WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FEIYUE v. Zhong Hua
Case No. D2010-1496
1. The Parties
The Complainant is FEIYUE of Paris, France represented by Cabinet Gilbey Delorey of France.
The Respondent is Zhong Hua of Beijing, People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <feiyuesneaker.com> (“Disputed Domain Name”) is registered with HiChina Zhicheng Technology Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2010. On September 7, 2010, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On September 8, 2010, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On September 13, 2010, the Center notified the Complainant that the language of proceeding is Chinese to which the Complainant requested that English be the language of proceeding. The Respondent also responded by requesting that Chinese be the language of proceeding. The Center notified the parties on September 16, 2010 that the Complaint is accepted in English and the Respondent may respond in Chinese or English and assessment of the appropriate language of proceedings is left to the Panel’s discretion accordance with paragraph 11 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”)
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2010.
The Center appointed Kar Liang Soh who is familiar with both English and Chinese as the sole panelist in this matter on October 15, 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
The Complainant is a manufacturer of shoes and sneakers under the trademark FEIYUE. The trademark FEIYUE was first used on sneakers in the 1920s in Shanghai. With the setting up of the Complainant on December 15, 2005 as a French company, it has since established retail and distribution channels in various European cities, Australia, Hong Kong, Thailand, Indonesia, Malaysia, Singapore, South Africa, USA and Canada.
The Complainant owns the following trademark registrations incorporating a stylized “<<” device and the word ”feiyue”, among others:
Jurisdiction Trademark No. Registration Date
United States 3253429 June 19, 2007
International 948536 November 14, 2007
European Union (CTM) 006362669 December 4, 2008
The Complainant is also the registrant of the domain name <feiyue-shoes.com> registered on November 18, 2005 which is used in connection with the Complainant’s activities including its online shop. The Complainant’s website shows prominent use of the stylized “<<” device and the word ”feiyue”.
Little is known about the Respondent other than the Disputed Domain Name which was registered on May 9, 2010, and the website which resolves from the Disputed Domain Name. The Respondent’s website shows prominent use of the stylized “<<” device and the word ”feiyue”. Online shopping cart facilities are also provided on the website in relation to shoes identified with the trademark FEIYUE.
5. Parties’ Contentions
The Complainant contends that:
(1) The Disputed Domain Name is confusingly similar to the Complainant’s trademark FEIYUE. The generic word “sneaker” in the Disputed Domain Name is insufficient to distinguish it from the Complainant’s trademark FEIYUE;
(2) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent’s name does not include the words “feiyuesneaker” or “feiyue” and is not commonly known as such. The Respondent does not own any trademark registration for FEIYUE. The Respondent has no relationship with and is not authorized to use the trademarks of the Complainant; and
(3) The Disputed Domain Name was registered and is being used in bad faith. The Respondent’s use of the Complainant’s stylized “<<” device and word FEIYUE on the Respondent’s website indicates that the Respondent had knowledge of the Complainant’s trademark FEIYUE at the time the Disputed Domain Name was registered. The Disputed Domain Name was registered and used to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of products on the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of Proceeding
Having considered the circumstances of the case, the Panel determines that English shall be the language of the proceeding under paragraph 11(b) of the Rules. The factors that the Panel has taken into account include particularly the following:
(1) The Complainant is French and does not understand Chinese;
(2) The Respondent is either conversant with English or has the resources to deal with English. This is evident from the exclusive use of English on the Respondent’s website;
(3) Despite the Center’s notification that the Complaint will be accepted in English and that the Respondent may respond in Chinese, the Respondent has chosen not to file a Response. Therefore, not only will requiring the Complaint to be translated into Chinese be unlikely to serve any purpose or result in any benefit to the proceeding, it will instead result in additional cost to the Complainant and delay the proceeding.
The Complainant is required to establish the following limbs of paragraph 4(a) of the Policy to succeed in the proceedings:
(1) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) The Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
By virtue of the trademark registrations indicated above, the Panel has no doubt that the Complainant has trademark rights in the word ”feiyue”. The word “feiyue” is a prominent part of the Disputed Domain Name. The suffix “sneaker” in the Disputed Domain Name is the only difference between the Disputed Domain Name and the trademark FEIYUE. It is a consensus view of past panel decisions that generic prefixes and suffixes to a trademark in a domain name are not capable of distinguishing the domain name from the trademark. The Panel agrees that “sneaker” is a generic descriptive word associated with the goods of the Complainant and is unable to distinguish the Disputed Domain Name from the trademark FEIYUE of the Complainant. Therefore, confusing similarity between the Disputed Domain Name and the Complainant’s trademark FEIYUE under the first limb of paragraph 4(a) is established.
B. Rights or Legitimate Interests
The evidence shows that the Respondent’s name is not associated with the word “feiyue”. The Complainant has denied any relationship with the Respondent. The Complainant has also confirmed that it did not authorize the Respondent to use the trademark FEIYUE. The Respondent has not offered any explanation for selecting the Disputed Domain Name. In the circumstances, in accordance with established principles, the Complainant has shown a prima facie case that the Respondent does not have any right or legitimate interest in the Disputed Domain Name. In the absence of any Response, the second limb of paragraph 4(a) of the Policy is also established.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) illustrates what constitutes bad faith registration and use of a domain name:
“… by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The use of the trademark FEIYUE together with the same “<<” device incorporated into the Complainant’s registrations is clear indication that the Respondent has prior knowledge of the Complainant and the Complainant’s trademark. The adoption of the Complainant’s trademark in relation to goods for which the Complainant’s trademark is registered is an obvious attempt at association with the Complainant. The deliberate association demonstrates the opportunistic bad faith frowned upon in past panel decisions (eg, Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing, WIPO Case No. D2010-0746). Such circumstances are likely to mislead a reasonable person visiting the Respondent’s website as to its source, sponsorship, affiliation, or endorsement of the website and the products purportedly made available for online sale on the website. The provision of shopping cart facilities on the Respondent’s website exhibits an objective of commercial gain.
The circumstances fall well within paragraph 4(b)(iv) and the Panel holds that bad faith use and registration under the third limb of paragraph 4(a) is established as well.
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 <feiyuesneaker.com> be transferred to the Complainant.
Kar Liang Soh
Dated: October 31, 2010