WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fendi S.r.l. v. Gueijuan Xu
Case No. D2018-0749
1. The Parties
The Complainant is Fendi S.r.l. of Rome, Italy, represented by Studio Barbero, Italy.
The Respondent is Gueijuan Xu of Shaoguanshi, China.
2. The Domain Name and Registrar
The disputed domain name <jpfendishop.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2018. On April 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2018, 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.
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, and the proceedings commenced on April 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2018.
The Center appointed Teruo Kato as the sole panelist in this matter on May 11, 2018. 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
According to the Complainant, the Complainant in the present proceedings is an Italian fashion house, and its origin dates back to when a family-run fur and leather shop was opened in Rome in 1925. Its portfolio of FENDI trademarks was used by the Complainant or its predecessor in title for more than 90 years in connection with products of the high-fashion and leather industry, including ready-to-wear clothes, handbags, small leather goods, luggage, shoes, jewelry, eyewear, fragrances, and home furniture. The Complainant’s products are now commercialized in many countries with more than 200 stores in different locations, including China, where the Respondent is based, in which there are 19 flagship stores.
The Complainant owns, inter alia, International Trademark Registration No. 426761, registered on December 1, 1976 for FENDI. Additionally, the Complainant has registered numerous domain names worldwide consisting of or comprising the trademark FENDI, including, amongst others, <fendi.com> registered on December 26, 1995, and <fendi.cn>, registered on April 20, 2005.
The disputed domain name <jpfendishopo.com> was registered on July 18, 2017. The address for the registrant of the disputed domain name is given as being in Guangdong, China.
The website at the disputed domain name is in Japanese and purports to sell Fendi products at substantial discounts, claiming to be an official online store (as per the statement in Japanese “フェンディ公式オンラインストア”meaning “Fendi official online store”).
The Complainant requests that the disputed domain name be transferred to the Complainant.
5. Parties’ Contentions
The Complainant contends that it is the owner of various trademarks registered internationally, at community or local level and, to the extent that such registrations were made and remain in the name of Fendi Adele S.r.l., the Complainant contends that the Complainant took over the rights of the latter as the result of a merger by incorporation in 2017.
The Complainant also contends that the disputed domain name is confusingly similar to the Complainant’s FENDI trademark, that the generic term “shop” and the letters “jp” (which the Complainant contends to be an abbreviation of Japan) should be disregarded in considering the confusing similarity.
The Complainant further contends that the Respondent is not a licensee, an authorized agent of the Complainant, or in any other way authorized to use the Complainant’s trademark FENDI, and that the Respondent is not commonly known by the disputed domain name as an individual, business, or other organization, and that Fendi is not the family name of the Respondent, and that the Respondent does not make any bona fide use or trade under the disputed domain name.
Moreover, the Complainant contends that the circumstances in which goods are offered for sale on the Respondent’s website at the disputed domain name “suggest that the goods are very likely counterfeited”.
The Complainant also contends that the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain name is identical or confusingly similar to that trademark or service mark.
The Complainant submitted evidence of various trademark registrations and the Panel is satisfied that the Complainant is the owner of FENDI registered trademarks, including inter alia:
- International Trademark Registration No. 426761 of December 1, 1976, in Classes 03, 18, 24, 25;
- International Trademark Registration No. 483395 of March 22, 1984, in Class 9 designating also China;
- International Trademark Registration No. 483514 of March 26, 1984, in Class 16;
- International Trademark Registration No. 484881 of May 7, 1984, in Classes 20, 34;
- International Trademark Registration No. 492942 of March 18, 1985, in Classes 12, 14;
- International Trademark Registration No. 906325 of September 18, 2006, in Classes 3, 9, 14, 18, 20, 21, 24, 25, 27 and 35 designating also China;
- International Trademark Registration No. 1130243 of June 06, 2012, in Classes 3, 9, 14, 18, 20, 24, 25, 35 and 43 designating also China;
The Complainant also submitted evidence of the following two trademark registrations which state Fendi Adele S.r.l. as the respective owners.
- Chinese Trademark Registration No. 3608117 of January 21, 2005, in Class 14; and
- Japanese Trademark Registration No. 1411143 of March 28, 1980, in Classes 14, 18, 21, 25 and 26.
The Complainant contends “that part of the trademark portfolio (including the two above-mentioned Chinese and Japanese registrations) is in the name of Fendi Adele S.r.l., a company that in 2017 was merger by incorporation into Fendi S.r.l.” and “Complainant is entitled to rely upon Fendi Adele S.r.l.’s trademark registrations and use of FENDI distinctive sign since, as a result of the incorporation, it took over all the active and passive assets of the merged company in all contractual relations, actions, rights, obligations and obligations of the latter, of any nature.”
The Panel finds that, in light of the seven International Trademark Registrations in the name of the Complainant as cited above, it is not necessary for the Panel to examine the identity of the current owner of the said Chinese and Japanese Trademark Registrations for the purpose of this element of the Policy.
As to the confusingly similar element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the trademark rights which have been proved.
Section 1.11.1 of the WIPO Overview 3.0 states that “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”, and the Panel finds no reason why this established practice should not be applied to the present case.
Apart from the generic Top-Level Domain (“gTLD”), the disputed domain name consists of the Complainant’s trademark FENDI and the geographical term “jp” (initials for Japan) in combination with the dictionary term “shop”. The Panel finds that both additional terms are of a descriptive nature only and that the distinctive element of the disputed domain name is the term “fendi”.
It is well established that, where a disputed domain name incorporates, as here, the entirety of a complainant’s trademark, the addition of common terms does not serve to distinguish adequately the domain name from the trademark. (See Salvatore Ferragamo S.p.A v. Ying Chou, WIPO Case No. D2013-2034; Salvatore Ferragamo S.p.A. v. Haonan Hong, WIPO Case No. D2013-2040; Salvatore Ferragamo S.p.A. v. Brian E. Nielsen, WIPO Case No. D2014-1123; and Salvatore Ferragamo S.p.A. v. Wei Huan, WIPO Case No. D2014-1290).
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to 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, even if it has acquired no trademark or service mark rights; 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 or service mark at issue.
The consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of a domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0).
In the present case, the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name. By not submitting a response, the Respondent has failed to overturn such prima facie case and has also failed to invoke any of the defenses as set out in paragraph 4(c) of the Policy.
The Respondent’s use of the disputed domain name does not constitute a legitimate noncommercial or fair use within the view of paragraph 4(c)(iii) of the Policy because, among others, the disputed domain name is redirected to a commercial website publishing the Complainant’s figurative trademarks and official images, claiming to be the Complainant’s official online store, and offering for sale FENDI branded products, which the Complainant alleges are likely counterfeited. In the circumstances the Panel is satisfied that the Respondent is making a commercial gain, or at least sought to make it, by deceptively attracting Internet users to a supposed FENDI online shop.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
In order to assess whether the Respondent registered and uses the disputed domain name in bad faith, paragraph 4(b) of the Policy provides examples constituting evidence of bad faith, which includes the following:
“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his website 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 the said website location or of a product or service on that website location.”
The Panel notes that the trademark FENDI was registered and extensively used worldwide long before the disputed domain name was registered. Therefore, the Respondent is most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain name. Registration in bad faith can be inferred under such circumstances.
The Panel further notes and accepts the Complainant’s contention that at the disputed domain name the Respondent offers for sale unauthorized items bearing the Complainant’s FENDI trademarks, holding itself as the “Fendi official online store”, thereby taking unfair advantage of the reputation of the Complainant’s trademark, and uses the Complainant’s official advertising images with the intention to create confusion regarding the Complainant’s affiliation, sponsorship, or endorsement of the Respondent’s website and the products offered on that website (see paragraph 4(b)(iv) of the Policy as quoted above).
Therefore, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. The third requirement of the Policy has been met.
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, <jpfendishop.com>, be transferred to the Complainant.
Date: May 21, 2018