WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Frey Wille GmbH & Co. KG v. Chen Lihuang

Case No. D2012-1977

1. The Parties

The Complainant is Frey Wille GmbH & Co. KG of Vienna, Austria represented by Schonherr Rechtsanwalte GmbH, Austria.

The Respondent is Chen Lihuang of Fu Jian, China.

2. The Domain Name and Registrar

The disputed domain name <freywillestore.net> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2012. On October 8, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 2012, 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 October 10, 2012, the Center transmitted an email to the Parties in both the Chinese and English language regarding the language of the proceeding. On October 11, 2012, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit its comments.

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 the Respondent of the Complaint, and the proceedings commenced on October 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2012.

The Center appointed Jonathan Agmon as the sole panelist in this matter on November 22, 2012. 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

The Complainant is a jewelry manufacturer that is based in Austria.

The Complainant’s products are marketed and offered for sale in many countries worldwide under the mark FREY WILLE.

The Complainant owns worldwide trademark registrations for the mark FREY WILLE. For example: International trademark registration No. 824396 – FREY WILLE, with the registration date of August 8, 2003; International trademark registration No. 1047059 – FREY WILLE (logo), with the registration date of March 3, 2010 and United States of America trademark registration No. 79085862 – FREY WILLE (logo), with the registration date of June 7, 2011.

The Complainant operates its principal website under the domain name <freywille.com>.

The disputed domain name <freywillestore.net> was registered by the Respondent on July 26, 2012.

The disputed domain name resolves to an inactive webpage displaying an error page.

The disputed domain name used to resolve to an online marketplace that offered for sale products that seem to be of the Complainant’s.

5. Parties’ Contentions

A. Complainant

The Complainant argues that due to its specific and well known enamel and gold jewelry, the Complainant had earned an excellent reputation worldwide. The Complainant contends that it invested a substantial amount of revenue during 2011 and 2012 in worldwide advertising.

The Complainant further argues that it does not know or cooperate with the Respondent and did not license or permit the Respondent to use the Complainant’s intellectual property rights or register the disputed domain name.

The Complainant further argues that the Respondent registered the disputed domain name after the Complainant had filed a UDRP complaint regarding the domain name <freywillestore.com>, which the Respondent registered. The Complainant contends that the Respondent is operating the exact same website under the disputed domain name that the Respondent operated under the domain name <freywille.com>.

The Complainant further argues that the disputed domain name is identical or confusingly similar to its FREY WILLE mark since it integrates the Complainant’s distinctive FREY WILLE trademark. The Complainant further contends that the addition of the word “store” in the disputed domain name is not sufficient to escape the finding of confusing similarity since it is a descriptive term.

The Complainant further argues that the Respondent seeks to create a false and misleading impression that it is affiliated with the Complainant, among others, by including in the website under the disputed domain name a copyright notice that is associated with the Complainant.

The Complainant further argues that the Respondent offered for sale on the website under the disputed domain name counterfeit products of the Complainant.

The Complainant further argues that the Respondent’s intent is to divert consumer to the website under the disputed domain name for commercial gain.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Procedural Issue – Language of the Proceedings

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of proceedings should be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

In deciding on the language of the proceeding, the Panel takes the following into consideration:

a) The disputed domain name includes the English word “store”;

b) The disputed domain name used to resolve to an online marketplace that operated while using the English and Russian languages;

c) The Complainant submitted evidence from which it can be assumed that the Respondent is skilled in the English language;

d) The Respondent did not object to the Complainant’s request that English be the language of proceedings.

Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its Decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding is English.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

The Complainant owns worldwide trademark registrations for the mark FREY WILLE. For example: International trademark registration No. 824396 – FREY WILLE, with the registration date of August 8, 2003; International trademark registration No. 1047059 – FREY WILLE (logo), with the registration date of March 3, 2010 and United States of America trademark registration No. 79085862 – FREY WILLE (logo), with the registration date of June 7, 2011.

The disputed domain name <freywillestore.net> integrates the Complainant’s FREY WILLE trademark in its entirety, as a dominant element.

The disputed domain name differs from the FREY WILLE trademark by the additional term “store” and the generic Top Level Domain (gTLD) suffix “.net”.

The addition of the term “store” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s FREY WILLE trademark as “store” is a descriptive term that is common in commerce. It is clear that the most prominent element in the disputed domain name is the term “freywille”, which this Panel finds confusingly similar to the Complainant’s FREY WILLE trademark.

Previous UDRP panels have ruled that the mere addition of a common, dictionary, or descriptive term, i.e., a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). See also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark” (RedBull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).

Indeed, “[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red BullGmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709).

The addition of the gTLD “.net” to the disputed domain name does not avoid confusing similarity (See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Thus, the gTLD “.net” is without legal significance since the use of a gTLD is technically required to operate the domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect of the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the FREY WILLE trademark, or a variation thereof.

The Respondent did not submit a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that would be sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the FREY WILLE trademark since the year 2003. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The Complainant also provided evidence to demonstrate its trademark's goodwill. The Panel cites the following with approval; “The Respondent’s selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence. Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent’s registration and use of the disputed domain name other than that of bad faith” (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.

Also, the disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See Edmunds.com, Incv. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

The disputed domain name used to lead Internet users to a website that appeared to sell products that bear the Complainant’s FREY WILLE mark.

Using the disputed domain name to promote similar or identical goods to the goods being offered by the Complainant is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making in their FREY WILLE trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the Complainant’s trademark registration amounts to bad faith”.

Moreover, the Complainant claims that the goods offered for sale on the website under the disputed domain name are seemingly counterfeit products of the Complainant’s, to which the Respondent has not rebutted. 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).

As at the date of this Decision, the disputed domain name is not being used by the Respondent. In all the circumstances of this case, the Panel finds this constitutes further evidence of bad faith. Based on the evidence presented to the Panel, including the late registration of the disputed domain name and the Respondent’s use of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

7. Decision

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 <freywillestore.net> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Dated: December 6, 2012