Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France.
Respondent is Wang Shan Shan of Da Qu, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Hangzhou E-Business Services Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2011. On October 14, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 2011, 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 19, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date
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 Respondent of the Complaint, and the proceedings commenced on October 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 14, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 15, 2011.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on November 29, 2011. 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. Language of Proceeding
Paragraph 11 (a) of the Rules provides that, unless otherwise agreed by the parties, or specified otherwise in the registration agreement for the disputed domain name, the language of the administrative proceeding shall be the language of the registration agreement. This is subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the case. The language of the Registration Agreements for the disputed domain names is Chinese. Complainant has filed arguments in support of English being recognized as the language of the proceedings based partly on the observation that the content of the website featured on the disputed domain name is displayed in English and that this content demonstrates that Respondent has an understanding of this language. On October 19, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding.
In cases where a complainant submits a request for the language of proceedings to be a language other than the language of the registration agreement, respondents are invited to object to such requests. In the present case, the Center invited Respondent to submit arguments and/or supporting materials in response to Complainant’s request for English to be the language of the proceeding by October 24, 2011. Because Respondent did not object by the deadline, the Center initiated the administrative proceeding and sent all further communications to the parties in both English and Chinese languages. The Center also decided provisionally to accept the Complaint as filed in English and to accept a response in either English or Chinese, all subject to review and determination by the Panel (on appointment) in due course. 4. Factual Background
Complainant is a French fashion company which has been in business since at least as early as 1991 and trades under the name ISABEL MARANT. Complainant sells garments and fashion accessories under the under the ISABEL MARANT trademark and was founded by an individual of the same name, specifically Ms. Isabel Marant, a French citizen. Complainant maintains multiple retail locations which sell products under the ISABEL MARANT trademark including stores in France, the United States of America, and China.
Complainant owns multiple trademark registrations for ISABEL MARANT which provide protection in Australia, China, Hong Kong, China, South Korea, Canada, the United States, and other jurisdictions. These registrations cover, amongst other goods, clothing items and accessories.
The disputed domain name was created on September 27, 2011. The registrant of the disputed domain name is identified as Wang Shan Shan, Respondent in this proceeding.
At the time of the Complaint was filed, the website featured at the disputed domain name has advertised clothing for sale. A heading reading “ISABEL MARANT” has been displayed on many of these webpages, and many of the clothing items are advertised as “Isabel Marant” (e.g., “Isabel Marant Skirt”).
A letter of Complaint was sent by a Chinese attorney to the Registrar on behalf of Complainant requesting that the disputed domain name be disabled. 5. Parties’ Contentions A. Complainant
Complainant claims that its ISABEL MARANT trademark is known by fashion professionals and the media in multiple countries including China, Respondent’s country of residence. Complainant maintains that its products are distributed worldwide including in China through retail outlets maintained by Complainant in Beijing and Shanghai.
Complainant alleges that the disputed domain name is confusingly similar to its ISABEL MARANT trademark because it incorporates its ISABEL MARANT trademark in its entirety and adds the word “shop”, which Complainant states is a usual word which is internationally understood. Complainant maintains that the disputed domain name was registered after Complainant’s trademark was established and that Complainant has not authorized or licensed Respondent to register the disputed domain name or use the ISABEL MARANT trademark. Regarding use of the disputed domain name, Complainant alleges that the products advertised on the disputed domain name are counterfeit goods which are sold at discounted prices. Complainant maintains this use is indicative of bad faith because Respondent has registered and has used the disputed domain name in an effort to attract Internet users to the related website for the purpose of financial gain by creating confusion with Complainant’s ISABEL MARANT trademark.
Complainant has provided evidence of publicity for its goods which dates back to 1991. Complainant has also provided copies of multiple Chinese language publications which feature its goods and its ISABEL MARANT trademark. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Preliminary Procedural Issue for Panel Determination: Language of Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Complainant has requested that English be recognized as the language of the proceeding. The Center has communicated notice of the Complaint in both the English and Chinese languages and has invited Respondent to answer the Complaint in either language. Respondent has not acknowledged any communications transmitted by the Center.
The content featured on the disputed domain name is displayed in the English language and exhibits that Respondent can communicate in this language. The Center has communicated with Respondent in the English and Chinese languages and has provided Respondent with the opportunity to file its response in either language. Taking both of the foregoing points into account along with Respondent’s default and lack of any communication in this proceeding, the Panel concludes that English should be the language of the proceedings. Translation of the Complaint and other materials would cause unnecessary delay. A. Identical or Confusingly Similar
The disputed domain name combines Complainant’s ISABEL MARANT trademark and the term “shop”. The use of “shop” with Complainant’s ISABEL MARANT trademark as featured in the disputed domain name does not sufficiently distinguish the disputed domain name from the ISABEL MARANT trademark to dispel the likelihood of confusion. Use of “shop” in this manner increases the likelihood of consumer confusion because it is a descriptive term which has the potential to lead Internet users to believe that the disputed domain name is an authorized retail outlet for ISABEL MARANT products. Similar use of the term “shop” in other domain names has been cited in past UDRP decisions as a basis for finding of confusing similarity. See, e.g., Deutsche Telekom AG v. Timmy Comeau,WIPO Case No. D2003-0377 and Grundfos Holding A/S v. Sergey M Doubovitskiy,WIPO Case No. D2011-0346. Moreover, it has been held that the incorporation of a trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to the trademark at issue. Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Complainant has established trademark rights in ISABEL MARANT which date to 1998 in the European Community, the United States, and China. It is clear from the record that Complainant sells clothing and accessories under its ISABEL MARANT trademark and has established rights in the ISABEL MARANT trademark.
There is no evidence in the record indicating that Respondent has ever traded under the terms “Isabel”, “Marant”, or “Isabel Marant”, that Respondent has trademark rights in any of these terms, or that Respondent has any other rights or legitimate interests in ISABEL MARANT or “Isabel Marant Shop”.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
The Panel is satisfied that Respondent had knowledge of Complainant’s ISABEL MARANT trademark when registering the disputed domain name given that the disputed domain name incorporates Complainant’s distinctive ISABEL MARANT trademark in its entirety. The record shows that Complainant’s trademark rights in China precede the creation of the disputed domain name, that Complainant’s goods and Complainant’s ISABEL MARANT trademark have been featured in numerous Chinese language publications, and that Complainant operates two (2) retail locations in China. The foregoing establishes that Complainant’s rights in its ISABEL MARANT trademark have been publicized in China. Respondent, as a resident of China, is likely to have been aware of these rights when registering the disputed domain name given the established rights of Complainant and the publicity for Complainant’s trademark and goods.
The content featured on the disputed domain name supports the contention that Respondent is aware of the ISABEL MARANT trademark and the products sold under this trademark, as the website features the ISABEL MARANT trademark in its design and advertises goods identical to those sold by Complainant under its ISABEL MARANT trademark. Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use. In this case, Respondent has registered the disputed domain name consisting of Complainant’s distinctive ISABEL MARANT trademark and the generic term “shop”. The disputed domain name features Complainant’s ISABEL MARANT trademark and offers goods for sale which are identical to the items offered by Complainant under its ISABEL MARANT trademark. The use of the disputed domain name to advertise goods identical to those offered by Complainant is indicative of an intent to deceive consumers into believing that the disputed domain name is somehow associated with, affiliated with, and/or endorsed by Complainant. Continued use of disputed domain name in this manner could lead consumers to mistakenly believe that the products featured are offered, sponsored, endorsed, or otherwise approved by Complainant, thereby diverting web traffic from Complainant’s domain name .
Accordingly, the Panel finds that Complainant has satisfied the requirements of 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 be transferred to Complainant.
Kimberley Chen Nobles
Sole Panelist
Dated: December 15, 2011
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