WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Frey Wille GmbH & Co. KG v. Zhuang Yong Xing

Case No. D2018-0050

1. The Parties

The Complainant is Frey Wille GmbH & Co. KG of Vienna, Austria, represented by Salomonowitz Horak attorneys-at-law, Austria.

The Respondent is Zhuang Yong Xing of Xiamen, Fujian, China.

2. The Domain Name and Registrar

The disputed domain name <frey-willes.org> is registered with Bizcn.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2018. On January 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 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. On January 12, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on January 15, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.

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 January 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2018.

The Center appointed Sok Ling MOI as the sole panelist in this matter on February 28, 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

The Complainant is a producer of luxury artistic jewellery and accessories, known for their limited production and exclusive distribution. Currently operating more than 100 flagship boutiques worldwide, the Complainant has shops in Paris, Venice, London, Moscow, Vancouver, Dubai, Beijing and Singapore, either directly or through authorised partners.

In recent years, the Complainant spent more than EUR 6 million per year to advertise and market its FREY WILLE trade mark. It is the proprietor of numerous trade mark registrations for FREY WILLE and its logo across the world, including the following:

The Complainant is also the registrant of the domain name <freywille.com> at which it operates its principal website to market its products.

The disputed domain name <frey-willes.org> was registered by the Respondent on August 6, 2017, long after the Complainant’s first use and registration of its FREY WILLE trade mark. The disputed domain name resolves to a website which purports to offer for sale FREY WILLE jewellery and accessory products that are marketed and sold by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is confusingly similar to its trade mark.

The Complainant contends that as the Complainant has not licensed or otherwise authorized the Respondent to use its trade mark, the Respondent’s use of the disputed domain name to publish a website purportedly offering for sale jewellery and accessory products that are marketed and sold by the Complainant, was for the purpose of trading on the Complainant’s goodwill.

The Complainant contends that the disputed domain name has been registered and used to create confusion and mislead Internet users into believing that the Respondent’s website is in some way connected with or endorsed by the Complainant. The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.

For all of the above reasons, the Complainant requests for the transfer of the disputed domain name to the Complainant.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, 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.

Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.

The language of the Registration Agreements for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and requested that English be the language of the proceeding. The Respondent, presumably a Chinese native, did not comment on the language issue.

The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain name is registered in Latin characters, rather than Chinese script;

(b) according to the evidence submitted by the Complainant, the contents on the Respondent’s website are in English; and

(c) based on the results of a reverse WhoIs search independently conducted by the Panel using the Respondent’s email address, the Panel notes that the Respondent has registered other domain names which contain Latin characters and English words, such as <valentinoreplica.org> and <celineoutlets.org>.

Additionally, the Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both Chinese and English;

(b) the Respondent has been given the opportunity to present its case in this proceeding; and

(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese.

Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case.

The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be translated into Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English.

6.2 Substantive Issues

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:

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

(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.

On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in FREY WILLE by virtue of its use and registration of the same as a trade mark.

The disputed domain name effectively incorporates the Complainant’s trade mark FREY WILLE in its entirety. The addition of the letter “s” and the hypen “-“ does not serve to sufficiently distinguish or differentiate the disputed domain name from the Complainant’s trade mark. The addition of the generic Top-Level Domain (gTLD) “.org” in this case does not impact on the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii), the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.

See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974.

The Complainant has clearly established that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the FREY WILLE trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term “frey willes”.

The Panel notes that the Respondent is using the disputed domain name to publish a website that purport to offer for sale FREY WILLE jewellery and accessory products. The Complainant claims that the products offered for sale on the Respondent’s website are all counterfeit and submitted evidence to show that the Respondent’s website reproduced the Complainant’s sphinx logo as well as the look-and-feel and decorative images copied from an older version of the Complainant’s website. Given the long standing use and fame of the Complainant’s trade mark, it appears that the Respondent has intent to, for commercial gain, mislead Internet users into believing that its website is somehow connected with the Complainant, and divert Internet users looking for the Complainant’s products to the Respondent’s website. The Panel does not find such use to be bona fide or fair use of the disputed domain name for the purposes of the Policy.

The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish his rights or legitimate interests in the disputed domain name. Since the Respondent has failed to respond, the prima facie case has not been rebutted. The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the

registration and use of a disputed domain name in bad faith, namely:

(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark 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 trade mark 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

There is no doubt that that the Respondent was aware of the Complainant and its trade mark when it registered the disputed domain name, given that its website reproduced the Complainant’s trade mark FREY WILLE and sphinx logo as well as the look-and-feel and decorative images copied from an older version of the Complainant’s website. The Panel determines that the Respondent’s purpose of registering the disputed domain name was to trade on the reputation of the Complainant and its trade mark by diverting Internet users seeking the Complainant’s branded jewellery and accessory products to its own websites for financial gain. The registration of the disputed domain name was clearly in bad faith.

The Complainant claims that the products offered for sale on the Respondent’s website are all counterfeit. Irrespective of whether the products offered on the Respondent’s websites are in fact counterfeit, the reproduction of the Complainant’s trade marks on the Respondent’s website without also displaying a clear disclaimer of a lack of relationship between the Respondent and the Complainant is indication of bad faith. In fact, the Panel noted that statement found on the Respondent’s website has made the false claim of being “powered by Frey Wille, Frey Wille jewellery”. The Panel is satisfied that the Respondent intends to take advantage of the fame of the Complainant’s trade mark to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel is satisfied that the Respondent is using the disputed domain name for mala fide purpose and illegitimate financial gain, and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.

The Panel also notes that efforts to contact the Respondent at the fax and physical address provided to the Registrar failed which suggests that the Respondent had provided false contact details.

Taking into account all the circumstances, it is adequate to conclude that the Respondent has registered and is using 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.org> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: March 16, 2018