The Complainant is Fendi S.r.l., Italy, represented by Dreyfus & associés, France.
The Respondent is 颜文君 (Wen Jun Yan), China.
The disputed domain names <fendikids.shop> and <fendikids.store> are registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2021. On July 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 9, 2021, 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 July 9, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on July 11, 2021. 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 in English and Chinese of the Complaint, and the proceedings commenced on July 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2021.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on August 31, 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.
The Panel notes that although the Complainant requested in its initial Complaint the consolidation as to the Respondent of this administrative proceeding, it is clear from the verification response provided by the Registrar that there is only a single Respondent in this administrative proceeding, and that the Complainant’s request for consolidation has become irrelevant. The Panel shall therefore not address it further in this decision.
The Complainant is an Italian luxury fashion house specialized, inter alia, in high-fashion clothing, accessories, and furniture. The Complainant was founded in 1925 by Adele and Edoardo Fendi as a fur and leather shop in Rome, Italy, and has since then grown into an international fashion brand. In 2000, the LVMH Group, which also commercializes a large number of other global luxury fashion brands, acquired the Complainant. The Fendi brand is now ranked among the “10 Hottest Fashion Brands” in the world according to the Lyst Index.
The Complainant owns a portfolio of trademark registrations for FENDI, for instance, the Chinese trademark registration number 262675, registered on September 20, 1986, and the International trademark registration number 1130243, registered on June 6, 2012, and designating inter alia China, Australia and the United States of America. The Complainant also owns a portfolio of official domain names, such as <fendi.com> registered on December 26, 1995. The relevant registered trademarks adduced by the Complainant were successfully registered prior to the registration date of the disputed domain names, which were both registered on March 20, 2021. The Complainant submits evidence that the disputed domain names both direct to inactive websites.
The Complainant also provides evidence that it first attempted to resolve this dispute amicably through a cease-and-desist letter sent to the Registrar and the Respondent on April 20, 2021 and May 6, 2021 respectively, but no amicable settlement could be reached.
The Complainant essentially contends that the disputed domain names are confusingly similar to its trademarks for FENDI, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered and are being used in bad faith.
The Complainant claims that its trademarks are distinctive, famous and used intensively, and submits printouts of several websites providing background information regarding its business, and also refers to a number of prior UDRP decisions, where the respective panels have accepted that the FENDI mark is “well-known” or “famous” (see for instance 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). The Complainant particularly contends that that there are no justifications for the use of its famous trademarks in the disputed domain names, and claims that the Respondent is passively holding the disputed domain names in bad faith, which does not confer any rights or legitimate interests in respect of the disputed domain names to the Respondent.
On the basis of the above arguments, the Complainant requests the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
However, when replying to the Complainant’s cease-and-desist letter prior to the proceeding, the Respondent claimed that “All the domain names are the legal intellectual property of the registrant” and requested the Complainant to “provide your official complaint through the WIPO Arbitration and Mediation Center”.
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings.
The Complainant states that to the best of its knowledge the Registration Agreement is written in Chinese. The Registrar has confirmed that the Registration Agreement is in Chinese. Nevertheless, the Complainant filed the Complaint in English, and requests that the language of the proceeding be English.
The Panel has carefully considered all elements of this case in considering this request, and attaches particular relevance to the following elements: the Complainant's request that the language of the proceeding be English; the lack of comment on the language of the proceeding and the lack of any response on the merits by the Respondent (the Panel notes that the Respondent was invited by the Center in both Chinese and English to respond on either issues in either English or Chinese); the fact that the disputed domain names are formed by combining the Complainant’s trademark with words in English rather than in Chinese; the fact that prior to the filing of the Complaint, on May 7 and 14, 2021, the Respondent responded via email in English to the Complainant’s cease-and-desist letter, from which the Panel concludes that the Respondent is able to read and communicate in English; and the fact that Chinese as the language of the proceeding could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel accepts the Complainant’s request that the language of the proceeding shall be English.
The Policy requires the Complainant to prove three elements:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Based on the evidence and arguments submitted, the Panel’s findings are as follows:
The Panel finds that the Complainant has provided sufficient evidence that it has valid rights in the marks FENDI, based on its use and registration of the same as a trademark in several jurisdictions.
As to confusing similarity of the disputed domain names with the Complainant’s trademarks, the disputed domain names each consist of the combination of the Complainant’s trademark FENDI with the purely descriptive word “kids”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.8, “Where the relevant trademark is recognizable within the disputed domain names, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Panel concludes that the disputed domain names contain the entirety of the Complainant’s trademark FENDI, which remains easily recognizable, as its sole distinctive and dominant feature. Moreover, the Panel notes that the applicable generic Top-Level Domain (“gTLD”) used in the disputed domain names, namely respectively “.shop” and “.store”, is a standard registration requirement, and may as such be disregarded by the Panel (see WIPO Overview 3.0, section 1.11.1). Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks, and the Complainant has satisfied the requirements for the first element under the Policy.
On the basis of the evidence and arguments submitted, the Panel finds that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, that it is not a good faith provider of goods or services under the disputed domain names and is not making legitimate noncommercial use or fair use of the disputed domain names. The Panel also notes that the Respondent is not commonly known by the disputed domain names. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, the Respondent did not provide any Response or evidence in this administrative proceeding.
Moreover, upon review of the evidence provided by the Complainant, the Panel notes that the disputed domain names have not been used, and both direct to inactive webpages. The Panel finds that holding domain names passively, without making any use of them, does not confer any rights or legitimate interests in the disputed domain names on the Respondent (see in this regard also Ares Management LLC v. 漆荣 (Qi Rong), WIPO Case No. D2020-3255).
The Panel also notes that the nature of the disputed domain names, being confusingly similar to the Complainant’s trademark for FENDI and containing the descriptive term “kids”, which seems to suggest a target public for the content hosted at the disputed domain names, carries a risk of implied affiliation and cannot constitute fair use, as it effectively impersonates the Complainant (see WIPO Overview 3.0, section 2.5.1).
On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.
Given the strong international reputation and fame of the Complainant's trademarks for FENDI, even long before the registration date of the disputed domain names, the registration of the disputed domain names by the Respondent, which incorporate the FENDI trademarks in their entirety, was clearly intended to mislead and divert consumers to the disputed domain names. Moreover, the fact that the disputed domain names incorporate the Complainant’s internationally famous trademark FENDI associated with the descriptive term “kids” and use the suggestive gTLDs “.shop” and “.store” (suggesting that those disputed domain names would be connected to e-commerce websites offering Fendi-branded kids products), clearly demonstrates that the Respondent registered the disputed domain names to target the Complainant’s trademark and mislead its customers. In the Panel’s view, this clearly indicates the bad faith of the Respondent, and the Panel therefore finds that it has been demonstrated that the Respondent registered the disputed domain names in bad faith.
As to use of the disputed domain names in bad faith, the disputed domain names have not been used and link to inactive websites. In this regard, the WIPO Overview 3.0, section 3.3 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.” The Panel has reviewed all elements of this case, and attaches particular relevance to the following: the disputed domain names incorporate the Complainant’s trademarks for FENDI in their entirety; and the high degree of distinctiveness and fame of the Complainant’s trademarks. Further, the Respondent has already been found by a previous panel in a UDRP decision (see Calvin Klein Inc v. Wen Jun Yan, Domain Recovery, WIPO Case No. D2021-1151) to have registered and used in bad faith several domain names targeting famous third party marks, from which the Panel concludes that the Respondent has engaged in a pattern of bad faith conduct. On the basis of the foregoing elements, the Panel finds that it has been demonstrated that the Respondent has used, and is using the disputed domain names in bad faith.
Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 names, <fendikids.shop> and <fendikids.store>, be transferred to the Complainant.
Deanna Wong Wai Man
Sole Panelist
Date: September 14, 2021