Complainant is Frey Wille GmbH & Co. KG. of Wien, Austria, represented by Schonherr Rechtsanwalte GmbH, Austria.
Respondent is Domain Admin, PrivatProtect.org/ liuhua of Nobby Beach, Queensland, Australia / Ganzhou, Jiangxi, China.
The disputed domain name <freywille2013.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2013. On July 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 25, 2013, 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 the Complainant on July 31, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 5, 2013.
The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on August 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 2, 2013.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on September 10, 2013. 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 trademark upon which the Complaint is based is FREY WILLE. According to the documentary evidence and contentions submitted, Complainant owns a number of registrations for the FREY WILLE trademark in different countries, such as International Trademark registration No. 824396 FREY WILLE, with the registration date of August 25, 2003; and International Trademark registration No. 1047059 FREY WILLE (logo), with the registration date of March 3, 2010.
According to the documentary evidence and contentions submitted, Complainant is a leading company producing art jewelry, decoration and accessories for a plenty years and currently having a large number of stores worldwide. Complainant also operates its principal website at “www.frey-wille.com” and “www.freywille.com”.
The disputed domain name was registered on May 19, 2013. On September 20, 2013 the Panel attempted to access the website at “www.freywille2013.org” but the same was apparently inactive. However, the documentary evidence shows that the disputed domain name used to resolve to an online marketplace that offered for sale products that seem to be the Complainant’s.
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark because (i) it incorporates the FREY WILLE trademark in its entirety; (ii) the addition of the descriptive term “2013” serves to indicate that new or current products are offered at the website; and (iii) the generic Top-Level Domain (“gTLD”) “.org” is to be ignored when assessing identity or confusing similarity pursuant to previous UDRP panel decisions.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Complainant has not licensed or otherwise permitted Respondent to use the FREY WILLE trademark or any domain name incorporating such trademark; (ii) by choosing the domain name <freywille2013.org> Respondent intends to create the misleading impression that the disputed domain name leads to an official online store operated by Complainant or that its business is somehow connected with Complainant; (iii) Respondent has not used the disputed domain name in connection with a bona fide offering of good or services; (iv) the price of the products offered for sale indicates that they are probably counterfeit products; and (v) all circumstances show that Respondent intends to have a free ride on the fame and goodwill of Complainant’s trademarks and to benefit from consumers’ confusion as to the association of the parties.
Finally, Complainant contends that Respondent registered and used the disputed domain name in bad faith because (i) Respondent registered the disputed domain name to exploit the famous reputation of Complainant and its activities; (ii) Respondent is using the disputed domain name to get traffic on its web portal and to obtain commercial gain from the false impression created for Internet users with regard to an association/affiliation with Complainant; and (iii) Respondent’s use of a privacy protection service to disguise its identity evidences bad faith.
Respondent did not reply to Complainant’s contentions.
The UDRP consensus view is that a respondent’s default does not automatically result in a decision in favor of a complainant and that complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.2. However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., supra; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
The disputed domain name <freywille2013.org > incorporates Complainant’s FREY WILLE mark in its entirety. Previous UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd, WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l., WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282.
As decided in other WIPO UDRP cases, “the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone”. LEGO Juris A/S v. Name Administrator, Hong Kong Domains, LLC., supra. See also Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812. In the instant case, the combination of the term “freywille” with the suffix “2013” does not affect the overall impression of the dominant part of the disputed domain name. In fact, the addition of the descriptive term “2013” linked to the products that the Complainant’s market renders the disputed domain name even more confusingly similar to the registered trademark.
Finally, the addition of the gTLD “.org” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s FREY WILLE trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
The consensus view in WIPO URDP panel decisions has been that a complainant is required to make out an initial prima facie case, respondent then carrying the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the See WIPO Overview 2.0, paragraph 2.1.
In the instant case, Complainant has done enough to establish a prima facie case. In fact, the Panel finds as reasonable Complainant’s contentions that Respondent has never been licensed or otherwise authorized to use the disputed domain name or any other domain name using Complainant’s trademark.
The Panel also agrees that Respondent’s use of the disputed domain name does not satisfy the test for bona fide use established in prior WIPO UDRP panel decisions as the disputed domain name was being used to host a website apparently selling counterfeit products unduly identified by Complainant’s trademarks.
Further, the Panel agrees that the evidence and circumstances of this case indicate that the disputed domain name was registered to divert Internet users by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship or affiliation, or endorsement of Respondent’s domain name.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
The Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name may be an indication of bad faith See Pepsico, Inc. v. Zhavoronkov, WIPO Case No. D2002-0562; Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435.
In view of the particulars of the instant case, the Panel finds that Respondent was undoubtedly aware of the existence of Complainant’s FREY WILLE trademark when Respondent registered the disputed domain name. In fact, the Panel sees no plausible explanation for Respondent’s adoption of the term “freywille” in conjunction with the term “2013” in the disputed domain name other than to attract for commercial gain Internet users by creating a likelihood of confusion with Complainant’s trademark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847.
The disputed domain name was used to resolve to a website that appeared to sell counterfeit products bearing the Complainant’s FREY WILLE trademark. Offering for sale counterfeit products of the Complainant under the disputed domain name constitutes evidence of bad faith (see Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019).
In addition, paragraph 4c(iv) of the Policy provides that if, by using the domain name a respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location, that circumstance shall be evidence of the registration and use of a domain name in bad faith.
At the time of this Decision, the disputed domain name is apparently not being used by Respondent. The Panel finds that such circumstance does not affect a finding of bad faith use of the disputed domain name.
In short, the manner in which Respondent has used and is using the disputed domain name demonstrates that the disputed domain name was and still is being used in bad faith.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 <freywille2013.org> be transferred to the Complainant.
Manoel J. Pereira dos Santos
Sole Panelist
Date: September 24, 2013