WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FEIYUE v. Aziz Mouhmouh
Case No. D2011-1225
1. The Parties
The Complainant is FEIYUE of Paris, France, represented by Cabinet Moutard, France.
The Respondent is Aziz Mouhmouh of Montreal, Canada, represented by Mark Sumbulian, Canada.
2. The Domain Names and Registrar
The disputed domain names <feiyue-shop.com>, <feiyue-shop.info>, <feiyue-shop.net>, <feiyue-shop.org>, <feiyue-store.com> and <feiyuestore.com> are registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2011. On July 19, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain names. On July 21, 2011, Wild West Domains, 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 amended Complaint on July 22, 2011. 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 July 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2011. On August 15, 2011, the Respondent’s representative submitted a request for extension to file a response. The new due date for Response was August 23, 2011. The Response was filed with the Center on August 24, 2011.
The Center appointed Alberto De Elzaburu as the sole panelist in this matter on September 9, 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 following facts must be taken into account in the case at hand:
The Complainant is a French company, with place of business in Paris.
The Respondent is a natural person, with place of business in Montreal, Canada.
The priority dates of the trademark registrations in the name of the Complainant significantly predate those of the disputed domain names, which were registered on May 13, 2010.
On accessing the website corresponding to the disputed domain names, the website of Mad Dog Domains appears, but no possibility is offered to acquire products or engage services related to the FEIYUE trademark. Only in the case of one of the domain names, <feiyue-store.com>, does a photograph of sports footwear appear bearing the trademark FEIYUE, but, as in the other cases, no possibility is offered to acquire a product or engage any services, or to obtain any information of any sort.
5. Parties’ Contentions
The Complainant is the owner of international registration designating the EU No. 948536 FEIYUE (figurative), and Community trademarks nos. 5085873 FEIYUE (figurative) and 6362669 FEIYUE (figurative), as well as United States trademark No. 3253429 FEIYUE (figurative), Canadian trademark No. 1311186 FEIYUE (figurative) and two French trademarks, Nos. 63426388 FEIYUE (figurative) and 63426391 FEIYUE (figurative).
The disputed domain names are quasi identical or at least similar to the Complainant’s marks, given that “store” and “shop” are two descriptive elements and FEIYUE is the only distinctive element of each disputed domain name.
The Respondent has no rights or legitimate interests in the disputed domain names, since they were not used in connection with a bona fide offering of goods or services prior to receipt of any notice of the dispute; because the Respondent is not known by the name corresponding to the domain names, and because the Respondent has made illegitimate and unfair use of the domain names in an attempt to misleadingly divert consumers for commercial gain.
On June 14, 2010 the Complainant sent a warning letter to the Respondent requesting the withdrawal of the disputed domain names and the cessation of use of the term FEIYUE, to which the Respondent did not reply.
The disputed domain names have been registered in bad faith, as demonstrated by the long absence of use thereof.
Bad faith is also attested to by the fact that said domain names have been registered with a view to preventing the legitimate trademark owner from protecting its mark as a domain name under the <.es> extension.
For all the foregoing reasons, it is requested that the domain names <feiyue-shop.com>, <feiyue-shop.info>, <feiyue-shop.net>, <feiyue-shop.org>, <feiyue-store.com> and <feiyuestore.com> be transferred to the Complainant.
FEIYUE is a trademark created in China, which belongs to the company Double Coin Holding Ltd. The Complainant has therefore hijacked said trademark and is using it as its own name.
The Complainant has illicitly registered the trademark FEIYUE outside of China, and is now also attempting to hijack the corresponding domain name.
The company Double Coin Holding Ltd has brought actions against the Complainant’s trademark registrations before the French courts, and its use of the trademark FEIYUE predates all of the Complainant’s trademark registrations.
All of the Respondent’s actions in relation to the trademark FEIYUE have been taken in the knowledge and with the consent of the genuine owner of said mark, the Chinese company Double Coin Holding Ltd.
It is the Complainant who has acted in bad faith, in misappropriating the trademark FEIYUE.
Since the documentation attesting to the bad faith of the Complainant is currently held by others, it has not been possible to obtain it within the given term.
6. Discussion and Findings
A. Identical or Confusingly Similar
As set out in numerous decisions issued by the Center, the simple inclusion of a third party mark in a disputed domain name is sufficient to give rise to confusion and lead to the conclusion that the first of the UDRP’s requirements is met.
In the case at hand, the disputed domain names include the trademark FEIYUE, in which the Complainant holds the prior rights identified and cited in its corresponding brief, joined by a hyphen to the word “shop” in some cases, and to the word “store” in others. Both words are generic in nature, meaning that the distinctive character of the disputed domain names is confined to the term FEIYUE alone.
In addition, as is already well known and as established in other decisions issued by the Center, the top-level “.com”,”.info”,”.net” and ”.org” extensions are irrelevant for the purposes of comparison.
For all the foregoing reasons, the Panel finds that the first requirement set out in paragraph 4(a) of the Policy has been duly met.
B. Rights or Legitimate Interests
Turning to the sets of circumstances that would serve to attest to the existence of a right or legitimate interest in the disputed domain names in favour of the Respondent, and taking into account the arguments and evidence submitted by the parties in this complaint, the Panel finds that:
The Respondent has not demonstrated that he is commonly known by the name corresponding to the disputed domain names, or ever has been.
The Respondent has not attested to having made legitimate non-commercial use of the disputed domain name, without any intent to give rise to confusion among consumers.
The websites corresponding to the disputed domain names show no evidence of their current or past use in connection with a bona fide offering of goods or services.
However, the Respondent claims in his brief of reply to the Complaint that the registration of the disputed domain names is justified by his having obtained the authorization of a Chinese company by the name of Double Coin Holding Ltd, who he describes as the original creator of the FEIYUE trademark, and has submitted documentation attesting to said company’s ownership of the trademark in question in China.
A simple statement such as this cannot be taken into account by the Panel as a valid authorization that serves to justify the Respondent’s actions, for the following reasons:
The Respondent has not submitted any documentation evidencing that a legitimate owner of the FEIYUE trademark has authorized him to register the disputed domain names.
It is hard to understand that a person or entity licensed to use a mark or domain name is unable to submit even a copy of the documentation entitling them to take actions to promote or protect the licensed mark, one of which could perfectly well be the registration of the trademark as a domain name.
Finally, and irrespective of the Respondent’s claims that there have been disputes between the aforesaid Chinese company Double Coin Holding Ltd and the Complainant, of greater significance is the fact that the latter has fully attested to its ownership of genuine and consolidated trademark rights that give it full standing to be considered the owner of the trademark FEIYUE in the jurisdictions in which the cited registrations were obtained. Such jurisdictions include the European Union and, by extension, Spain.
It has been established in numerous decisions issued by the Center that once a complaint has been admitted against the Respondent, the burden of proof shifts to the latter, who must refute the allegations contained in the complaint by means of “concrete evidence”.
A clear example is the decision issued in ARAG Allgemeine Rechtsschitz-Versicherings-AG v. Seung Nam Kim, WIPO Case No. D2006-1001, which stated that:
“The extent of the Response is some unsupported statements. Previous panels have consistently held that, once the Complainant establishes a prima facie case, the burden shifts to the Respondent to provide “concrete evidence” in response”.
Accordingly, the Panel holds that the Respondent has failed to provide evidence of any rights or legitimate interests in the disputed domain names, as a result of which the second of the requirements set out in paragraph 4 a) of the Policy has also been fulfilled.
C. Registered and Used in Bad Faith
Taking into account the specific sets of circumstances established under the Policy, which, if present, would serve to justify the existence of bad faith in the registration and use of the disputed domain names, the Panel is of the opinion that the registration of both domain names could be considered an act aimed at preventing the owner of the prior rights from using those rights via the corresponding domain names.
Although it is true that it has not been shown that the Respondent has engaged in a pattern of conduct, as expressly referred to in paragraph 4(b) (ii) of the Policy, the damage caused to the Complainant is quite clear, since not only is the Complainant unable to obtain the disputed domain names on the basis of the rights it owns, there is also the possibility that any consumer searching for the FEIYUE trademark may access a website that appears to be supported by the legitimate owner of the mark, when this is not the case, and come to the conclusion that no services or products are offered via the websites corresponding to the disputed domain names.
What is more, in relation thereto, investigations conducted by the Panel leave no scope for doubting the inactivity of the disputed domain names.
A great many of the Center’s decisions, including that issued in TUTTO PICCOLO, S.A.U. v. Fabrica de Encajes Pérez Palmer, WIPO Case No. D2010-1110, have stated that the absence of use of a domain name is tantamount to use in bad faith, in that the domain name in question is being used in order to prevent the legitimate owner of the mark from registering it in a corresponding domain name.
In view of the above, the Panel finds that the complaint also fulfils the third of the requirements set out in paragraph 4(a) 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 names, <feiyue-shop.com>, <feiyue-shop.info>, <feiyue-shop.net>, <feiyue-shop.org>, <feiyue-store.com> and <feiyuestore.com> be transferred to the Complainant.
Alberto De Elzaburu
Dated: September 30, 2011