Ferm Living ApS v Manlidy, GNN

WIPO Case No. D2023-1750

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Ferm Living ApS v. Manlidy, GNN

Case No. D2023-1750

1. The Parties

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

The Respondent is Manlidy, GNN, Singapore.

2. The Domain Name and Registrar

The disputed domain name <newfermliving.com> (the “Domain Name”) is registered with OwnRegistrar, Inc.

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2023.

On April 20, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 21, 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 the same day, 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 April 22, 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 the due date for Response was May 16, 2023. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on May 19, 2023.

The Center appointed Jeremy Speres as the sole panelist in this matter on May 23, 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 selling of furnishings and interior design items. The Complainant was founded in 2006 and currently sells its products in over 75 countries under its FERM LIVING trade mark. The Complainant owns trade mark

registrations for its FERM LIVING mark in numerous jurisdictions, including International Trade Mark

Registration No. 1391990 FERM LIVING in classes 08, 11, 16, 20, 21, 24, 25, 27, 28 and 35 with registration

date August 16, 2017, designating the Respondent’s country of Singapore, amongst others.

The Domain Name was registered on February 15, 2023 and resolves to a website entitled “ferm LIVING”, featuring a replica of the Complainant’s logo and purportedly offering the Complainant’s products for sale at

discounted prices using the Complainant’s product names and imagery.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its FERM LIVING mark, that the

Respondent has no rights or legitimate interests in the Domain Name, and the Domain Name was registered

and used in bad faith given that it has been used to impersonate the Complainant for the Respondent’s

commercial gain.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant’s registered FERM LIVING mark is wholly contained within the Domain Name with the

addition of the dictionary term “new”. Where the trade mark is recognisable within the disputed domain

name (as in this case), the addition of other terms (including descriptive terms) does not prevent a finding of

confusing similarity (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”) at section 1.8). The Complainant has satisfied the requirements of paragraph 4(a)(i)

of the Policy.

B. Rights or Legitimate Interests

The Complainant’s mark was registered and used extensively for many years prior to registration of the

Domain Name. The Domain Name is confusingly similar to the Complainant’s mark and the Complainant

has certified that the Domain Name is unauthorised by it.

The general impression created by the Domain Name’s website, including use of the Complainant’s

distinctive logo, product names and imagery, is one of impersonation of the Complainant. UDRP panels
have categorically held that the use of a domain name for illegal activity (e.g. impersonation) can never

confer rights or legitimate interests on a respondent (WIPO Overview 3.0 at section 2.13.1). To the extent

that the Domain Name’s website might be considered that of a reseller of the Complainant’s products, it does

not meet the requirements of the well-known Oki Data test given that the site does not accurately and

prominently disclose the Respondent’s relationship with the Complainant (Oki Data Americas, Inc. v. ASD,

Inc., WIPO Case No. D2001-0903; and WIPO Overview 3.0 at section 2.8).

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There is no evidence that any of the circumstances set out in paragraph 4(c) of the Policy, nor any others which might confer rights or legitimate interests upon the Respondent, pertain. The Complainant has satisfied paragraph 4(a)(ii) of the Policy by virtue of having made out an unrebutted prima facie case (WIPO Overview 3.0 at section 2.1).

C. Registered and Used in Bad Faith

Considering the facts canvassed above, the Domain Name’s website clearly and intentionally impersonated

the Complainant. In light of this and the composition of the Domain Name featuring the Complainant’s mark,

the Respondent must have had the Complainant in mind when registering and using the Domain Name. It is
clear in these circumstances that the Respondent sought to impersonate the Complainant for commercial
gain, falling squarely within paragraph 4(b)(iv) of the Policy (Ebay Inc. v. Wangming, WIPO Case No.

D2006-1107).

The Panel has independently established that at least one security vendor has flagged the Domain Name for
malicious activity, which is an indicator of bad faith (The Commissioners for HM Revenue and Customs v.
WhoisGuard Protected, WhoisGuard, Inc. / Hoshyar Marshall, WIPO Case No. D2021-0344).

The Panel has also independently established that the Respondent has been found, under the Policy, to have lost at least 15 prior UDRP cases as respondent. The Respondent is a serial cybersquatter and this case appears to be a continuation of that pattern.

The Panel draws an adverse inference from the Respondent’s failure to take part in the present proceeding

where an explanation is certainly called for (WIPO Overview 3.0 at section 4.3).

The Complainant has satisfied 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 Domain Name, <newfermliving.com>, be transferred to the Complainant.

/Jeremy Speres/

Jeremy Speres

Sole Panelist
Date: June 2, 2023