The Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France.
The Respondent is Tian Fei of Guangzhou, China. 2. The Domain Name and Registrar
The disputed domain name is registered with 1API GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2014. On June 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2014, 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 June 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2014.
The Center appointed Edoardo Fano as the sole panelist in this matter on July 9, 2014. 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.
The language of the proceeding is English, being the language of the Registration Agreement as per paragraph 11(a) of the Rules.
Upon review of the case file, the Panel noticed that the Complaint was not notified in accordance with paragraph 2(a) of the Rules. Therefore, in abundance of caution and to ensure compliance with paragraph 2(a) of the Rules, the Panel issued a Procedural Order, which the Center communicated to the Parties on July 22, 2014, notifying the Respondent of the Complaint, and inviting the Respondent to indicate to the Center within five calendar days whether it wished to submit a Response. The Respondent sent an email communication to the Center on July 23, 2014, offering the disputed domain name for sale. The Respondent did not submit any further communications by the specified due date. 4. Factual Background
The Complainant is a French company that has been in the fashion business since 1991, selling products like clothes, shoes and jewelry under the trademark ISABEL MARANT, which is the name of Ms. Isabel Marant, the President of the company as well as the designer of the products.
The Complainant owns several trademark registrations for ISABEL MARANT, among which:
- International Trademark Registration No. 717113 for ISABEL MARANT, registered on June 17, 1999, also extended to China, the country of the Respondent;
- Hong Kong Trademark Registration No. 20002034AA for ISABEL MARANT registered on June 25, 1998;
- Community Trademark Registration No. 001035534 for ISABEL MARANT, registered on May 3, 2000;
- United States Trademark Registration No. 2,367,858 for ISABEL MARANT registered on July 18, 2000.
The Complainant provided evidence in support of the above.
The disputed domain name was registered on June 20, 2013. At the time of filing of the Complaint, the disputed domain name resolved to a website looking like a genuine website of an authorized Complainant’s reseller, which appeared to offer for sale purportedly counterfeit ISABEL MARANT products. 5. Parties’ Contentions A. Complainant
The Complainant states that the disputed domain name is identical to its trademark ISABEL MARANT.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorised by the Complainant to register the disputed domain name or to use its trademark within on the concerned website, nor is it commonly known by the disputed domain name.
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith, since it was registered with the only purpose to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. B. Respondent
The Respondent has made no formal substantive reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the registered trademark ISABEL MARANT and that the disputed domain name is confusingly similar to the trademark ISABEL MARANT.
It is well accepted that country code top-level domain suffix, in this case “.co”, may be ignored when assessing the confusing similarity between a trademark and a domain name, see e.g., VAT Holding AG v V,WIPO Case No. D2000-0607.
The Panel finds that the Complainant has therefore satisfied the first element of showing that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Respondent has failed to file a formal Response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.
Should the products offered for sale on the website at the disputed domain name be genuine products, legitimately acquired by the Respondent, the question that would arise is whether the Respondent would therefore have a legitimate interest in using a domain name that is confusingly similar to the Complainant’s trademark in circumstances that are likely to give rise to initial interest confusion.
According to the majority view in relation to the issue of resellers as summarized in paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”):
“A reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.”
This summary is mainly based on the panel decision Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
In the present case, the Panel is of the opinion that while someone may be legally entitled to offer for sale/resale a trademark owner’s genuine trademarked products, mainly shoes in the present case, that does not necessarily extend to the right to do so through a domain name that is virtually identical to that trademark owner’s trademark.
In this Panel’s view, when there is no authorization, and where the respondent has no relevant trade mark rights, it is very difficult for a respondent to establish rights or legitimate interests in a virtually identical domain name. Furthermore, the Panel finds that the Respondent is not accurately and prominently disclosing its relationship with the Complainant in this case (see paragraph 2.3 of the WIPO Overview 2.0).
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, 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:
(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that 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] website or location or of a product or service on [the respondent’s] web site or location”.
As regards the registration of the disputed domain name in bad faith, the Panel notes that the registration of the Complainant’s trademark ISABEL MARANT has been proved, and, therefore, the Panel finds that the Respondent knew or must have known the Complainant and/or its trademark, especially because the website at the disputed domain name appears to offer for sale purportedly counterfeit ISABEL MARANT products, mainly shoes. In this Panel’s opinion, the disputed domain name was registered in bad faith.
As regards the use in bad faith, the website at the disputed domain name widely refers to the sale of the Complainant’s products, mainly shoes, so that confusion is very likely to arise.
Moreover, the use of the top level domain “.co” is very likely to be confused with the main website of the Complainant, namely “m”, also because the language of the website at the disputed domain name is French, that is the Complainant’s language, and not Chinese (the Respondent’s language) or Spanish (“.co” being the Colombian country-code top-level domain of the disputed domain name).
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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 name be transferred to the Complainant.
Edoardo Fano
Sole Panelist
Date: July 30, 2014
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