The Complainant is “FREY WILLE” GmbH & Co. KG of Vienna, Austria, represented by Salomonowitz | Horak, Austria.
The Respondent is Vmalied Yeaslie of Sichuan, China.
The disputed domain name <freywilleonline1851.net> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2015. On August 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 2015, 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.
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 of the Complaint, and the proceedings commenced on August 26, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2015.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on September 24, 2015. 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 Complainant is a company, organized under the laws of Austria.
According to the uncontested allegations of the Complainant, it has been one of the global leading companies producing arty jewelry, decoration and accessories for decades.
It is currently operating about 100 flagship-boutiques worldwide and shops, among other places, in Paris, London, New York and Beijing, according always to the uncontested allegations of the Complainant.
The Complainant is owner of many trademarks all over the world for the words FREY, WILLE and logo and the combination of both, according to the uncontested allegations of the Complainant. In particular, it owns International Registration No.824396 FREY WILLE with effect from August 25, 2003 and International Registration No.1047059 FREYWILLE with effect from March 3, 2010.
The Complainant is extensively advertising its trademarks, according to the uncontested allegations of the Complainant.
The Complainant operates its principal website at “www.freywille.com”.
The disputed domain name <freywilleonline1851.net> was registered on November 13, 2014.
The Complainant contends that the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue relating to the default of the Respondent. The implications of a default in this case are telling since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy (“In the administrative proceeding, the complainant must prove that each of these three elements are present”). As such, the Panel can not merely grant the Complainant’s request automatically due to the default, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic, WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd, WIPO Case No. D2009-1028.
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy.
The Complainant has presented evidence to demonstrate that it owns registered trademark rights internationally.
The mere fact that the Respondent has added the descriptive word “online” and the number “1851” does not to this Panel affect the essence of the matter: the disputed domain name is identical or confusingly similar to the trademark of the Complainant and, in the circumstances of this case, is by itself sufficient to establish the criterion of identity or confusing similarity for purposes of the Policy, as many previous UDRP panels have found. See, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Ltd., WIPO Case No. D2002-1021; DFDS A/S v. NOLDC INC, WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov, WIPO Case No. D2006-0252; Nationwide Mutual Insurance Company v. Whois Agent, Whois Privacy Protection Service, Inc./Zhichao Yang, WIPO Case No. D2015-1129.
In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain name <freywilleonline1851.net> is confusingly similar to the Complainant’s trademarks FREY WILLE and FREYWILLE.
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant’s right to or legitimate interest in a domain name. These examples are discussed in turn below, with regard to the specific facts of this case.
(i) Use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute: the Respondent is not making a bona fide offering of goods.
(ii) An indication that the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark rights: In this case, there is no such indication from the present record.
(iii) Legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue: Again, in this case there is no such indication from the record.
The Respondent does not seem to have any trademark registrations including the terms “Frey”, “Wille”. Additionally, it is to be noted that the Respondent did not present evidence of any license by the Complainant, with whom there seems to exist no relationship whatsoever.
As a conclusion on this point, the Panel finds that the Complainant has established an uncontested, prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the Complaint has satisfied paragraph 4(a)(ii) of the Policy.
The Complainant’s argumentation on this point is mainly based on the circumstances mentioned in paragraph 4(b)(iv) of the Policy in order to demonstrate the Respondent’s bad faith registration and use of the disputed domain name.
In reviewing the present case, the Panel finds that the Respondent has registered the disputed domain name in bad faith.
The Panel finds it highly unlikely that the Respondent would register randomly and unintentionally a domain name that is identical or confusingly similar to the Complainant’s FREY WILLE trademarks. Rather, on a reasonable examination of the evidence, it seems to this Panel more likely that such registration and use would be motivated by a hoped-for capitalization, i.e., commercial gain from the Complainant’s reputation.
Further, according to the uncontested allegations of the Complainant, the disputed domain name at the time of filing the Complaint was used to attract users to the Respondent’s site, to direct at such users offers of counterfeit products under the Complainant’s mark FREY WILLE and advertising from itself and/or third parties, for commercial gain.
In addition, the use of the disputed domain name by the Respondent is to encourage consumers to believe that it is connected to the Complainant.
The Panel also notes the default of the Respondent, which in the present circumstances “reinforces the inference of bad faith registration and bad faith use”. The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn, WIPO Case No. D2001-0915.
As a consequence of the above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Accordingly, the Panel finds that the Complainant has successfully proven that the disputed domain name is identical or confusingly similar to trademarks and service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith.
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 <freywilleonline1851.net> be transferred to the Complainant.
Christos A. Theodoulou
Sole Panelist
Date: September 25, 2015