WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Feiyue v. Qi Jian
Case No. D2011-0376
1. The Parties
Complainant is Feiyue of Paris, France represented by Cabinet Gilbey Delorey, France.
Respondent is Qi Jian of Zhejiang, the People’s Republic of China.
2. The Domain Names and Registrar
The disputed domain names <chaussuresfeiyuepascher.com>; <feiyueinc.com>; <feiyueshoesinc.com>; and <shanghai-feiyue-shoes.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2011. On February 28, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On February 28, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 24, 2011.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on March 31, 2011. 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
Complainant is a French company which creates, manufactures and sells shoes under the trademark FEIYUE. The Complainant is specially successful worldwide in the sale of canvas shoes.
Complainant owns in several jurisdictions registrations for the trademark FEIYUE, including the United States Reg. No. 3253429, filed on May 17, 2006 and registered on June 19, 2007, and International Reg. No. 948536, registered on November 14, 2007. The Complainant’s web site operates under the domain name <feiyue-shoes.com>.
On its turn, the Respondent has registered the domain names <chaussuresfeiyuepascher.com>; <feiyueinc.com>; and <feiyueshoesinc.com> on January 25, 2011; and has registered the domain name
<shanghai-feiyue-shoes.com> on November 26, 2010.
5. Parties’ Contentions
A. Complainant
Complainant argues that the disputed domain names are confusingly similar to the earlier trademark FEIYUE owned by Complainant; that 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.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) the domain names have been registered and are being used in bad faith.
The burden of proving these elements is on Complainant.
A. Identical or Confusingly Similar
The Panel is satisfied that Complainant showed that FEIYUE is a distinctive earlier trademark in relation to the disputed domain names, and that these are confusingly similar to such mark.
It is well-settled that when a respondent merely adds generic or descriptive terms to an otherwise distinctive trademark, the domain name is to be considered confusingly similar to the registered trademark. In this case, Respondent added to the FEIYUE trademark the generic terms “chaussures” (which means “shoes” in French), “shoes” and “shoesinc”, which are all actually descriptive of Complainant’s activities and, as such, only makes stronger the risk of confusion with the trademark used by Complainant. The expression “pascher” is also descriptive as it means “not expensive” in English (in French: “pas cher”).
The adding of the city name “Shanghai“ also does not create enough differentiation between the domain name and the trademark because it simply gives the appearance that under the domain name
<shanghai-feiyue-shoes.com> Complainant’s official web site for that city is hosted. The addition of the term “inc” does not create enough differentiation either.
There are numerous UDRP WIPO decisions where it was found that the addition of generic terms does not serve to distinguish the domain name from the trademark, but rather, would reinforce the association of the trademark with the domain name (see e.g. Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275). There are also precedents that state that the adding of a geographic term does not impair a finding of similarity between the domain name and the trademark (see Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768).
Therefore, the Panel finds that the disputed domain names <chaussuresfeiyuepascher.com>; <feiyueinc.com>; <feiyueshoesinc.com>; and <shanghai-feiyue-shoes.com> are all confusingly similar to the trademark FEIYUE to which Complainant has rights and, thus, the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The disputed domain names were registered on November 26, 2010 and January 25, 2011, that is, several years after Complainant started to use the trademark FEIYUE (Complainant’s earlier trademark registration was filed in 2006). Therefore, the prior rights over such trademark are clearly on Complainant’s side.
In addition, Respondent does not run any legitimate business activity in connection with the disputed domain names. On the contrary, three of Respondent’s web sites simply try to pass-off themselves as if they belonged to Complainant itself, reproducing Complainant’s distinctive logo, and one of the websites (“www.feiyueshoesinc.com”) resolves to a pay-per-click site.
Thus, the Panel concludes that the disputed domain names are not rightfully used by Respondent in connection with any bona fide offering of goods and services.
Complainant has established a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain names. Since Respondent has not replied to the Complaint and, thus, has not presented any other evidence or elements to justify any rights or legitimate interests in connection with the disputed domain names, the Panel has found no indication that any of the circumstances described in paragraph 4(c)(i),(iii) of the Policy could apply to the present matter.
Therefore, given the circumstances described above, the Panel finds that Respondent has no right or legitimate interests in disputed the domain names (Policy, paragraph 4(a)(ii)).
C. Registered and Used in Bad Faith
The successful use of the trademark FEIYUE by Complainant in creating, manufacturing and selling shoes since at least as early as 2006, the fact that Respondent only registered the disputed domain names four (4) to five (5) years later, in 2010 and 2011, and the fact that in three of its web sites Respondent tries to pass-off itself as Complainant and in one of its websites links to Complainant’s competitors are displayed, are all strong elements that allow the Panel to conclude that Respondent not only had actual knowledge of the trademark FEIYUE before the registration of the disputed domain names, but also that Respondent registered and is until this date using such domain names with the intention of deceiving and diverting Complainant’s customers.
Thus, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with the trademark FEIYUE in which Complainant has rights and that Complainant has proven that Respondent’s registration and use of the disputed domain names was in bad faith, according to paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <chaussuresfeiyuepascher.com>; <feiyueinc.com>; <feiyueshoesinc.com>; <shanghai-feiyue-shoes.com> be transferred to Complainant.
Gabriel F. LeonardosSole Panelist
Dated: April 13, 2011