Complainant is FENDI S.r.l., Italy, represented by Dreyfus & associés, France.
Respondent is Wubo, Wubo, China.
The disputed domain name <fendi-yg.com> is registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2021. On June 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 3, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 7, 2021.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on July 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 29, 2021.
The Center appointed Phillip V. Marano as the sole panelist in this matter on September 9, 2021. 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.
Complainant is an Italian luxury fashion house which produces fur, ready-to-wear, leather goods, shoes, fragrances, eyewear, timepieces and accessories. Complainant owns valid and subsisting registrations for the FENDI trademark in numerous regions and countries, including in China, the European Union, and the United States of America (“United States”), including the International Registration No. 1250010 registered on February 26, 2015 with the earliest priority in Italy dating back to September 18, 2006.
Respondent registered the disputed domain name on April 9, 2021. At the time of this Complaint, the disputed domain name resolved to a Chinese language website, displaying gambling and pornographic content.
Complainant asserts ownership of the FENDI trademark and has adduced evidence of trademark registrations in numerous regions and countries around the world including China, the European Union, and the United States, with earliest priority in Italy dating back to September 18, 2006. The disputed domain name is confusingly similar to Complainant’s FENDI trademark, according to Complainant, because it reproduces Complainant’s FENDI trademark in its entirety with the mere addition of the letters “yg” separated by a hyphen.
Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the lack of any affiliation, license, permission, or authorization between Complainant and Respondent; Complainant’s priority rights in the FENDI trademark; the lack of any evidence that Respondent is known by the name “Fendi”; and Respondent’s use of the disputed domain name in connection with gambling and pornographic website content, which is prejudicial to Complainant’s renown and illegal in China.
Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: the global well-known nature of Complainant’s FENDI trademark; the obvious connection between the disputed domain name and Complainant’s well-known FENDI trademark; Complainant’s priority rights in the FENDI trademark; Respondent’s duty to verify that registration of the disputed domain name would not infringe any third party rights, for which a simple trademark search or Google search would have yielded results for Complainant; Respondent’s use of the disputed domain name in connection with gambling and pornographic website content to intentionally and abusively benefit from Complainant’s reputation by misleading consumers.
Respondent did not reply to Complainant’s contentions.
To succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:
i. The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights;
ii. 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.
Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. UDRP panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”).
Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0, section 1.2.1. Complainant submitted evidence that the FENDI trademark has been registered numerous regions and countries. Thus, the Panel finds that Complainant’s rights in the FENDI trademark have been established pursuant to the first element of the Policy.
The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s FENDI trademark. In this Complaint, the disputed domain name is confusingly similar to Complainant’s FENDI trademark because, disregarding the “.com” generic Top-Level Domain (“gTLD”), the trademark is contained in its entirety within the disputed domain name. WIPO Overview 3.0, section 1.7. (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar...”). gTLDs, such as “.com” in the disputed domain name, are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0, section 1.11.
The confusing similarity is not dispelled by combination with the descriptive letters “yg” separated by a hyphen from the FENDI trademark. WIPO Overview 3.0, section 1.8 (additional terms “whether descriptive, geographic, pejorative, meaningless, or otherwise” do not prevent a finding of confusing similarity where the relevant trademark is recognizable within the disputed domain name); see also AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553 (“Each of the domain names in dispute comprises a portion identical to [the ATT trademark] in which the Complainant has rights, together with a portion comprising a geographic qualifier, which is insufficient to prevent the composite domain name from being confusingly similar to Complainant’s [ATT trademark]”) OSRAM GmbH v. Cong Ty Co Phan Dau Tu Xay Dung Va Cong Nghe Viet Nam, WIPO Case No. D2017-1583 (“[T]he addition of the letters ‘hbg’ to the trademark OSRAM does not prevent a finding of confusing similarity between the Disputed Domain Name and the said trademark.”).
In view of Complainant’s registrations for the FENDI trademark, and Respondent’s incorporation of that trademark in its entirety in the disputed domain name, the Panel concludes that Complainant has established the first element of the Policy.
Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview 3.0, section 2.1.
Under Section 4(c)(iii) of the Policy, neither legitimate noncommercial use or fair use of the disputed domain name can coexist with “intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s trademark.” WIPO Overview 3.0, section 2.4. No rights or legitimate interests derive from tarnishment of another’s trademark by using it to divert Internet users to pornographic websites. See e.g. Andrey Ternovskiy dba Chatroulette v. Protection of Private Person / Aleksandr Katkov, WIPO Case No. D2017-0381 (finding the respondent’s use of the domain name <chatroulettelolz.com> to redirect Internet users to pornographic websites “should and could not be considered a bona fide offering of goods or services”); L’Oréal v. Robert Caceres, Dollarviews, WIPO Case No. D2015-1200 (finding that use of a domain name for a website displaying pornographic videos “does not constitute an example of rights and legitimate interests as per paragraph 4(c) of the Policy”); Neste Oil Oyj v. Nesin Dmitry / Privacy Protection Service INC, WIPO Case No. D2014-0883 (noting that “pornographic content of the Respondent’s website ought to be regarded as a proof of lacking right or legitimate interest”). Likewise, the Panel finds that Respondent cannot derive legitimate interests from tarnishment of Complainant’s FENDI trademark by using the disputed domain name to resolve to a Chinese language website with pornographic content and hyperlinks. Furthermore, it is evident that Respondent, identified by registration data for the disputed domain name as “Wubo, Wubo”, is not commonly known by the disputed domain name or Complainant’s FENDI trademark.
In view of the absence of any evidence supporting Respondent’s rights or legitimate interests in the disputed domain name, and Respondent’s attempts to misdirect Internet users to pornographic website content by trading off Complainant’s FENDI trademark, the Panel concludes that Complainant has established the second element of the Policy.
Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name:
i. Circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or
ii. Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
iii. 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, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The use of a domain name to tarnish a complainant’s trademark, including for commercial purposes in connection with pornographic content, constitutes evidence of a respondent’s bad faith. WIPO Overview 3.0, section 3.12. See Red Bull GmbH v. Whois Agent, Domain Protection Services, Inc. / esco escortlar, escort sitesi, WIPO Case No. D2017-1639 (finding the respondent’s use of the domain for a pornographic website constituted “a strong indication of bad faith registration and use,” because it showed respondent’s main purpose was “to create a likelihood of confusion among customers and/or to tarnish the Complainant’s RED BULL trademark for commercial gain or any other illegitimate benefit”); Bank of Jerusalem Ltd. v. Shek Cheung Chung, WIPO Case No. D2017-1153 (finding bad faith where the domain resolved to a website “at which adult content and links to websites at which pornographic contact [was] being offered, tarnishing Complainant and its trademark, and for which Respondent [was] likely receiving commercial gain”). Similarly, the Panel finds that Respondent’s use of the disputed domain name to resolve to a Chinese-language website with pornographic content and hyperlinks constitutes intentional tarnishment of Complainant’s FENDI trademark for commercial gain.
In addition, the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating a descriptive term) to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith (particularly where no conceivable good faith use could be made). WIPO Overview 3.0, section 3.1.4. Complainant has adduced evidence of recognition of the FENDI trademark and cited several panel determinations in agreement that Complainant’s FENDI trademark is considered to be “well-known” or “famous.” See e.g. Fendi S.r.l. v. Federico Porcedda, WIPO Case No. D2018-1265; Fendi S.r.l. v. Gueijuan Xu, WIPO Case No. D2018-0749; Fendi S.r.l. v. Wenxin Huang, Online Store Co., Ltd, WIPO Case No. D2018-2877; and Fendi S.r.l. v. Super Privacy Service LTD c/o Dynadot / Owen Bour, WIPO Case No. D2020-2801. As such, the Panel finds it is unconceivable that Respondent could have registered the disputed domain name without knowledge of Complainant’s FENDI trademark, without any intention to benefit from confusion with Complainant’s FENDI trademark, and without intent to tarnish Complainant’s FENDI trademark through association with pornographic website content and hyperlinks.
In view of Respondent’s tarnishment of Complainant’s FENDI in connection with pornographic website content and hyperlinks, multiple panel determinations recognizing the well-known nature of Complainant’s FENDI trademark, and Respondent’s opportunistic bad faith, the Panel concludes that Complainant has established the third element of the Policy.
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 <fendi-yg.com> be transferred to Complainant.
Phillip V. Marano
Sole Panelist
Date: September 27, 2021