The Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France.
The Respondent is yan jingpeng of Quanzhou, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2013. On September 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 12, 2013, 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 September 23, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On September 23, 2013, the Complainant confirmed its request that English be the language of the proceeding. The 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 the Respondent of the Complaint, and the proceedings commenced on September 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2013.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on November 6, 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 facts pertinent to the decision in this case are:
(i) The Complainant is the owner of the following trademarks, which have been registered in many countries, inter alia:
a. ISABEL MARANT ETOILE, International trademark, No. 1095322, registered on June 27, 2011.
b. ISABEL MARANT ETOILE, Community trademark, No. 009970682, registered on October 19, 2011.
c. ISABEL MARANT, International trademark, No. 717113, registered on June 17, 1999.
(ii) The Complainant has used the trademark ISABEL MARANT on which the Complaint is based, on its clothing and shoes products.
(iii) The Disputed Domain Name was registered on August 9, 2013. 5. Parties’ Contentions A. Complainant
(i) The Disputed Domain Name is identical or confusingly similar to the registered trademark of the Complainant.
The Disputed Domain Name contains the “isabel marant etoile” element which is identical to the Complainant’s trademark; therefore, the Disputed Domain Name is identical or confusingly similar to the Complainant’s ISABEL MARANT ETOILE and ISABEL MARANT trademarks.
(ii) The Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Complainant has never authorized nor otherwise licensed the Respondent to use the Complainant’s trademarks, and yet the Respondent has been offering shoes by reference to the ISABEL MARANT trademark for sale via the web site to which the Disputed Domain Name resolves.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
The Disputed Domain Name was registered and is being used for the purpose of attracting Internet users for commercial gain by offering products purporting to be ISABEL MARANT branded goods for sale. This creates confusion for the Internet users as to the source, affiliation, sponsorship or endorsement of the web site and the products offered for sale thereon, thereby showing that the Respondent registered and is using the Disputed Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Preliminary Procedural Issue: Language of Proceedings
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 Registrar confirmed, in its email of September 12, 2013, that the Registration Agreement for the Disputed Domain Name is in Chinese. The Complainant requested, in an email dated September 23, 2013 to the Center, that the language of the proceeding be English. The Complainant raised the following arguments to support its request: First, the Disputed Domain Name consists of Latin characters. Second, the fact that the web site to which the Disputed Domain Name resolves contains mainly English content suggests that the Respondent has a working knowledge of English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of proceedings having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of proceedings. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. Ltd.,WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceedings should not be prejudicial to either of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:
“[I]n certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (See paragraph 4.3 of WIPO Overview 2.0). The Panel notes the following facts:
(i) The Respondent’s web site to which the Disputed Domain Name resolves appears to contain content mainly in the English language and it appears that business is conducted through that web site in English. This indicates that the Respondent is familiar with the Complainant’s requested language.
(ii) The Panel notes that all the Center’s communications to the Respondent were made in both Chinese and English and that the Respondent was given the opportunity to object to the Complainant’s request that English be the language of proceeding. The Respondent was also advised that, in the absence of any response from the Respondent, the Center would proceed on the basis that the Respondent has no objection to the Complainant’s request that English be the language of proceeding. The Panel finds that the Respondent has been given a fair opportunity to object, and has not done so.
(iii) The Panel finds that the Complainant is not in a position to conduct these proceedings in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese.
(iv) The Respondent has shown no interest in responding and requiring the Complainant to translate the Complaint into Chinese would unnecessarily delay the proceedings.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of proceedings and the decision will be rendered in English. 7. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”
The Complainant has produced registration certificates of the trademark herein establishing that the Complainant is the owner of ISABEL MARANT ETOILE trademark in many countries and is entitled to act in order to recover and register the Disputed Domain Name. Therefore, the Panel finds that the Complainant has rights in the ISABEL MARANT ETOILE trademark sufficient to file this UDRP Complaint.
It is established that incorporation of a complainant’s distinctive trademark in its entirety into a disputed domain name is sufficient to establish that the disputed domain name is identical or confusingly similar to the complainant’s trademark (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662; Time Warner Entertainment Company L.P. v. HarperStephens,WIPO Case No. D2000-1254; eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006 1307, also see the generally adopted UDRP panel views under paragraph 1.9 of WIPO Overview 2.0.). Further, a hyphen is not sufficient to differentiate the disputed domain name from the trademark (Moncler S.R.L. v. Zheng Little,WIPO Case No. D2012-2120).
In the present case, the Disputed Domain Name incorporates the Complainant’s distinctive trademark ISABEL MARANT ETOILE in its entirety and adds a hyphen, which serves no function of differentiating the Disputed Domain Name from the Complainant’s trademark. The ISABEL MARANT ETOILE element is still immediately recognizable as the Complainant’s trademark. The Panel finds that the Disputed Domain Name is not sufficiently different to distinguish the Disputed Domain Name from the Complainant’s trademark.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following several circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of WIPO Overview 2.0, whereby:
“[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In the present case, the Complainant has established that it is the owner of the ISABEL MARANT ETOILE and ISABEL MARANT trademarks. The Complainant states that the Respondent has never received any authorization or license to use the Complainant’s trademark in the Disputed Domain Name.
The Panel notes that the registrant of the Disputed Domain Name is “yan jingpeng”, and there is no evidence in the record to suggest that the Respondent might be commonly known by a name similar to the Disputed Domain Name. There is no evidence that the Respondent has any trademark or service mark rights in the Disputed Domain Name.
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Thus, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. The Respondent did not respond to the Complaint or give any explanation as to why the Disputed Domain Name was chosen and registered.
The Panel notes that the Respondent uses the Complainant’s ISABEL MARANT trademark and sells the purported ISABEL MARANT shoes on the web site under the Disputed Domain Name without accurately and prominently disclosing its relationship with the trademark holder. Such conduct is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Disputed Domain Name (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
Therefore, given the allegations and evidence provided by the Complainant, and in the absence of any reply from the Respondent, the Panel finds it is reasonable to conclude that the Respondent deliberately chose to include the Complainant’s ISABEL MARANT ETOILE trademark in the Disputed Domain Name for the purpose of achieving commercial advantage by misleadingly diverting Internet users to the web site at the Disputed Domain Name and that such use cannot be considered a legitimate noncommercial or fair use. Therefore, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
[…]
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
In relation to bad faith at the time of registration, the Panel notes that the Complainant’s trademarks have been registered in many countries around the world and have become well known in many countries prior to the registration of the Disputed Domain Name in 2013. The Respondent’s choice to incorporate the Complainant’s ISABEL MARANT ETOILE trademark in entirety as the only distinctive element of the Disputed Domain Name suggests that the Disputed Domain Name was registered in bad faith and the subsequent use of the Disputed Domain Name to resolve to a web site which offers purported ISABEL MARANT shoes further shows that the Respondent obviously knows the Complainant’s trademark and its business. The Respondent did not reply to the Complaint nor submit any evidence to the contrary, therefore the Panel finds that the Disputed Domain Name was registered in bad faith.
In relation to use in bad faith, the Panel notes that the Respondent uses the ISABEL MARANT trademark on the web site under the Disputed Domain Name and sells purported ISABEL MARANT shoes at extremely low prices compared with the genuine ones without accurately and prominently disclosing its relationship with the trademark holder. The Respondent thereby obtains commercial advantage by attracting Internet users to the web site to which the Disputed Domain Name resolves. Therefore, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion and the Disputed Domain Name is being used in bad faith.
Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy. 8. 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.
Peter J. Dernbach
Sole Panelist
Date: November 15, 2013
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