The Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France.
The Respondents are Tanglong of Beijing, China; Chenggong of Beijing, China; Linsheng of Beijing, China; Qianfei of Shanghai, China; Hui Liu of Shanghai, China. 2. The Domain Names And Registrar
The disputed domain names , , , , are registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2012. On February 15, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 16, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrant and providing the contact details. On February 16, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceeding. The Respondents did not comment on the language of proceedings 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 the Respondents of the Complaint, and the proceedings commenced on February 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2012. On March 7, 2012, the Center received an email communication from one of the Respondents stating that the disputed domain names were deleted. On March 13, 2012 the Center transmitted an email to the Respondent acknowledging receipt of the Respondent's email communication, indicating that the disputed domain names were not deleted and requesting clarification whether the Respondent's intention was to seek possible settlement. On March 15, 2012 the Center transmitted an email communication to the parties, stating that the due date to file a Response has passed, however in light of the Respondent's communication of March 7, 2012, the parties are invited to comment on their intention regarding possible settlement. On March 16, 2012, the Complainant requested to continue with the proceeding and appoint a panel. The Respondent did not submit any formal response. Accordingly, the Center notified the parties of the procedural update on March 19, 2012.
The Center appointed Jonathan Agmon as the sole panelist in this matter on March 28, 2012. 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 French fashion company, which manufactures and sells garments and fashion accessories under the mark ISABEL MARANT since 1991.
"Isabel Marant" is also the name of the Complainant's designer and president.
The Complainant's products are distributed in many countries around the world, including in the People’s Republic of China.
The Complainant is the owner of numerous worldwide trademark registrations for the mark ISABEL MARANT. For example: International trademark registration No. 717113 – ISABEL MARANT, with the registration date of June 17,1999, designated, among others, to China, Republic of Korea, Croatia and Turkey; International trademark registration No. 921017 – ISABEL MARANT, with the registration date of December 4, 2006, designated to China, Japan, Republic of Korea, Russia and Turkey; Hong Kong, China trademark registration No. 200002034AA – ISABEL MARANT, with the registration date of June 25, 1998; Community trademark registration No. 001035534 – ISABEL MARANT, with the registration date of May 3, 2000; the United States of America trademark registration No. 2367858 – ISABEL MARANT, with the registration date of July 18, 2000, and many more.
The Complainant also developed its presence on the Internet and is the owner of numerous domain names consisting of the mark – ISABEL MARANT. For example: , , , and many others.
The disputed domain names were all registered with the Registrar on December 17, 2011.
The disputed domain name is registered to Linsheng of Beijing, China.
The disputed domain name is registered to Tanglong of Beijing, China;
The disputed domain name is registered to Qianfei of Shanghai, China.
The disputed domain name is registered to Hui Liu of Shanghai, China.
The disputed domain name is registered to Chenggong of Beijing, China.
At the filing of the Complaint, the disputed domain names and resolve to online commercial websites bearing the Complainant’s trademarks and offer for sale products bearing the Complainant's trademark. The disputed domain names , , and resolve to an inactive webpage.
At the time of notifying the Complaint by the Center, the disputed domain names , , and resolve to online commercial websites bearing the Complainant’s trademarks and offer for sale products bearing the Complainant's trademark. The disputed domain names and resolve to an inactive webpage. 5. Parties’ Contentions A. Complainant
The Complainant argues that its trademark's goodwill was recognized in various articles that were published in many countries around the world, including in China.
The Complainant further argues that the disputed domain names consist of the Complainant's mark as a whole with the addition of descriptive terms that does not prevent the similarity between the disputed domain names and the ISABEL MARANT mark.
The Complainant further argues it has not authorized, licensed or granted the Respondents to use the ISABEL MARANT trademark or any variation thereof.
The Complainant further argues that the Respondents are not known by the ISABEL MARANT trademark or by any variation of it.
The Complainant further argues that the Respondents registered the disputed domain names well after the Complainant has established its trademark rights.
The Complainant further argues that the Respondents are making a non legitimate commercial use of the disputed domain names. The Complainant contends that the Respondents are using the disputed domain names in order to confuse consumers as to its origin and selling counterfeit products of the Complainant's.
The Complainant further argues that the Respondents have registered the disputed domain names in bad faith since it is confusingly similar to the Complainant’s ISABEL MARANT trademark.
The Complainant further argues disputed domain names and resolve to online commercial websites, which offered for sale products bearing the Complainant's trademark, which the Complainant identified as counterfeit.
The Complainant further argues that the Respondents passive holding of the disputed domain names , and constitutes bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion And Findings A. Preliminary Issue – Language of the Proceeding
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreements for the disputed domain names is Chinese.
The Complainant requested that the language of proceedings should be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
Upon deciding on the language of the proceeding, the Panel takes the following into consideration:
a) The disputed domain names incorporate the English words "basket", "sneaker", "sneakers", "shoes and "boots".
b) The disputed domain names resolve or used to resolve to an on-line marketplace, which has an option to display its content in English.
c) It is presumed that the disputed domain names are intended to English speaking consumers, as they allow payments in USD and GBP.
d) The Respondents did not object to the Complainant's request that English be the language of proceedings.
Upon considering the above, the Panel decides to allow the Complainant's request and rules that English be the language of proceedings. B. Preliminary Issue – Consolidation of Multiple Domain Names and Respondents
This case raises the question that the Complainant wishes to pursue multiple Respondents, who are the registrants of different disputed domain names, where the connection between the Respondents is not conclusive. Previous UDRP panels have addressed this issue and found that there are situations when multiple domain name holders can be considered as one.
The general rule was asserted in Kimberly-Clark Corporation v. N/A, Po Ser and N/A, Hu Lim, WIPO Case No. D2009-1345 stating that “A number of panels deciding cases under the Policy have permitted a single complaint in respect of multiple domain names for which the registrants were not the same person, where the circumstances suggested that the registrants (being the named respondents) were controlled by a single entity”. (See also Asset Marketing Systems, LLC v. SmartBuy Corporation, Chan Organization, Mitchell de la Cruz, Gongju Jung et. al.,WIPO Case No. D2004-0492; Dr. Ing. h.c.F. Porsche AG v. Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc.,WIPO Case No. D2005-0890).
The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281 broadened the above approach and concluded that "the consolidation of multiple domain name disputes under paragraph 3(c) or 10(e) of the Rules may be appropriate, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve".
Common control has been given a broad interpretation. UDRP Panels found that common control has been exercised in various circumstances, including, where the content of the websites were substantially identical and referred Internet visitors to a common “homepage” (see CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc.,WIPO Case No. D2000-0071), and in circumstances where the domain names were registered with same registrar and resolved to essentially identical websites (see Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments,WIPO Case No. D2004-0659).
The Complainant provided the following evidence and argument to indicate a connection between the Respondents:
a) The disputed domain names were registered on the same day (December 17, 2011);
b) The disputed domain names were registered with the same registrar;
c) The disputed domain names and while registered by different entities, resolve to online commercial websites bearing the Complainant’s trademark and offer for sale the same products bearing the Complainant's trademark, which the Complainant identified as counterfeit;
d) The disputed domain names and registration details share the same phone and facsimile numbers in China;
e) All the disputed domain names combine the term "isabelmarant" with a word designating footwear suggesting an element of common targeting of the Complainant’s trademark and branded footwear products; and
f) All the disputed domain names have the same DNS Name Server.
The Panel deems that above facts are sufficient for a finding of common control or connection between the disputed domain names and , but not between all five disputed domain names.
While the Panel finds strong inference that all five disputed domain names are connected or commonly controlled because these disputed domain names were registered on the same date and with the same registrar and comprise the same trademark element or share the same DNS name server, the Panel, however finds that additional evidence is required to show common control or connection between all 5 disputed domain names. In the present case, counsel for the Complainant failed to provide additional evidence, which would show all the five disputed domain names are connected or commonly controlled.
Moreover, as noted above, counsel for the Complainant provides evidence showing that the pair of disputed domain names and are commonly controlled or connected but fails to provide additional evidence showing common control or connection of the other three disputed domain names with these two disputed domain names.
As a result, the Panel finds that under the circumstances of this case, the Complainant established that the disputed domain names and are subject to the common ownership or control of the same person or company. The connection is sufficient to permit the filing of a single Complaint against the multiple Respondents holding the and disputed domain names.
Accordingly, the Panel will allow the consolidation of the and disputed domain names and is confining the decision to these two disputed domain names. The Panel rejects the request to consolidate the , , and disputed domain names.
The decision of the Panel is made without prejudice to the Complainant’s right to file a fresh complaint (should it wish to do so) with respect to the , and disputed domain names. C. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant is the owner of numerous worldwide trademark registrations for the mark ISABEL MARANT. For example: International trademark registration No. 717113 – ISABEL MARANT, with the registration date of June 17,1999, designated, among others, to China, Republic of Korea, Croatia and Turkey; International trademark registration No. 921017 – ISABEL MARANT, with the registration date of December 4, 2006, designated to China, Japan, Republic of Korea, Russia and Turkey; Hong Kong, China trademark registration No. 200002034AA – ISABEL MARANT, with the registration date of June 25, 1998; Community trademark registration No. 001035534 – ISABEL MARANT, with the registration date of May 3, 2000; United States trademark registration No. 2367858 – ISABEL MARANT, with the registration date of July 18, 2000, and many more.
The disputed domain names integrate the Complainant's ISABEL MARANT trademark in its entirety. The disputed domain names differ from the Complainant's trademark by the following:
The disputed domain name differs from the Complainant's registered ISABEL MARANT trademark by the additional term "basket" and by the additional gTLD ".com".
The disputed domain name differs from the Complainant's registered ISABEL MARANT trademark by the additional term "sneaker" and by the additional gTLD ".com".
As stated above, the disputed domain names integrate the Complainant’s ISABEL MARANT trademark in its entirety, as a dominant element. The additional words "basket" and "sneaker" do not serve sufficiently to distinguish or differentiate the disputed domain names from the Complainant’s ISABEL MARANT trademark, as they are descriptive elements that relate to the Complainant's field of business and products.
The mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “[t]he incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
The addition of the gTLD “.com” and ".net" to the disputed domain names does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.com” and ".net" are without legal significance since the use of a gTLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain names and are identical or confusingly similar to a trademark in which the Complainant has rights. D. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
In the present case, the Complainant has demonstrated that the Respondents lack rights or legitimate Interests in respect of the and domain names and the Respondents failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondents to use the ISABEL MARANT trademark, or a variation thereof.
The Respondents did not submit a response and did not provide any evidence to show any rights or legitimate interests in the and disputed domain names that is sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in respect of the and disputed domain names. E. Registered and Used in Bad Faith
The Complainant must show that the Respondents registered and are using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant maintained that the Respondents registered the and disputed domain names well after the Complainant's ISABEL MARANT trademark was registered. According to a trademark search performed by the Panel, the Complainant's trademark, has been registered and in affect at least since the year 1998. It is suggestive of the Respondents’ bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use by the respondents, if by using the domain names they have intentionally attempted to attract, for commercial gain, Internet users to the websites or other online locations to which the domain names resolve to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain names resolve to.
The and disputed domain names resolve to websites that advertise and market fashion products bearing the mark ISABEL MARANT.
The Respondents’ use of the ISABEL MARANT mark to promote the sale of similar or identical goods to the goods being offered by the Complainant constitutes evidence that the Respondents registered and used the and disputed domain names with knowledge of the Complainant and the Complainant's trademark and reputation, and subsequent intended to trade off the value of these. The Respondents’ actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765: “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”.
Furthermore, the and disputed domain names are confusingly similar to the Complainants' trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior WIPO UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
In light of the Complainant’s distinctive registered trademark and the Respondents’ use of the and disputed domain names, the Panel finds that the use of the and disputed domain names, which are confusingly similar to the Complainant’s mark, creates likelihood that Internet users would be confused and identify the Respondents as either associated or affiliated with the Complainant.
Based on the evidence presented to the Panel, including the late registration of the disputed domain names, the similarity between the disputed domain names and the Complainant's trademark and the Respondents use of the disputed domain names to sell goods that are regularly sold by the Complainant and goods that are sold in connection with the Complainant’s trademark, the Panel draws the inference that the and disputed domain names were registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to the Complainant.1
Jonathan Agmon
Sole Panelist
Dated: April 9, 2012
1 The decision of the Panel is made without prejudice to the Complainant’s right to file a fresh complaint (should it wish to do so) with respect to the , and disputed domain names.
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