Complainant is Frey Wille GmbH & Co KG of Vienna, Austria, represented by Schönherr Rechtsanwälte GmbH, Austria.
Respondent is Li ning of Chengzhou, Hunan, China.
The disputed domain name <2013freywille.info> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2013. On December 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2013, the Registrar 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 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 Respondent of the Complaint, and the proceedings commenced on December 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 13, 2014.
The Center appointed Francine Tan as the sole panelist in this matter on January 16, 2014. 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 claims to be one of the global leading companies producing artistic jewellery, decorations and accessories and has operated under the name “Frey Wille” for decades. Artists, goldsmiths and craftsmen are involved in the production of its well-known enamel and gold jewelery, and Complainant has an excellent reputation worldwide for its luxury goods.
Complainant’s CEO gave evidence by affidavit that Complainant operates 87 flagship boutiques worldwide including in Milan, Paris, London, New York, Moscow, Dubai, Los Angeles, Beijing and Xian. Most of the shops are owned by Complainant, whereas some of them are “partner shops”. Further, he stated that limited production and exclusive distribution are the main business models of Complainant and it does not sell any of its goods by way of online stores but only through its “distinctive and well-chosen boutiques”.
Complainant operates its principal website at “www.freywille.com” which contains information on its activities but is not used for selling its products.
Complainant is the proprietor of multiple registrations and applications of trade marks in numerous countries or regions (including Europe, the United States of America, Russian Federation, Australia and China) consisting of or containing the sign “Frey Wille”. These various trademark registrations cover goods in Classes 14 and 18, amongst others.
Complainant submitted copies of:
- International registration No. 824396, with the registration date August 25, 2003 for the mark FREY WILLE in classes 03, 14, 16, 18 and 25; and
- International registration No. 1047059 (“the FREY WILLE Sphinx logo”), with the registration date March 3, 2010 in classes 14, 16, 18, 25.
Complainant has engaged in extensive advertising and in this connection, spent about EUR 800 million in 2011 and 2012 in terms of advertising expenditure worldwide. In China and Russia alone, advertising expenditure was EUR 1.6 million . In 2011 and 2012, sales turnover revenue in China (not including Hong Kong) amounted to EUR 2.732 million; in the Russian Federation, the amount was EUR 16.284 million.
The disputed domain name was registered on April 26, 2013.
1. The disputed domain name is identical with or confusingly similar to trade marks in which Complainant has rights. The disputed domain name integrates the distinctive trade mark FREY WILLE in its entirety. The generic Top-Level Domain (gTLD) in this case, “.info”, should be ignored when assessing the issue of identity or confusing similarity. The only difference between the disputed domain name and Complainant’s FREY WILLE mark is the descriptive term “2013” which probably suggests that allegedly “new” or “current” products are offered on Respondent’s website. It has been held in numerous UDRP decisions that the addition of a generic or descriptive word(s) to trade marks in a domain name is not sufficient to escape a finding of confusing similarity.
2. Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant has not licensed or otherwise permitted Respondent to use the trade mark FREY WILLE or to register or use any domain name incorporating the said trade mark. Respondent seeks to create the false and misleading impression that it acts in affiliation with Complainant. The disputed domain name resolves to Respondent’s website which creates the impression that it is an official online store operated by Complainant.
By choosing the disputed domain name, Respondent intends to create the misleading impression that its business is in some way associated with Complainant although this is not the case at all. The false impression of running an authentic online store is also evidenced by the indication at the bottom of Respondent’s website “Copyright © 2013 Frey Wille USA Online Store!” whereas there is no connection between Respondent and Complainant. Respondent is not an official distributor appointed by Complainant for its goods. Specifically, Complainant does not sell any goods online. The content of the website clearly shows that Respondent was well aware of Complainant´s activities and trademarks. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. Considering the price of the products offered for sale on Respondent’s website, they are most likely counterfeits. Respondent used a logo which is almost identical to Complainant’s FREY WILLE Sphinx logo, which further adds to the false impression that Respondent is somehow related to or authorized by Complainant.
3. The disputed domain name was registered and is being used in bad faith. Respondent deliberately registered the disputed domain name incorporating the trade mark FREY WILLE. Respondent’s intention is to exploit Complainant’s fame and reputation. Respondent is using Complainant’s famous trade mark in order to get traffic on its website and to obtain commercial gain from the false impression of an affiliation or connection with Complainant. There is no other conceivable rationale for Respondent’s registration and use of the disputed domain name other than that stemming from bad faith.
Respondent did not reply to Complainant’s contentions.
The Panel agrees that the disputed domain name is confusingly similar and/or, in essence, identical to trade marks in which Complainant has rights, pursuant to its trademark registrations. The FREY WILLE mark is the dominant feature of the disputed domain name and is clearly identifiable. The addition of the descriptive term “2013” at the beginning of the disputed domain name does not serve to remove the confusing similarity with Complainant’s FREY WILLE trade marks. It gives the impression or may be construed as serving to communicate that the disputed domain name relates to a 2013 edition of Complainant’s products and, in combination with the gTLD “.info”, suggests to Internet users that the website provides information pertaining to Complainant’s products and/or the 2013 edition of Complainant’s products. Many panel decisions issued under the Policy have established the fundamental principle that generic or descriptive words in domain names should be disregarded in assessing whether there is identity or confusing similarity with a complainant’s trade mark(s), particularly in a case such as the instant where the trade mark is clearly identifiable.
In the circumstances, the Panel finds that the first condition under paragraph 4(a) of the Policy has been satisfied.
The Panel also finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. There is indeed no evidence that Respondent has used or made demonstrable preparations to use the disputed domain name or a name corresponding thereto in connection with a bona fide offering of goods. Neither is there evidence that Respondent has been commonly known by the disputed domain name or the name “Frey Wille”. There does not appear to have been a fair use or legitimate noncommercial use of the disputed domain name. Rather, Complainant’s mark as well as a similar logo to Complainant’s FREY WILLE Sphinx logo appears on Respondent’s website. On the face of the evidence, Respondent’s intention by use of its website is to misleadingly divert consumers for commercial gain.
Having established a prima facie case, Complainant has satisfied its burden of satisfying the second condition of paragraph 4(a) of the Policy. The evidentiary burden consequently falls on Respondent to prove otherwise. In failing to file a Response or to submit evidence to rebut Complainant’s assertions, the Panel can only conclude that Respondent does not have rights or legitimate interests in respect of the disputed domain name.
Therefore, the Panel finds that the second condition under paragraph 4(a) of the Policy has been satisfied.
Complainant submitted under Annex A to the Complaint the WhoIs information pertaining to the disputed domain name. The Panel notes that the Reverse WhoIs information reflects that Respondent owns about 9161 other domain names. Taking this into account, as well as the evidence of how Respondent has used the disputed domain name for its website and the reputation of Complainant and its FREY WILLE trademarks, the Panel finds that Respondent registered and used the disputed domain name in bad faith. The circumstances of this case fall within the scope of what is described in paragraph 4(b)(iv) of the Policy, i.e.
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Whilst the Panel is unable to make a finding that the goods sold on Respondent’s website are in fact counterfeit goods since no direct evidence was tendered by Complainant, the Panel finds that the copying of Complainant’s trademarks, how Respondent’s website is presented, and the offer for sale of goods that Complainant deals in, all demonstrate an intention by Respondent to create consumer confusion and to entice Internet users to buy its products. Complainant has not endorsed nor authorized Respondent to use its trade marks on the latter’s website or as part of a domain name.
The Panel therefore concludes that Complainant has satisfied the third condition of paragraph 4(a) 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 <2013freywille.info> be transferred to the Complainant.
Francine Tan
Sole Panelist
Date: January 28, 2014