WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Frey Wille GmbH & Co. KG v. dong wu / wu dong

Case No. DCC2017-0005

1. The Parties

The Complainant is Frey Wille GmbH & Co. KG of Vienna, Austria, represented by Salomonowitz | Horak, Austria.

The Respondent is dong wu / wu dong of Putian, Fujian, China.

2. The Domain Name and Registrar

The disputed domain name <frey-willes.cc> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2017. On April 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2017, 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 April 25, 2017, the Complainant filed an amendment to the Complaint with the Center.

On April 26, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On April 27, 2017, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amendment to 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 May 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2017.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on June 13, 2017. 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 was founded in 1951 and is based in Vienna, Austria. The Complainant has been a global leader in artistic jewelry, decoration and accessories for decades. The Complainant, whose design team consists of artists, goldsmiths, and craftsmen, specializes in luxury enamel and gold jewelry.

The Complainant’s main business models are limited production and exclusive distribution. The Complainant operates more than 100 flagship-boutiques worldwide, including shops in Paris, Venice, London, Moscow, Vancouver, Dubai, Beijing, and Singapore. Most of the shops are owned by the Complainant and others are authorized partner shops. The Complainant operates its principal website at “www.freywille.com”. The Complainant has spent more than EUR 6 million per year worldwide on marketing and promotion in the last business years.

The Complainant owns numerous trademark registrations around the world for its mark FREY WILLE, its Sphinx logo and the combination of both. The Complainant owns International Registration No. 824396 (August 25, 2003) for the mark FREY WILLE in International Classes 3, 14, 16, 18, and 25 and International Registration No. 1047059 (March 3, 2010) for the mark FREY WILLE and Sphinx design in International Classes 14, 16, 18, and 25. Both International Registrations are designated for protection in dozens of jurisdictions, including the European Union, the United States of America (“United States”), the Republic of Korea, the Russian Federation, Australia, and China.

The Respondent registered the disputed domain name on November 14, 2016. At the time the Complaint was filed, the disputed domain name resolved to an online retail website that prominently displayed the FREY WILLE and Sphinx design mark and otherwise contained the FREY WILLE mark throughout. The Respondent’s website stated that it was “Powered by Frey Wille, Frey Wille jewelry” and included a copyright notice in the name of “Frey Wille Outlet”. The website also included images copied from older versions of the Complainant’s website. The Respondent’s website was written in English and the default currency selected was US dollars. The website advertised and offered for sale allegedly counterfeit goods.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant owns the FREY WILLE trademark. The disputed domain name incorporates the Complainant’s FREY WILLE mark entirely. The addition of a letter “s” to the Complainant’s mark in the disputed domain name does not distinguish the disputed domain name. The disputed domain name contains a common or obvious misspelling of a trademark and is an example of “typosquatting”. It is confusingly similar to the Complainant’s mark as the Complainant’s mark remains the dominant or principal component of the disputed domain name. Additionally, the hyphen in the disputed domain name does nothing to distinguish the disputed domain name from the Complainant’s mark. Finally, the Top-Level domain (“TLD”) “.cc” is to be ignored when assessing identity or confusing similarity. Accordingly, the disputed domain name is confusingly similar to the Complainant’s mark.

The Respondent has no rights or legitimate interest in respect of the disputed domain name. The Complainant has never granted a license or other right to the Respondent to use any of the Complainant’s marks or to register a domain name incorporating the FREY WILLE mark. The Respondent is not an authorized dealer of the Complainant’s products. The products offered for sale on the Respondent’s website are counterfeit. The Respondent is obviously attempting to ride freely on the Complainant’s reputation and goodwill. The Respondent is not 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. Instead, the Respondent is offering counterfeit goods and has copied images from an older version of the Complainant’s website. Therefore, the Respondent has no legitimate interest in respect of the disputed domain name.

The disputed domain name was registered and is being used in bad faith. FREY WILLE is a famous mark, and the Respondent was aware of this fact at the time of registration of the disputed domain name. Due to the Complainant’s strong reputation and extensive distribution around the world, it is not possible to conceive of any plausible cause of legitimate registration. The Respondent registered the disputed domain name solely for the purpose of tricking Internet users into buying counterfeit products so that the Respondent could profit. Accordingly, the disputed domain name was registered in bad faith.

The Respondent deliberately created a false and misleading impression that the Respondent is affiliated with the Complainant. The Respondent created the impression that the Respondent’s website was an official online retail store operated by the Complainant. The Respondent’s website stated that it was “Powered by Frey Wille, Frey Wille jewelry” and included a copyright notice in the name of “Frey Wille Outlet”. The Respondent’s website featured the FREY WILLE Sphinx logo. The Respondent copied images from older versions of the Complainant’s website. This created a false impression that the Respondent is an official distributor or is at least somehow endorsed or sponsored by the Complainant. The Respondent’s website FAQ section is written in broken English and advertised other luxury goods unrelated to the Complainant, such as shoes by designer Christian Louboutin. The customer reviews on the Respondent’s website are written in a similar fashion and are likely to be fake, creating an impression of positive customer feedback. The use of the disputed domain name to sell competing products to attract Internet users for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation, or endorsement of the website constitutes use in bad faith. The website “www.scamadvisor.com”, dedicated to fighting online fraud, classifies the Respondent’s website as a high risk website with a 0% trust rating. This is further indication of bad faith. Accordingly, the disputed domain name is being used in bad faith.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The Panel determines that the language of the proceeding should be English. Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. In this case the language of the Registration Agreement is Chinese. However, the Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant requested the proceeding be in English. The Center formally notified the Respondent of the Complaint in both Chinese and English, giving the Respondent opportunity to comment on the language of the proceeding. The Respondent did not comment or request that the language of the proceeding be Chinese. Additionally, the Respondent’s conduct suggests that the Respondent understands English. At the time the Complaint was filed, the disputed domain name resolved to a website written in English. The default currency listed on the Respondent’s website was US dollars, indicating that the Respondent regularly engaged in business with customers in the United States, where English is most commonly used. Substantial additional expense and delay likely would be incurred if the Complaint must be translated into Chinese. The Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English, in light of these circumstances.

6.2 Substantive Issues

The Policy provides for transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name is confusingly similar to a mark in which the Complainant has rights.

The Complainant has rights in the FREY WILLE mark. It is the registered owner of trademark registrations for the FREY WILLE mark in several jurisdictions, including in China where the Respondent is located. Use and registration of the FREY WILLE mark by the Complainant precedes the Respondent’s registration of the disputed domain name by many years. The Panel accepts that the Complainant’s mark is internationally well-known.

The disputed domain name is confusingly similar to the FREY WILLE mark. The disputed domain name is composed of the term “frey-willes” and the TLD “.cc”. The disputed domain name encompasses the FREY WILLE mark in its entirety. The only additional elements are the letter “s”, a hyphen, and the TLD. The additional letter “s” does not distinguish the disputed domain name from the Complainant’s mark. The addition of a single letter to the Complainant’s mark “does not significantly affect the appearance or pronunciation of the [disputed] domain name. This conduct is commonly referred to as ‘typosquatting’ and creates a virtually identical and/or confusingly similar mark to the Complainant’s trade-mark.” Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073. Punctuation is irrelevant in the confusing similarity analysis and does not distinguish the disputed domain name from the Complainant’s mark. See, e.g., Yahoo! Inc. v. wangwe gaohaolvshishiwusuo/shaoxiaogen, wang tian, ni maiwo, fangjincheng, WIPO Case No. D2014-0714. Similarly, the TLD, being a technical part of the disputed domain name, is not relevant in determining whether the disputed domain name is identical or confusingly similar to the FREY WILLE mark and is without legal significance. See, e.g., CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. The Complainant’s mark FREY WILLE remains the dominant component of the disputed domain name and the disputed domain name is, therefore, confusingly similar to the Complainant’s mark.

B. Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in respect of the disputed domain name.

Under paragraph 4(c) of the Policy, the Respondent may demonstrate rights or legitimate interests in a disputed domain name by showing any of the following circumstances, in particular but without limitation:

(i) The Respondent’s use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute; or

(ii) The Respondent has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) The Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent is not using, nor is there evidence that the Respondent has made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services as contemplated by paragraph 4(c)(i) of the Policy. First, the Respondent used the disputed domain name to publish a website promoting goods and services that compete directly with the Complainant’s (including competing luxury goods) and which could be confused with those offered by the Complainant. This is not a bona fide offering. See, e.g., America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (“[I]t would be unconscionable to find that a bona fide offering of services in a respondent’s operation of a web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business.”). Second, the Respondent used the disputed domain name in connection with the sale of counterfeit goods. There can be no legitimate interest in the sale of counterfeit goods. See, e.g. Mattel, Inc. v. Magic 8 ball factory, WIPO Case No. D2013-0058. Third, the FREY WILLE mark is long-established and known globally, including in China, the location of the Respondent. In the absence of evidence to the contrary, knowledge of the Complainant and its rights in the FREY WILLE mark may be imputed to the Respondent at the time of registration of the disputed domain name. “The inevitable conclusion is that these words are not ones that the Respondent would legitimately choose in the context of provision of goods, services or information via a web site unless seeking to create an impression of an association with the Complainant.” See Harvey Norman Retailing Pty Ltd v. gghome.com Pty Ltd, WIPO Case No. D2000-0945. No rights or legitimate interests can be created where the Respondent would not have chosen the disputed domain name unless seeking to create an impression of association with the Complainant. See Drexel University v. David Brouda, WIPO Case No. D2001-0067.

There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Complainant never authorized the Respondent to use the FREY WILLE mark or to register a domain name including the FREY WILLE mark.

The Respondent is not making any noncommercial or fair use of the disputed domain name. To the contrary, the evidence in the record indicates that the Respondent used the disputed domain name for commercial gain by seeking to create an impression of an association with the Complainant and to misleadingly divert consumers.

C. Registered and Used in Bad Faith

The Respondent registered and used the disputed domain name in bad faith.

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) Circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) The Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website or location or of a product or service on such website or location.

The present case fits clearly within the situation described in paragraph 4(b)(iv) of the Policy. The Respondent was undoubtedly aware of the Complainant and its FREY WILLE mark at the time of registration of the disputed domain name and that such registration was in bad faith. The Complainant and its FREY WILLE mark are widely known throughout the world. Additionally, the Complainant owns trademark registrations in several jurisdictions, including in China where the Respondent is located. Although the Respondent may not be under an obligation to conduct an exhaustive trademark search before registering a domain name, a simple Internet search for FREY WILLE would have yielded many obvious references to the Complainant. The Respondent must have had the Complainant’s famous trademark in mind when the Respondent registered the disputed domain name, as evidenced by the Respondent’s use of the disputed domain name to direct Internet users to a website that the Respondent intentionally made to look like an official website of the Complainant and to sell counterfeit goods that compete with the Complainant’s goods. See Balenciaga v. liu zhixian, zhixian liu, WIPO Case No. D2010-1831. The Respondent’s registration of the disputed domain name incorporating the Complainant’s mark, being fully aware of the Complainant’s rights in the mark, without any right or legitimate interest in doing so is registration in bad faith. See, e.g., Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.

The Respondent must have been aware that Internet users may reasonably believe that the disputed domain name and resolving website would be owned, controlled, established or otherwise associated with the Complainant. See AXA S.A. v. P.A. van der Wees, WIPO Case No. D2009-0206. The Respondent used the disputed domain name to direct Internet users to a website that featured the Complainant’s mark throughout and that included images from older versions of the Complainant’s website. The Respondent’s website does not offer any statements indicating that the Respondent and the website lack affiliation with the Complainant. Indeed, by copying the look and feel of the Complainant’s website, the Respondent affirmatively created the false impression that the Respondent’s website is controlled by or affiliated with the Complainant. The Respondent has intentionally attempted to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainants’ FREY WILLE mark as to the source, sponsorship, affiliation, or endorsement of such website. These activities amount to bad faith use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy. Additionally, the Respondent used the disputed domain name to sell counterfeits of the Complainant’s goods. This is further indication of use in bad faith. See Sanofi-aventis v. Igor Peklov, WIPO Case No. D2008-1419; Chrome Hearts LLC v. James Hart, WIPO Case No. DCC2011-0005. Accordingly, the Panel finds that the Respondent used the disputed domain name in bad faith.

7. Decision

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, <frey-willes.cc>, be transferred to the Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: June 23, 2017