WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Frey Wille GmbH & Co. KG v. Dong Wu / Wu An

Case No. D2016-1657

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 An of Quanzhou, Fujian, China.

2. The Domain Name and Registrar

The disputed domain name <freywilles.net> is registered with West263 International Limited (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2016. On August 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 2016, 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 August 24, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On August 25, 2016, the Complainant requested that the language of the proceeding be English or, failing that, English and Chinese. The Respondent did not comment on the language of the proceeding.

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 both English and Chinese, and the proceeding commenced on August 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2016.

The Center appointed Matthew Kennedy as the sole panelist in this matter on September 22, 2016. 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 company that produces jewelry and fashion accessories. It was founded by Michaela Frey and Friedrich Wille. It operates shops in countries around the world, including China. It is the owner of multiple trademark registrations, including International Trademark registration no. 824396 for FREY WILLE, registered in 2003, and International Trademark registration no. 1047059 for FREY WILLE and device, registered in 2010. Both these registrations designate multiple jurisdictions, including China, and both specify goods in multiple classes, including jewelry in class 14. The Complainant operates its principal website at “www.freywille.com”.

The Respondent is an individual located in China. He registered the disputed domain name on March 14, 2016. The disputed domain name resolves to a website, in English, that is an online jewelry shop. The website displays a banner “Frey Wille Online Sale | Frey Wille Jewelry Shop” and offers for sale what is alleged to be the Complainant’s jewelry. Prices are quoted in US dollars.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s FREY WILLE trademark. The disputed domain name takes over that mark in its entirety and the mark is the only distinctive element in the disputed domain name. The additional letter “s” does not constitute a distinctive element.

The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is in no way cooperating with the Respondent, in particular, the Complainant has never granted any license or other right to the Respondent to use any of the Complainant’s trademarks or to register any domain name incorporating the trademark FREY WILLE. The Respondent is not an authorized dealer in the Complainant’s products; the products that it offers for sale are all counterfeit. The Respondent is not known under the name “Frey Wille”.

The disputed domain name was registered and is being used in bad faith. FREY WILLE is a famous trademark and the Respondent was certainly aware of this fact at the time of registration of the disputed domain name. The Respondent is deliberately creating the false and misleading impression that he is affiliated with the Complainant. The Respondent’s website even contains statements creating the impression that the disputed domain name leads to an official online store operated by the Complainant.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English or, failing that, both English and Chinese. Its main arguments are that the website to which the disputed domain name resolves is in English and that it would be unduly burdensome for the Complainant to translate the Complaint into Chinese because it does not speak that language. The Respondent did not comment on the language of the proceeding.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding takes place with due expedition. Prior UDRP panels have noted that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that the Complaint in this proceeding was filed in English. The Panel also notes that the website to which the disputed domain name resolves is in English from which it can be inferred that the Respondent understands that language. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

6.2. Analysis and Findings

The Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant. Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(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

Based on the evidence submitted, the Panel finds that the Complainant has rights in the trademark FREY WILLE.

The disputed domain name incorporates the Complainant’s trademark, omitting only the space between the words “frey” and “wille”. This omission can be disregarded in a comparison with the Complainant’s trademark as domain names do not include spaces for technical reasons.

There are two additional elements in the disputed domain name. One is the letter “s” after “freywille” but this difference is so minor that it does not dispel confusing similarity with the trademark. The other additional element is the generic Top-Level Domain (“gTLD”) suffix “.net” but a gTLD suffix generally has no capacity to dispel confusing similarity with a trademark either. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080. Consequently, the Complainant’s trademark is the dominant and only distinctive element of the disputed domain name.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

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

(ii) [the Respondent] (as an individual, business, or other organization) [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 Panel has already found that the disputed domain name is confusingly similar to the Complainant’s FREY WILLE trademark. The only distinctive element of the disputed domain name is the Complainant’s trademark, minus the space. Yet according to the Complaint, the Complainant has never granted any license or other right to the Respondent to use any of the Complainant’s trademarks or to register any domain name incorporating the trademark FREY WILLE and the Respondent is not an authorized dealer in the Complainant’s products.

As regards the first circumstance above, the disputed domain name is being used with a website that offers for sale what is alleged to be the Complainant’s jewelry. Even if the products are genuine, nothing on the website discloses the Respondent’s lack of relationship with the Complainant. Further, the evidence on the record shows that, on request, the website can also be used to source products unrelated to the Complainant. This evidence indicates that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Accordingly, the Panel does not find that the Respondent’s use falls within the first circumstance of paragraph 4(c) of the Policy.

The Respondent’s name is “Dong Wu” and the Respondent’s organization is allegedly “Wu An”, neither of which is the disputed domain name or “freywilles”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.

As regards the third circumstance, the disputed domain name resolves to a website that offers goods for commercial sale. This is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy.

Based on the above, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that case because he did not file a Response.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”

The Respondent registered the disputed domain name in 2016, years after the Complainant obtained its trademark registration, including in China where the Respondent is located. The only distinctive element of the disputed domain name is the Complainant’s trademark, minus the space, although the disputed domain name adds the letter “s”. The website to which the disputed domain name resolves displays the Complainant’s trademark and logo and images of the Complainant’s jewelry. This gives the Panel reason to believe that the Respondent was aware of the Complainant’s trademark and its goods at the time that he registered the disputed domain name and that his choice to register that trademark in the disputed domain name was deliberate.

The Respondent uses the disputed domain name, which incorporates the Complainant’s trademark, with a website to offer for sale what is alleged to be the Complainant’s jewelry. The Respondent’s website prominently displays the Complainant’s trademark and logo. It can also be observed that the website includes a copyright notice in the name of “Frey Wille Outlet”. Given these facts and those described at Section 6.2.B above, the Panel considers that the Respondent’s use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the 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 the products on that website.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

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 <freywilles.net> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: September 26, 2016