Ferm Living ApS v Liu Baoqun

WIPO Case No. D2024-0038

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Ferm Living ApS v. Liu Baoqun

Case No. D2024-0038

1. The Parties

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

The Respondent is Liu Baoqun, China.

2. The Domain Name and Registrar

The disputed domain name <chicfermliving.com> is registered with Gname.com Pte. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January
5, 2024. On January 8, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On January 9, 2024, 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 (Redacted for privacy) and contact information in
the Complaint. The Center sent an email communication to the Complainant on January 10, 2024, 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 in English on January 11,
2024.

On January 10, 2024, the Center informed the Parties in Chinese and English, that the language of the Registration Agreement for the disputed domain name is Chinese. On January 11, 2024, the Complainant requested English to be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission.

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 in Chinese and English of the Complaint, and the proceedings commenced on January 15, 2024. In accordance with

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the Rules, paragraph 5, the due date for Response was February 4, 2024. The Respondent did not submit

any response. Accordingly, the Center notified the Respondent’s default on February 5, 2024.

The Center appointed Rachel Tan as the sole panelist in this matter on February 14, 2024. 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 company based in Copenhagen which specialises in the manufacture and sale of
furnishings and interior designs since its foundation in 2006. The products produced and distributed by the
Complainant are sold in more than 75 countries worldwide.

The Complainant is the owner of trade marks consisting of the element “Ferm Living” in multiple jurisdictions. For example, Danish Trade Mark Registration No. VR 2007 00835, registered on March 27, 2007 in classes 16, 20 and 35; International Trade Mark Registration No. 1391990, registered on August 16, 2017,

designating, inter alia, China, in classes 8, 11, 16, 20, 21, 24, 25, 27, 28, and 35; and European Union
Trade Mark Registration No. 16389439, registered on September 7, 2017 in classes 6, 8, 11, 16, 18, 20, 21,

24, 25, 27, 28, and 35.

The Complainant is the owner of the domain name <fermliving.com>.

The Respondent is Liu Baoqun, China.

The disputed domain name was registered on November 18, 2023, and resolves to a website in English that markets and sells different interior products and furniture. This resolved website allegedly imitates the Complainant’s website at the domain name <fermliving.com>, displaying the Complainant’s trade mark, designs, product names and environmental pictures.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is confusingly similar to the
Complainant’s FERM LIVING mark as it incorporates the entirety of the mark in combination with the
laudatory and/or descriptive prefix “chic” and the generic Top-Level Domain (“gTLD”) “.com”. The addition of
the prefix “chic” does not impact the overall impression of the dominant part of the disputed domain name
“ferm living” and hence is not sufficient to overcome the confusing similarity with respect to the FERM
LIVING mark which remains the dominant and only distinctive element in the disputed domain name.
Further, the gTLD “.com” has no legal significance and may be disregarded.

The Complainant further alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence to conclude that the Respondent owns any service marks or word marks that reflect the disputed domain name and nothing in the records suggests that the Respondent

is commonly known by the disputed domain name. The resolved website of the disputed domain name
markets and sells a large number of interior products and furniture as well as uses the Complainant’s trade
mark without consent. The Respondent’s reason for registration of the disputed domain name is to profit
from its sale and/or use of the disputed domain name for attracting Internet users to the resolved website by
creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship,
affiliation, or endorsement of the resolved website.

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The Complainant finally asserts that the disputed domain name has been registered and is being used in bad faith. The Respondent is using the disputed domain name to attract Internet visitors to its website. It is likely that the main intention with the registration of the disputed domain name is to profit from an illegal exploitation of the goodwill and reputation associated with the Complainant’s reputed FERM LIVING mark.

B. Respondent

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

6. Discussion and Findings

6.1 Procedural Issue: Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

The Complaint was filed in English. The Complainant has requested that the language of the proceeding be characters, and (ii) the Complainant is unable to communicate in Chinese and hence the translation of the Complaint would unfairly be a disadvantage and burden for the Complainant delay the proceeding and adjudication of this matter.

The Respondent did not make any submissions with respect to the language of the proceeding.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

6.2 Substantive Issues

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trade mark and the disputed domain name. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of a trade mark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of another term here, “chic”, may bear on the assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

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B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Respondent has not provided evidence of a legitimate noncommercial or fair use of the disputed domain name or reasons to justify his or her choice of the term “ferm living” in the disputed domain name. There is no indication to show that the Respondent is commonly known by the disputed domain name or otherwise has rights or legitimate interests in it. Moreover, the Complainant has not granted the Respondent any license or authorization to use the Complainant’s marks or register the disputed domain name.

The Panel notes that the disputed domain name resolves to a website in English, marketing and selling
different interior products and furniture. It is also allegedly imitating the Complainant’s website at the domain
name <fermliving.com>, displaying the Complainant’s trade mark, designs, product names and
environmental pictures. Furthermore, the website does not accurately and prominently disclose the lack of a
relationship between the Complainant and the Respondent. Therefore, these facts do not support a claim of
a bona fide offering of goods or services under the “Oki Data test”. See Oki Data Americas, Inc. v. ASD,

Inc., WIPO Case No. D2001-0903.

Furthermore, the nature of the disputed domain name carries a risk of implied affiliation. WIPO Overview

3.0, section 2.5.1.

None of the circumstances in paragraph 4(c) of the Policy are present in this case. For these reasons, the

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

Based on the available record, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Complainant’s FERM LIVING mark was registered well before the registration of the disputed domain name. Through use and advertising, the Complainant’s FERM LIVING mark is known throughout the world, including in China where the Respondent resides. Search results using the term “ferm living” on the Internet search engines direct Internet users to the Complainant and its products, which indicates that an exclusive connection between the FERM LIVING mark and the Complainant has been established. As such, the Respondent should have known of the Complainant’s

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FERM LIVING mark when registering the disputed domain name. This fact has been reinforced by the
Respondent’s use of the FERM LIVING mark at the resolved website of the disputed domain name.

The Panel notes that the disputed domain name resolves to a website that is marketing and selling different interior products and furniture. This resolved website also allegedly imitates the Complainant’s website at the domain name <fermliving.com>, which displays the Complainant’s trade mark, designs, product names and environmental pictures. The lack of a disclaimer that the Respondent is not affiliated with the Complainant is noticeably absent. The Panel is satisfied that the Respondent intends to take advantage of the reputation of the Complainant’s trade marks to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to source, sponsorship, affiliation, or endorsement of the website. This demonstrates bad faith registration and use of the disputed domain name, as provided in paragraph 4(b)(iv) of the Policy.

Given all the circumstances of the case, the Panel finds that the Respondent must have known of the
Complainant before registering the disputed domain name, and considering the Respondent’s lack of rights
or legitimate interests, and by registering and using the disputed domain name as discussed above, the

Panel is led to conclude that the disputed domain name was registered and is being used in bad faith.

The Panel finds that the Complainant has established the third element 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 <chicfermliving.com> be transferred to the Complainant.

/Rachel Tan/
Rachel Tan
Sole Panelist
Date: February 28, 2024