Ferm Living ApS v chunmei xu

WIPO Case No. D2023-0515

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Ferm Living ApS v. chunmei xu

Case No. D2023-0515

1. The Parties

The Complainant is Ferm Living ApS, Denmark, represented by Aera A/S, Denmark.

The Respondent is chunmei xu, China.

2. The Domain Name and Registrar

The disputed domain name <ferm-livingus.shop> (the “Domain Name”) is registered with Dynadot, LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2023.
On February 3, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Domain Name. On February 3, 2023, the Registrar transmitted by email to the Center its
verification response disclosing registrant and contact information for the Domain Name which differed from
the named Respondent (Redacted for Privacy) and contact information in the Complaint. The Center sent
an email communication to the Complainant on February 6, 2023, providing the registrant and contact
information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the

Complaint. The Complainant filed an amended Complaint on February 6, 2023.

The Center verified that the Complaint together with the amended 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 February 10, 2023. In accordance with the Rules,
paragraph 5, the due date for Response was March 2, 2023. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on March 3, 2023.

The Center appointed Gregor Vos as the sole panelist in this matter on March 9, 2023. 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.

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4. Factual Background

The Complainant is a Danish company based in Copenhagen and is active in the field of manufacturing and sales of furnishings and interior design. The Complainant was founded in 2006 and currently sells its products in over 75 countries.

The Complainant is the owner of inter alia the following trademark registrations (the “Trademarks”):

- Danish trademark registration No. VR 2007 00835 for FERM LIVING registered on March 27, 2007;

- Danish trademark registration No. VR 2014 00497 for registered on March 3, 2014;

-	International trademark registration No. 1228352 for registered on March 26, 2014, with
designation of inter alia Australia, China, and Japan;
-	International trademark registration No. 1391990 for FERM LIVING registered on August 16, 2017, with designation of inter alia Australia, China, and Japan.

Further, it is undisputed that the Complainant is the holder of inter alia the domain name <fermliving.com>.

The Domain Name was registered on June 29, 2022. The Domain Name resolves to an active website that appears to mimic the Complainant’s website, and to purportedly offer for sale the Complainant’s products at discounted prices.

5. Parties’ Contentions

A. Complainant

With the Complaint, the Complainant seeks that the Domain Name is transferred to the Complainant. The Complaint is based on the following main factual and legal grounds: the Domain Name is identical or confusingly similar to the Trademarks of the Complainant, the Respondent has no rights or legitimate interests in the Domain Name and the Domain Name has been registered and is being used in bad faith.

Firstly, according to the Complainant, the Domain Name is confusingly similar to the Trademarks. The with the mere addition of a hyphen, the geographical term “us” and the generic Top-Level Domain (“gTLD”) “.shop”. Consumers may therefore believe that the website connected to the Domain Name is an official website of the Complainant or connected to the Complainant.

Secondly, according to the Complainant, the Respondent has no rights or legitimate interests in the Domain Name. The Complainant has never licensed or otherwise permitted the Respondent to use the Trademarks in the Domain Name and the Respondent is not commonly known by the Domain Name. Further, on the

website to which the Domain Name resolves, furnishings are being passed off as original products from the offering of goods or services.

Lastly, according to the Complainant, the Respondent has registered and is using the Domain Name in bad faith. The Respondent deliberately reproduces the Trademarks in the Domain Name and it is not conceivable that the Respondent was not aware of the Trademarks when registering the Domain Name. Further, the Respondent is using the Domain Name to attract Internet users to his or her website.

B. Respondent

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

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6. Discussion and Findings

In view of the lack of a response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(f), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of the Complainant’s undisputed factual presentations.

For the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:

i.         the Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and

ii.         the Respondent has no rights or legitimate interests in respect of the Domain Name; and

iii.        the Domain Name has been registered and is being used in bad faith.

Only if all three elements have been fulfilled, the Panel is able to grant the remedies requested by the

Complainant. The Panel will deal with each of the requirements in turn.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the Domain Name is (i) identical or confusingly similar to a trademark or service mark, (ii) in which the Complainant has rights.

With respect to having rights pursuant to paragraph 4(a)(i) of the Policy, it is noted that the Complainant is registered as the owners of the Trademarks. Consequently, the Panel finds that the Complainant has rights in the Trademarks.

With regard to the assessment of identity or confusing similarity of the Domain Name with the Trademarks, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between the Trademarks and the Domain Name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark (see section 1.7 of the WIPO Overview 3.0).

In the present case, the Trademarks or their dominant element FERM LIVING, are incorporated in their entirety in the Domain Name. The addition of the gTLD “.shop” is viewed as a standard registration requirement, and may as such be disregarded by the Panel (see section 1.11.1 of the WIPO Overview 3.0). Furthermore, the Panel finds that the addition of the hyphen and the element “us” does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview 3.0).

Consequently, the Panel finds that the requirement under paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name. The onus of proving this requirement, like each element, falls on the Complainant. Given the difficulty in proving a negative, however, it is usually sufficient for a complainant to make out a prima facie case that a respondent lacks rights or legitimate interests. If a complainant does establish a prima facie case, the burden of production shifts to the respondent (see, e.g., WIPO Overview 3.0, section 2.1; Sanofi v. Cimpress Schweiz GmbH, WIPO Case No. D2017-0522).

Paragraph 4(c) of the Policy lists three non-limitative examples of instances in which a respondent may establish rights or legitimate interests in the disputed domain name.

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The Complainant has substantiated that none of these circumstances apply in this case. By defaulting, the Respondent has failed to address the prima facie case thus established by the Complainant. Furthermore, based on the record before it including the use of the disputed domain name as described under section 4 above, the Panel does not see an indication that any of the circumstances of paragraph 4(c) of the Policy is

present.

Moreover, the Domain Name is composed of the Trademarks plus an additional term “us”, which carries a
risk of implied affiliation as it effectively impersonates or suggests sponsorship or endorsement by the

Complainant (see WIPO Overview 3.0, section 2.5.1).

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

Domain Name. Paragraph 4(a)(ii) is thereby fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, a complainant must show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four non-limitative circumstances which may be considered as evidence of registration and use in bad faith of a domain name.

In the present case, the Trademarks have been registered and used by the Complainant worldwide prior to the registration date of the Domain Name. The Panel agrees with the Complainant that based on the record before it, it is not conceivable that the Respondent chose the Domain Name without knowledge of the Complainant’s activities and its Trademarks under which the Complainant is doing business. This is reinforced by the fact that the Trademarks are incorporated in their entirety in the Domain Name and that the Trademarks are depicted on the website to which the Domain Name resolves.

In light of the lack of any rights or legitimate interest in the Domain Name by the Respondent, and in the absence of any conceivable good faith use of the Domain Name, the Panel finds from the present circumstances that the Respondent has intentionally sought to take unfair advantage of or otherwise abuse the Trademarks.

With regard to use of the Domain Name in bad faith, the Panel finds that the use of the Trademarks in the Domain Name signals an intention on the part of the Respondent to confuse Internet users into thinking that the Domain Name is connected to the Complainant. This is reinforced by the fact that the disputed domain name resolves to a website displaying the Trademarks and purportedly offering for sale the Complainant’s products at discounted prices, however, the Respondent does not provide any information on its (non- existent) relationship with the Complainant, which creates the false impression of an affiliation with the Complainant (see WIPO Overview 3.0, section 3.2.1).

Therefore, the Panel finds that the Domain Name has been registered and is being used in bad faith and that the third element of paragraph 4(a)(iii) of the Policy is fulfilled.

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 Domain Name <ferm-livingus.shop> be transferred to the Complainant.

/Gregor Vos/ Gregor Vos Sole Panelist Date: March 27, 2023