connection, the Complainant has submitted relevant evidence showing that the Respondent has not made a bona fide offering of goods or services. The websites to which the disputed domain names resolve offer competing goods to those offered by the Complainant.

In the terms of the Policy, such use in the present circumstances does not appear to be a noncommercial or fair use of the disputed domain names and, therefore, the Panel finds that the Respondent is trying to misleadingly divert consumers to the websites to which the disputed domain names resolve. Moreover, the Panel finds that the Respondent is attracting Internet users to its websites for commercial gain. Such use cannot be considered a bona fide use, or fair or noncommercial use.

Additionally, there is no evidence that the Respondent is commonly known as or identified by neither “chaussuresfeiyue” nor “feiyueshoes”. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain names.

For these reasons, and in the absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.

The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.

The Complainant has identified itself as a French leading company that creates, manufactures and sells shoes under the trademark FEIYUE.

Moreover, the Complainant has filed relevant evidence to the Panel’s satisfaction showing that it owns trademark registrations for FEIUYE, which has been registered before the disputed domain names were registered on March 25, 2011, and March 27, 2011, respectively. The relevant evidence included an International registration No. 948536, registered on November 14, 2007, a United States registration No. 3253429, registered on June 19, 2007; a Canadian registration No. TMA735034, registered on February 24, 2009; a Singaporean registration No. T0719470J, registered on January 25, 2008; and a Community registration No. 006362669, registered on December 4, 2008, all of them in international class 25.

In view of the foregoing, and in the absence of a rebuttal from the Respondent, the Panel finds that the Respondent was aware or must have been aware of the trademark FEIYUE before registering the disputed domain names <chaussuresfeiyue.net> and <feiyueshoes.net>, which evidences bad faith registration.

Moreover, as stated by the Complainant and on the basis of the printouts of the websites to which the disputed domain names resolve, and in the absence of a rebuttal by the Respondent, the Panel finds that by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites or other on-line locations, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement.

For these reasons, the Panel finds that the Respondent both registered and is using the disputed domain names in bad faith and that the Complainant has therefore made out the third element of its case.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <chaussuresfeiyue.net> and <feiyueshoes.net> be transferred to the Complainant.

Miguel B. O'Farrell
Sole Panelist
Dated: June 7, 2011

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