WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
"Frey Wille" GmbH & Co. KG v. Säisä Timmy/Sis Timmy, 张润发
Case No. D2015-1859
1. The Parties
The Complainant is "Frey Wille" GmbH & Co. KG of Vienna, Austria, represented by Salomonowitz | Horak, Austria.
The Respondent is Säisä Timmy/Sis Timmy, 张润发 of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <freywillejewellery.com> (the "Disputed Domain Name") is registered with Xin Net Technology Corp. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 19, 2015. On October 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 20, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On October 20, 2015, the Center transmitted an email in English and Chinese to the parties regarding the language of the proceeding. On October 23, 2015, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not submit any comments.
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 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on October 30, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 20, 2015.
The Center appointed Kar Liang Soh as the sole panelist in this matter on December 7, 2015. 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 an Austrian corporation founded in 1951. It is a leading producer of jewellery, decorations and accessories, including enamel and gold jewellery, with more than 100 boutiques worldwide, including in Milan, Paris, London, New York, Moscow, Dubai, Los Angeles, Beijing and Xian.
The Complainant has been promoting the trademark FREY WILLE and the following logo (the "Logo") in association with its products:
In particular, the Complainant has been spending over EUR 6 million per year worldwide in recent years for marketing.
The Complainant owns various trademark registrations incorporating the words "frey wille" in many jurisdictions, including:
August 8, 2013
March 3, 2010
Both of the above International registrations designate China. International registration no 1047059 also incorporates the Logo. The trademark FREY WILLE has been involved in previous domain name disputes (e.g., Frey Wille GmbH & Co KG v. Zhuang Yong, WIPO Case No. D2014-1840; Frey Wille GmbH & Co KG v. Domain Admin, PrivatProtect.org/liuhua, WIPO Case No. D2013-1334; Frey Wille GmbH & Co KG v. Li ning, WIPO Case No. D2013-2178; Frey Wille GmbH & Co KG v. Chen Lihuang, WIPO Case No. D2012-1977; Frey Wille GmbH & Co KG v. Steve Haiter, WIPO Case No. D2012-1451; Frey Wille GmbH & Co KG v. Den Gledenov, WIPO Case No. D2010-0438) all of which were determined in favour of the Complainant.
The Complainant operates its principal website under the domain name <freywille.com> where the trademark FREY WILLE and the Logo are displayed prominently.
The WhoIs information relating to the Disputed Domain Name identifies the Respondent as one or more individuals based in Beijing. Beyond the WhoIs information, little information about the Respondent is known. The Disputed Domain Name was registered on September 5, 2014. As of October 30, 2015, the Disputed Domain Name resolved to a website (the "Respondent's Website") which, in addition to displaying the trademark FREY WILLE and the Logo prominently in relation to jewellery, decorations and accessories, appears to offer online shopping cart facilities for the purchase of products. The Respondent's Website features a copyright notice in the form "Copryight © 2014 frey wille jewellery" in the footer. In addition, the content of the Respondent's Website identifies itself as a "United States-based global online retailer".
5. Parties' Contentions
The complainant contends that:
a) The Disputed Domain Name is confusingly similar to the trademark FREY WILLE in which the Complainant has rights. The Disputed Domain Name incorporates the trademark FREY WILLE in its entirety. The word "Jewellery" in the Disputed Domain Name is obviously descriptive of a website where jewellery is offered for sale;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant has never granted any license or other right to the Respondent to use any of the Complainant's trademarks or to register a domain name incorporating the trademark FREY WILLE. The Respondent is not an authorised dealer for the Complainant's products. The content of the Respondent's Website clearly shows that the Respondent was well aware of the Complainant's activities and trademarks. Neither the Respondent's Website nor the WhoIs data of the Disputed Domain Name indicate that the Respondent might be known by the name "frey wille". The Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services; and
c) The Disputed Domain Name was registered and is being used in bad faith. The Respondent is dealing in counterfeit products under the trademark FREY WILLE. The Respondent's Website creates an impression to Internet users that it is an official website of the Complainant, or is endorsed or sponsored by the Complainant. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's Website by creating a likelihood of confusion.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 Language of Proceeding
The Complainant has requested that English be adopted as the language of the proceeding. The language of the Registration Agreement is Chinese. Therefore, the default language of the proceeding should be Chinese. However, the Panel is empowered to determine otherwise having regard to the circumstances pursuant to paragraph 11 of the Policy.
Having reviewed the circumstances, the Panel allows the Complainant's request for English to be adopted as the language of the proceeding. In making this determination, the Panel has taken into account the following factors:
1) The Respondent's Website was entirely in English and demonstrates a working knowledge of the English language;
2) The Respondent's Website holds itself, and correspondingly the Respondent, out as a United States-based global online retailer. English is the prevalent language of the United States;
3) The Complaint has already been filed in English, while the Respondent has chosen not to respond. Requiring that the Complaint be translated into Chinese would place an unnecessary burden on the Complainant;
4) The Respondent has not filed any response or commented on the Complainant's request that English be adopted as the language of the proceeding; and
5) Requiring a Chinese translation of the Complaint will lead to unnecessary delay in the proceeding.
In order to succeed in this proceeding, the following limbs of paragraph 4(a) of the Policy must be established:
a) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
c) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
By virtue of the trademark registrations in the evidence, the Complainant has established that it owns rights in the trademark FREY WILLE. The Disputed Domain Name incorporates the trademark FREY WILLE in its entirety. The only difference between the FREY WILLE trademark and the Disputed Domain Name is the addition of the generic suffix "jewellery" which clearly describes products offered on the Respondent's Website. It is the consensus opinion of past panels that mere addition of generic or descriptive terms to a trademark does not avoid confusing similarly between the trademark and the resulting domain name. The Panel does not see any reason to depart from this consensus opinion and holds that the Disputed Domain Name is confusingly similar to the trademark FREY WILLE. The first limb of paragraph 4(a) of the Policy is established.
B. Rights or Legitimate Interests
The Complainant has confirmed that the Respondent is not authorized, licensed or otherwise allowed by the Complainant to use the trademark FREY WILLE or to register a domain name incorporating the same. There is no evidence before the Panel that suggests that the Respondent is commonly known by the Disputed Domain Name. The Panel also agrees that the Respondent's use of the Disputed Domain Name to resolve to a website prominently displaying the trademark FREY WILLE and the Logo does not amount to bona fide use. Therefore, prima facie, the Respondent does not have rights or legitimate interests in the Disputed Domain Name. In the absence of any evidence or explanation to the contrary offered by the Respondent, the prima facie case has not been rebutted and the Panel holds that the second limb of paragraph 4(a) of the Policy is also established.
C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy identifies an example of bad faith registration and use as follows:
"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 you web site or location."
In view of the manner in which the Respondent has used the trademark FREY WILLE and the Logo on the Respondent's Website, the Panel finds it inconceivable that the Respondent was unaware of the same. The registration of the Disputed Domain Name could only have risen from an awareness and familiarity with the trademark FREY WILLE and its associated goods.
The intention of commercial gain is evident from the content of the Respondent's Website, in particular, from the offering of products (whether or not shown to be counterfeit) for sale, and the apparent featuring of online shopping cart facilities. The copyright assertion in the footer of the Respondent's Website can in all likelihood only have the effect of affiliating the Respondent and/or the Respondent's Website with the Complainant and/or the trademark FREY WILLE. The Panel is of the view that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's Website by creating a likelihood of confusion with the trademark FREY WILLE as to the source, sponsorship, affiliation, or endorsement of the Respondent's Website or of the products on the same. The apparently false claim of the Respondent being a United States-based global online retailer (when the Respondent appears to be one or more individuals based in Beijing) only serves to add to the confusion.
As such, the Panel holds that circumstances fall squarely within the situation of bad faith outlined in paragraph 4(b)(iv) of the Policy, and that the third limb of paragraph 4(a) of the Policy is established.
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 <freywillejewellery.com> be transferred to the Complainant.
Kar Liang Soh
Date: January 4, 2016