WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FEIYUE v. Zhangg San
Case No. D2011-0955
1. The Parties
The Complainant is FEIYUE of Paris, France, represented by Cabinet Gilbey Delorey, France.
The Respondent is Zhangg San of Beijing, Peoples’ Republic of China.
2. The Domain Name and Registrar
The disputed domain name <chinafeiyueshoes.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2011. On June 6, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On June 7, 2011, 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.
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 Respondent of the Complaint, and the proceedings commenced on June 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 29, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2011.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on July 13, 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 that creates, manufactures and sells shoes under the trademark FEIYUE.
The Complainant owns numerous trademark registrations including the word “feiyue” in several countries.
Furthermore, the Complainant has operated an Internet website under the domain name <feiyue-shoes.com> for many years.
The disputed domain name was registered in May 1, 2011.
The Panel accessed the disputed domain name on July 27, 2011, when it was linked to a webpage offering for sale FEIYUE branded shoes.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) The disputed domain name is confusingly similar to the Complainant’s trademark FEIYUE. The disputed domain name encompasses the word “feiyue”, which constitutes the sole distinctive word of the Complainant’s trademarks. The word “feiyue” is preceded by the geographical term “china”, which designates a country and is descriptive of the origin of the goods sold by the Respondent, and is followed by the generic word “shoes”, which describes the products offered for sale on the website. The addition of generic or highly descriptive words to a registered trademark is insufficient to distinguish the disputed domain name from the Complainant’s trademark. Since the terms “shoes” and “china” are descriptive, the consumers’ attention will be most concentrated on the highly distinctive and dominant word “feiyue”. The addition of the word “shoes” which describes the goods designated by the FEIYUE trademark and sold both by the Respondent and by the Complainant exacerbates the likelihood of confusion for the consumer who is inclined to believe that the website has been somehow authorized by the owner of the FEIYUE trademarks or at least that the Respondent is related, affiliated or sponsored by the Complainant, which is not the case.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is thus not commonly known under the names “chinafeiyueshoes” or “feiyue”. Moreover, the Respondent, Zhangg San does not own any known FEIYUE trademark. The Respondent does not have any relationship with the Complainant and is not authorized by the Complainant to use its trademarks, in particular as a domain name. The disputed domain name leads to a website which sells and promotes shoes, notably FEIYUE branded. The Complainant has never authorized the Respondent to sell or promote goods under its trademarks. The use of the trademark FEIYUE as a domain name and the promotion of goods infringing the Complainant’s trademarks on the related website are aimed to harm the Complainant’s reputation for the Respondent’s own commercial benefit.
(iii) The disputed domain name was registered and is being used in bad faith. The Complainant has never authorized the Respondent to register the disputed domain name, nor to promote and sell goods similar to the ones sold by the Complainant. The use of the trademark FEIYUE by the Respondent and the promotion of goods which directly compete with the goods sold by the Complainant evidence the Respondent’s knowledge of the Complainant’s trademark. The unauthorized use of the Complainant’s trademark has been done to attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. On April 21, 2011 a UDRP proceeding was filed before the Center against the Respondent regarding the similar domain names <chaussuresfeiyue.net> and <feiyueshoes.net>. Despite the filing of that Case, the Respondent did not hesitate to register the disputed domain name a few days after he became aware of the filing of that complaint, on May 1, 2011.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Annexes 7 to 11 to the Complaint demonstrate registrations of the FEIYUE trademark in several countries.
The trademark FEIYUE is wholly encompassed within the disputed domain name.
The disputed domain name also includes the geographical term “china” and the term “shoes”, which describes the kind of products sold by the Complainant under the FEIYUE brand.
Previous UDRP decisions have demonstrated that geographical and descriptive terms do not alter the underlying meaning of a domain name, so as to avoid confusing similarity. This has been held in many UDRP decisions (see e.g. Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S.M.A., Inc., WIPO Case No. D2000-0927).
As a result, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.
The registration and use of the disputed domain name to promote and sell shoes presenting the FEIYUE brand without the Complainant’s express authorization clearly can not be considered a bona fide offering of goods or a legitimate noncommercial or fair use.
Consequently, the Panel is satisfied that the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant’s trademark was already known in the shoes business when the disputed domain name was registered. Therefore, it is not feasible that the Respondent could ignore the Complainant’s reputation and business when it registered the disputed domain name.
Moreover, the use of the disputed domain name to sell FEIYUE branded shoes and the reproduction of the FEIYUE logo and official website make clear that the adoption of the word “feiyue” to compose the disputed domain name was not a coincidence.
The bad faith is emphasized by the fact that the products sold at the disputed domain name do not appear to be original FEIYUE shoes and are not manufactured or distributed by the Complainant.
Therefore, in doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainant’s trademark;
(ii) potentially obtains revenues from this practice; and
(iii) deprives the Complainant from directly selling its original products to prospective clients.
Accordingly, the Panel finds that the Complainant has proved that the disputed domain name was registered and is being used in bad faith, satisfying the third element 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 disputed domain name <chinafeiyueshoes.com> be transferred to the Complainant.
Date: July 27, 2011