The Complainant is IM Production, of Paris, France, represented by Cabinet Vittoz, France.
The Respondent is Delao Dkeo, of Washington DC, Washington, 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 October 8, 2013. On October 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 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.
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 October 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2013.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on November 15, 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
According to the documentary evidence and contentions submitted, the Complainant owns a number of trademark registrations for the trademark ISABEL MARANT for shoes, ready to wear, jewelry and couture collections, including Madrid System 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 the Complainant.
The disputed domain name was registered on September 5, 2013. 5. Parties’ Contentions A. Complainant
The 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 “online” and “boutique”, 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.
The Complainant further contends that the Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) the Respondent has no association or affiliation with the Complainant and has not received any authorization to use the trademark ISABEL MARANT in a domain name or in any other matter; (ii) the Respondent is not commonly known by the disputed domain name; (iii) the Respondent registered the disputed domain name after Complainant established its trademark rights; (iv) the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; (v) the Respondent is intentionally using the disputed domain name to attract consumers to the Respondent’s website for commercial gain.
Finally, the Complainant contends that the disputed domain name has been registered and is being used in bad faith by the Respondent because: (i) the Respondent is not selling original products but rather products which the Complainant identifies as being counterfeit, and (ii) the Respondent is leading consumers to believe that they are accessing a website owned by the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name incorporates the trademark ISABEL MARANT in its entirety in association with the words “online” and “boutique”. 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 “online” and “boutique” increases the likelihood of confusion because they refer to a type of activity which is internationally known in the fashion industry.
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. B. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests. The Complainant showed, inter alia, that the Respondent has neither a license nor any other permission to use the disputed domain name. The Respondent has failed to demonstrate such rights or legitimate interests. The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interest in the disputed domain name. It is clear that the Respondent has not demonstrated any bona fide offering of goods or services by its use of the disputed domain name and has not rebutted the Complainant’s prima facie case. Nor has the Respondent shown that it has been commonly known by the disputed domain name.
The Panel further finds that given the use made of the disputed domain name, when the Respondent registered the disputed domain name it must have known the ISABEL MARANT trademark of the Complainant. It registered the disputed domain name because it would be recognized as such.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the requirement of paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
The Panel is of the opinion that the Respondent must have been aware of the Complainant and its trademark rights when it registered the disputed domain name. Bearing this in mind, the Panel finds the Respondent’s bad faith is illustrated by the fact that the disputed domain name resolves to a web site offering unauthorized and/or what appears to be counterfeit goods. The Panel is prepared to infer that the Respondent is taking advantage of the goodwill and reputation of the Complainant’s trademark for commercial gain and it well established that such use is evidence of bad faith. Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Universal Spheres Inc.,WIPO Case No. D2010-0822. Further, such use clearly threatens to divert actual clients away from the Complainant and disrupt the Complainant’s business.
As in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Ladbroke Group Plc v. Sonnoma International LDC,WIPO Case No. D2002-0131, after examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly the Panel finds in favor of the Complainant on the third element 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.
Dilek Ustun Ekdial
Sole Panelist
Date: December 2, 2013
Full & Egal Universal Law Academy