The Complainant is IM Production (a French Joint Stock Company) of Paris, France, represented by Cabinet Vittoz, France.
The Respondent is Mingbo Yang Mingbo Yang of Jilin, China. 2. The Domain Name And Registrar
The Disputed Domain Name is registered with Fastdomain Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 29, 2012. On February 29, 2012, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the Disputed Domain Name. On February 29, 2012, FastDomain, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on March 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2012. An informal email communication was sent to the Center by the Respondent on March 16, 2012. The Center acknowledged receipt of this communication and reaffirmed the due date for Response to the Respondent. The Center did not receive a Response from the Respondent on or by March 27, 2012, and therefore sent the Respondent an email communication on March 29, 2012, as notification that the Complaint would continue to be decided without a Response in accordance with the Rules. No Response has been submitted by the Respondents to date.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on April 10, 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 IM production, a French fashion company based in Paris. The President and Designer of the Complainant is an individual called Isabel Marant who established the Complainant, which designs, manufactures and sells fashion garments and accessories including shoes, boots and sneakers. The Complainant’s products are distributed across the world, including China, as well as being featured in various magazines and the press worldwide.
The Complainant is the owner of several trade marks for or incorporating ISABEL MARANT, which are registered in China, South Korea, Hong Kong, the United States of America, Canada, Australia and the European Union. Particularly, the Complainant has trade mark registrations for ISABEL MARANT and ISABEL MARANT ETOILE. These trade marks are regularly used by the Complainant in the countries to which they are applicable
The Complainant uses the domain name as its main website.
The Complainant states that it has been using the trade mark ISABEL MARANT since 1991 when the business was “initiated”, although it is not clear from the documentary evidence provided when the Complainant began using ISABEL MARANT. However, the use of the ISABEL MARANT trade mark and similar trade marks incorporating this mark, and their registration or filing as appropriate, predates the Respondent’s registration of (the Disputed Domain Name). 5. Parties’ Contentions A. Complainant
Identical or Confusingly Similar
The Complainant contends that the Disputed Domain Name contains the words “isabel marant” which are identical to the Complainant’s ISABEL MARANT trade mark and incorporates the words ISABEL MARANT from the Complainant’s ISABEL MARANT ETOILE trade mark in their entirety. The Complainant contends that the word “sneakers” in the Disputed Domain Name is an internationally understood word, is generic, and when combined with a distinctive trade mark, should be disregarded from assessing similarity between the Complainant’s trade marks and the Disputed Domain Name. The Complainant submits, therefore, that the Disputed Domain Name is confusingly similar to the Complainant’s ISABEL MARANT trade mark.
Rights or Legitimate Interest
The Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name, and is not making a legitimate non commercial or fair use of the Disputed Domain Name. In support of this, the Complainant relies on the following facts:
i) the Complainant has found no evidence to suggest that the Respondent has ever been commonly known by the Disputed Domain Name, or has ever conducted legitimate offline business(es) under the name isabelmarant-sneakers (similar to the Disputed Domain Name);
ii) the Respondent registered the Disputed Domain Name after the Complainant had established the ISABEL MARANT trade marks;
iii) the Complainant has found no evidence that the Respondent has used the Disputed Domain Name for any purpose other than for commercial gain by attracting and misleading customers to the Disputed Domain Name in order sell unauthorized copies of ISABEL MARANT products;
iv) the Complainant has not authorized the Respondent’s use of the ISABEL MARANT or ISABEL MARANT ETOILE trade marks or granted a licence to the Respondent in connection with the Disputed Domain Name and the Respondent is not related to the Complainant in any way.
Registered and Used in Bad Faith
The Complainant contends that the Disputed Domain Name was registered, and is being used, in bad faith on the basis that:
i) the Disputed Domain Name is being used, for commercial gain, to connect to the website that sells discounted “Isabel Marant” branded products, which the Complainant has identified as being counterfeit;
ii) the Respondent is using the Disputed Domain Name in order to encourage customers to believe that it is linked with a website belonging to the Complainant whereas in fact the Complainant is unconnected to the website. B. Respondent
The Respondent did not reply to the Complainant’s contentions in the Complaint. 6. Discussion And Findings A. Identical or Confusingly Similar
The Complainant has rights in trade marks registered for ISABEL MARANT and ISABEL MARANT ETOILE and goodwill in the domain name and in the positive reputation it holds for its Isabel Marant products.
The Disputed Domain Name incorporates the ISABEL MARANT trade mark in its entirety, and a substantial part of the ISABEL MARANT ETOILE trade mark. The Disputed Domain Name contains an additional word, “sneakers”, but the Complainant’s submission that this word should not be considered to establish confusion between the Disputed Domain Name and the Complainant’s trade marks is accepted. (Nationwide Mutual Insurance Company v. Great Wall Domains,WIPO Case No. D2005-1251 cites the principle from Dell Inc. v. George Dell and Dell Net Solutions,WIPO Case No. D2004-0512 that if a domain name incorporates a distinctive mark in its entirety, “it is confusingly similar to that mark despite the addition of other words.”). This means that the distinctive element of the Disputed Domain Name, “isabelmarant”, can be considered without the inclusion of the generic word “sneakers”. Therefore, the Disputed Domain Name does not contain any distinctive elements or any other words that would distinguish it from the ISABEL MARANT trade mark so as to avoid confusion. Similarly, the top-level suffix “.com” may be disregarded for the purposes of applying the “identical or confusingly similar” test as it is a technical requirement of the registration.
As the non-distinctive element of the Disputed Domain Name (namely “sneakers”) is disregarded, it is possible to conclude that the similarity between the Complainant’s trade marks and the Disputed Domain Name would be likely to lead to confusion on the part of consumers.
Accordingly, the Panel finds that the Complainant has satisfied element (i) under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel has observed, through limited investigations which it is entitled to undertake (Hesco Bastion Limited v. The Trading Force Limited,WIPO Case No. D2002-1038), that the Disputed Domain Name is no longer in operation in the manner described in the Complainant’s submissions. However, from the evidence of use of the Disputed Domain Name provided by the Complainant, the Panel is satisfied that the Respondent’s use of the Disputed Domain Name was clearly for commercial purposes.
In the Panel’s view, the intention of featuring products for sale under the Disputed Domain Name was clearly to generate revenue through selling to customers who wanted to buy Isabel Marant products. The function of the site was to attract and mislead consumers and then sell to them what seem to be infringing copies of ISABEL MARANT products. Many of these sales may have been made to customers who were misled into believing they were buying bona fide ISABEL MARANT products, or were confused as to which product they were buying. This indicates a use of the Disputed Domain Name which cannot be considered “fair use” or legitimate.
The Respondent has not challenged the Complainant’s submission that there is no evidence that the Respondent has ever been commonly known by the Disputed Domain Name. Nor does the Respondent challenge the Complainant’s assertion that the Respondent has not been licensed or otherwise authorized to use the Complainant’s trade marks and that there is no relationship between the Complainant and Respondent. Prima facie, this is enough to establish for the purposes of the Policy that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Accordingly, the Panel finds that the Complainant has satisfied element (ii) under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The trade marks ISABEL MARANT and ISABEL MARANT ETOILE were registered in all respective countries of registration (or where registration had not yet occurred, were filed) by the Complainant before the Disputed Domain Name was registered by the Respondent. For example, ISABEL MARANT was registered at the Office for Harmonization in the Internal Market (OHIM) in May 2000 and ISABEL MARANT ETOILE was filed at OHIM in May 2011. The Respondent registered the Disputed Domain Name in February 2012.
The Panel finds that the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of the Complainant.
Also, the Panel finds that the Respondent must have been aware of the Complainant’s domain name and website, and deliberately registered a similar domain name and used a similarly named website in order to attract consumers to the Disputed Domain Name for commercial gain by creating a likelihood of confusion as to the source of products on the Respondent’s website.
Therefore, the Panel finds that it can only be concluded that the choice to register and use the Disputed Domain Name was made in bad faith in accordance with 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied element (iii) under paragraph 4(a) 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 the Complainant.
Charters Macdonald-Brown
Sole Panelist
Dated: April 20, 2012
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