Ferm Living ApS v Wurth Te Wurth Te, Monk Home Improvements

WIPO Case No. D2024-0148

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Ferm Living ApS v. Wurth Te Wurth Te, Monk Home Improvements

Case No. D2024-0148

1. The Parties

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

The Respondent is Wurth Te Wurth Te, Monk Home Improvements, China.

2. The Domain Name and Registrar

The disputed domain name <fermlivingz.shop> is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2024. On January 15, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 16, 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 17, 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 on January 18, 2024.

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 January 23, 2024. In accordance with the Rules, paragraph
5, the due date for Response was February 12, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 13, 2024.

The Center appointed Peter Burgstaller as the sole panelist in this matter on February 16, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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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 Copenhagen based company specialized in the manufacture and sale of furnishings and interior designs.

The Complainant owns a variety of FERM LIVING trademarks including for example:

- Danish Trademark (word), Registration No. VR 2007 00835, registered March 27, 2007;
- Danish Trademark (figurative), Registration No. VR 2014 00497, registered March 3, 2014;
- International Trademark (word), Registration No. 1391990, registered August 16, 2017, designating various
countries around the world including China; and
- European Union Trademark (word), Registration No. 16389439, registered September 7, 2017 (Annexes 3
and 4 to the Complaint).

The Complainant further owns (amongst others) the domain name <fermliving.com>, which addresses its main business website where it offers furnishings and interior design items under its trademark and logo for sale (Annex 5 to the Complaint).

The disputed domain name was registered December 7, 2023 (Annex 1 to the Complaint); it resolves to a website which purports to sell various third party products including those that use the product designs, product names, as well as model images identical or similar to the products sold on the Complainant’s website (Annex 7 to the Complaint).

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 FERM LIVING trademark is distinctive and well known in the use for the disputed domain name. Further, the Complainant has never assigned, granted, licensed, sold, transferred, or in any way authorized the Respondent to register or use the FERM LIVING trademark in any manner.
field of furnishings and interior design items. The Complainant notes that the disputed domain name
contains the FERM LIVING trademark in its entirety, simply adding the letter “z” at the end. The Complainant
submits that it is therefore inconceivable that the Respondent would not have been aware of the

The Complainant notes that the disputed domain name is actively used for selling a large number of interior products and furniture through a webshop, available on the website at the disputed domain name branded with the Complainant’s distinctive and well-known trademark.

Hence, the Complainant contends, that based on the totality of these factors, it is clear that the Respondent is acting in bad faith with the intent to create a likelihood of confusion with the Complainant’s mark and legitimate e-commerce website.

B. Respondent

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

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6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii)       the Respondent has no rights or legitimate interests with respect to the disputed domain name; and

(iii)      the disputed domain name has been registered and is being used in bad faith.

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 trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant submitted evidence, which incontestably and conclusively establishes rights in the mark

FERM LIVING.

In the present case the disputed domain name is confusingly similar to the FERM LIVING mark in which the
Complainant has rights since it incorporates the entirety of the mark and only adds the letter “z” at the end.

It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name, the mere addition of a letter will not prevent a finding of confusing similarity under the first element of the Policy (WIPO Overview 3.0, section 1.8). This is the case at present.

Finally, it has also long been held that generic Top-Level-Domains (“gTLDs”) (in this case “.shop”) are
generally disregarded when evaluating the confusing similarity of a disputed domain name.

WIPO Overview 3.0, section 1.11.1.

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

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.

While 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 often impossible 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. 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 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, since it has never assigned, granted, licensed, sold, transferred, or in any way authorized the Respondent to register or use the FERM LIVING trademark in any manner; the Respondent is not an authorized dealer of the Complainant’s

products; and the disputed domain name resolves to a website which purports to sell various third party
products including those that use the product designs, product names, as well as model images identical or
similar to the products sold on the Complainant’s website.

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Further, the Complainant focuses on the fact that its trademark is distinctive and well known in the field of furnishings and interior design items; moreover, the trademark FERM LIVING is registered in a variety of jurisdictions around the world and provides suitable evidence of its reputation, adding that it is inconceivable

that the Respondent would not have been aware of this when registering the disputed domain name.

The Respondent did not reply and hence has not rebutted the Complainant’s contentions.

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

C. Registered and Used in Bad Faith

As stated in many decisions rendered under the Policy both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainant must show that:

- the disputed domain name was registered by the Respondent in bad faith; and

- the disputed domain name is being used by the Respondent in bad faith.

The Complainant has established rights in the registered trademark FERM LIVING, long before the registration of the disputed domain name. Further, the trademark FERM LIVING is distinctive and is well known in the field of furnishings and interior design items. The Respondent offers products similar to those of the Complainant and uses the Complainant’s trademark as well as similar model images on its website at the disputed domain name.

It is therefore inconceivable for this Panel that the Respondent has registered and used the disputed domain name without knowledge of the Complainant’s rights, which leads to the necessary inference of bad faith. This finding is supported by the fact that the disputed domain name entirely incorporates the Complainant’s distinctive and registered trademark.

Finally, the disputed domain name uses the gTLD “.shop” which also strongly indicates that the Respondent was aware of the Complainant’s online business/shop at the time of registration of the disputed domain name.

All of these facts indicate that the Respondent must have been aware of the Complainant’s business and trademark when registering the disputed domain name.

Therefore, the Panel is convinced that the disputed domain name was registered in bad faith by the
Respondent.

The Complainant put forward evidence that the disputed domain name resolves to a website which contains the Complainant’s registered trademark and where the Respondent offers various third party products for sale including those that use the product designs, product names, as well as model images identical or similar to the products sold on the Complainant’s website; currently, the disputed domain name still links to this website.

In doing so, the Respondent has intentionally attempted to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its website according to paragraph 4(b)(iv) of the Policy which constitutes bad faith registration and use of the disputed domain name.

Based on the available record, the Panel finds that the Complainant has established the third element of the
Policy.

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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 <fermlivingz.shop> be transferred to the Complainant.

/Peter Burgstaller/
Peter Burgstaller
Sole Panelist
Date: March 1, 2024