Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France.
Respondent is Dana Mixon of Honolulu, Hawaii, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2013. On April 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2013. Respondent sent an email regarding the procedure to the Center on April 8, 2013. Respondent did not submit any formal response by the response due date. Accordingly, the Center notified Respondent’s default on April 29, 2013.
The Center appointed Manoel J. Pereira Dos Santos as the sole panelist in this matter on May 8, 2013. 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 trademark upon which the Complaint is based is ISABEL MARANT.
According to the documentary evidence and contentions submitted, Complainant owns a number of trademark registrations for the trademark ISABEL MARANT for shoes, ready to wear, jewelry and couture collections, including WIPO Trademark Registrations Nos. 717113, registered on June 17, 2009; 921017, registered on December 4, 2006; and 1095322, registered on June 27, 2011; and United States Trademark Registrations Nos. 2367858, registered on July 18, 2000; and 3222267, registered on March 27, 2007. In addition, the Complainant is the owner of a number of domain names containing the registered trademark, and Isabel Marant is a designer who is also the President of Complainant.
The disputed domain name was registered on March 7, 2013. 5. Parties’ Contentions A. Complainant
Complainant argues that the disputed domain name is confusingly similar to the trademark ISABEL MARANT because (i) it incorporates the trademark ISABEL MARANT and the common words “official” and “sale”, which are internationally understood in the fashion field, and (ii) if a domain name incorporates a distinctive trademark it is confusingly similar to that trademark.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent has no association or affiliation with Complainant and has not received any authorization to use the trademark ISABEL MARANT in a domain name or in any other matter; (ii) Respondent is not commonly known by the disputed domain name; (iii) Respondent registered the disputed domain name after Complainant established its trademark rights; (iv) Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; (v) Respondent is intentionally using the disputed domain name to attract consumers to Respondent’s website for commercial gain.
Finally, Complainant contends that the disputed domain name has been registered and is being used in bad faith by Respondent because: (i) Respondent is not selling original products but rather products which Complainant identified as being counterfeit, and (ii) Respondent is leading consumers to believe that they are accessing a website owned by Complainant. B. Respondent
Respondent sent an email to the Center on April 8, 2013. But Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Effect of the Default
The consensus view is that respondent’s default does not automatically result in a decision in favor of complainant and that complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.6). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contac, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., supra; RX America, LLC v. Matthew Smith,WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements. B. Identical or Confusingly Similar
The disputed domain name incorporates the trademark ISABEL MARANT in its entirety in association with the words “official” and “sale”. In this type of combination it is clear that the trademark ISABEL MARANT stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark.
Previous UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation Limited v. Barry Cheng Kwok Chu,WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd,WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l.,WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M,WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0282.
The addition of the generic words “official” and “sale” increases the likelihood of confusion because they refer to a type of activity which is internationally known in the fashion industry. Also, it has been consistently decided that the addition of generic or descriptive terms to an otherwise distinctive trademark name is to be considered confusingly similar to the registered trademark.
Finally, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Matthew Smith, supra.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the trademark ISABEL MARANT and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met. C. Rights or Legitimate Interests
The disputed domain name is not the name of Respondent nor the name by which Respondent is commonly known, and the disputed domain name is not Respondent’s trademark.
The Panel finds as reasonable Complainant’s contention that Respondent has no connection or affiliation with Complainant and has not been authorized to use the trademark ISABEL MARANT. The Panel finds no reason why Respondent would choose the term “isabelmarant” other than to create an association with the trademark ISABEL MARANT.
According to the documentary evidence and contentions submitted, the disputed domain name has been used to resort to a website offering copies of Isabel Marant products. On May 17, 2013, the Panel visited the webpage to which the disputed domain name resolves, and noted that the same website is still active with several offers of products similar to original Isabel Marant products. The Panel also noted that said website displays on the top the mark ISABEL MARANT as if it were an official online shop of the Complainant.
The Panel is convinced that Complainant has done enough to establish a prima facie case that Respondent lacks rights to or legitimate interests in the disputed domain name, and by defaulting Respondent has failed to provide the Panel with any evidence of Respondent’s rights to or legitimate interests therein. In addition, none of the three nonexclusive methods for the sole panelist to conclude that Respondent has rights or legitimate interests in the disputed domain name (paragraph 4(c) of the Policy) shows a result in favor of the Respondent.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met. D. Registered and Used in Bad Faith
The particulars of the instant case indicate that Respondent was undoubtedly aware of the existence of the trademark ISABEL MARANT when Respondent registered the disputed domain name. In addition, the combination of the word “isabelmarant” with the words “official” and “sale”, which is commonly used in the fashion business, indicates that Respondent intended to take advantage of possible mistakes by Internet users when trying to reach Complainant’s website. Therefore, Respondent showed opportunistic bad faith because the disputed domain name was connected with the activities identified by Complainant’s trademark.
The Panel also concurs with the understanding of other UDRP panels that use of a domain name to resort to a website which sells unauthorised and/or what appears to be counterfeit goods is a strong evidence of bad faith. See Prada S.A. v. Domains for Life,WIPO Case No. D2004-1019.
Paragraph 4(b)(iv) of the Policy provides that if, by using the domain name respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location, that circumstance shall be evidence of the registration and use of a domain name in bad faith.
The Panel has found before, for the purpose of determining the existence of confusingly similarity, that the addition of the generic terms “official” and “sale” increases the likelihood of confusion. That is reinforced by the fact that the website to which the disputed domain name resolves also displays on the top the trademark ISABEL MARANT.
Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith, and finds that the requirement of paragraph 4(a)(iii) of the Policy is met. 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.
Manoel J. Pereira dos Santos
Sole Panelist
Date: May 21, 2013
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