The Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France.
The Respondent is Ted Chen of California, United States of America. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2014. On August 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 3, 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 September 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2014.
The Center appointed Haig Oghigian as the sole panelist in this matter on October 8, 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. 4. Factual Background
The Complainant is a French joint stock company called IM PRODUCTION which owns and uses the ISABEL MARANT trademark for shoes, ready-to-wear, jewelry, and couture collections.
The Complainant is the owner of the following trademarks (collectively, the “ISABEL Marks”) registered:
International Registration: ISABEL MARANT, registration no. 717 113 filed on June 17, 2009 in classes 3, 14, and 25; ISABEL MARANT, registration no. 921 017 filed on December 4, 2006 in classes 9, 18, and 24; ISABEL MARANT ETOILE, registration no. 1 095 322 filed on June 27, 2011 in classes 14, 18, and 25.
In Hong Kong: ISABEL MARANT, registration no. 20002034AA filed on September 28, 1998 (renewed on March 29, 2005) in classes 3, 14, and 25; ISABEL MARANT, registration no. 300804960 filed on January 26, 2007 in class 18; ISABEL MARANT ETOILE, registration no. 301955089 filed on June 23, 2011 in classes 14, 18, and 25.
In South Korea: ISABEL MARANT, registration no. 563542 filed on July 12, 2001 in classes 14 and 25; and ISABEL MARANT, registration no. 552904 filed on December 18, 2002 in class 18.
In Canada: ISABEL MARANT, registration no. 624 908 filed on June 17, 1999 in classes 3, 14, and 25; ISABEL MARANT, registration no. 001 035 534 filed on December 23, 1998 and renewed in classes 3, 14, and 25; ISABEL MARANT ETOILE, registration no. 009 970 682 filed on May 16, 2011 in classes 3, 9, 14, 18, and 25.
In the United States of America: ISABEL MARANT, registration no. 2367858 filed on December 18, 1998 and renewed in classes 14 and 25; and ISABEL MARANT, registration no. 3222267 filed on April 6, 2006 in class 18.
The Complainant is also the owner of the following domain names: , , , , and . 5. Parties’ Contentions A. Complainant
The Complainant requests that the registration of the Domain Name be transferred from the Respondent to the Complainant.
The Complainant argues that the Domain Name is confusingly similar to the ISABEL Marks. The Domain Name is a combination of the characterizing name “isabelmarant” and the name of the internationally-known city “Paris” which is clearly associated with the famous Parisian fashion designer Isabel Marant. The Complainant asserts that if a domain name incorporates a distinctive trademark, such as the Complainant’s trademark, in its entirety, it is confusingly similar to that mark despite the addition of other words.
The Complainant also asserts that the Respondent has no rights or legitimate interests in the Domain Name (paragraph 4(a)(ii) of the Policy). The Respondent was never authorized by the Complainant to register a domain name phonetically identical and confusingly similar to the trademark and patronymic name of ISABEL MARANT.
The Respondent is not commonly known by the Domain Name, has never conducted legitimate online businesses under the domain name of , and has registered the Domain Name after the Complainant had established its trademark rights in the ISABEL Marks.
The Respondent has not been granted a license or other rights to use the ISABEL Marks as part of any domain name or for any other purpose. The Complainant is in no way associated or affiliated with the Respondent. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name, and its only use is to misleadingly attract customers to its website for its own commercial gain.
The Complainant further argues that the Domain Name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy). The Domain Name is directed to the website “www.” which is used to sell Isabel Marant’s products which the Complainant believes are counterfeit. The Complainant confirmed that the Respondent offered the goods for sale on the website at the Domain Name with a very low price whereas some of these goods correspond to the Complainant’s 2012, 2013, and 2014 collections which are sold by the Complainant and its distributors at a retail price much higher than the price proposed on the Respondent’s website. The Complainant asserts that the difference in price demonstrates that the goods are not genuine products of the Complainant. The Complainant also claims that the Respondent is using the Domain Name to encourage consumers to believe that the Respondent is connected to the Complainant’s official website. Therefore, since the Respondent has deliberately registered the Domain Name to attract consumers to its website for commercial gain by creating confusion with the ISABEL Marks, the Respondent is using the Domain Name in bad faith. Also, use of a domain name to direct consumers to a website which sells unauthorized and/or what appear to be counterfeit goods is strong evidence of bad faith (See Prada S.A. vs. Domains for Life,WIPO Case No. D2004-1019). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the complainant must prove that the domain name is identical or confusingly similar to the trademark.
Previous UDRP panels have found that a respondent may not avoid confusion by appropriating another’s entire mark in a domain name (Research In Motion Limited v. One Star Global LLC,WIPO Case No. D2008‑1752). Non-distinctive term additions will not be a defense against a finding of confusion (Research In Motion Limited v. Louis Espinoza,WIPO Case No. D2008-0759, Research In Motion Limited v. J,WIPO Case No. D2008-0758, Research Quitxtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253).
It is clear on the given evidence that the Domain Name is a combination of the ISABEL Marks and the non-distinctive and generic word of the city “Paris”. Furthermore, given the business operated by the Complainant and the fact that its President and designer of the ISABEL MARANT products is a Parisian, confusion is enhanced by the addition of the term “Paris”, and the Domain Name mistakenly suggests that it is operated by, or otherwise affiliated with, the Complainant.
In accordance with UDRP precedent and for the above reasons, the Panel finds that the Domain Name is confusingly similar to the ISABEL Marks. The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the complainant must prove that the respondent has no rights or legitimate interests in respect of the domain name. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the respondent in order to demonstrate its rights or legitimate interests in a domain name. Such circumstances include:
- (demonstrable preparations to) use the domain name in connection with a bona fide offering of goods or services prior to the dispute (Paragraph 4(c)(i));
- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights (Paragraph 4(c)(ii)); or
- legitimate, noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark (Paragraph 4(c)(iii)).
In this case, the Complainant presented a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. It is clear on the given evidence that the Domain Name was registered long after the Complainant started to use the ISABEL Marks and the Complainant has asserted that the Respondent has not been granted any license or other rights to use the ISABEL Marks as part of any domain name or for any other purpose. Thus, the burden of production is on the Respondent to establish its rights or legitimate interests in the Domain Name (See PepsiCo, Inc. v. Amilicar Perez Lista d/b/a Cyberson,WIPO Case No. D2003-0174). However, there has been no evidence produced by the Respondent in this regard.
There is no evidence that suggests that the Respondent has been or is commonly known by the Domain Name. In addition, there is no evidence that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name or any trademark confusingly similar thereto, as a domain name or for any other purposes.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name, and the Complainant has therefore 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 requires that the complainant must prove that the domain name has been registered and is being used in bad faith. In addition, paragraph 4(b) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the complainant in order to demonstrate bad faith use and registration of the domain name. Such circumstances include, among others:
- circumstances indicating that you have registered domain name primarily for the purpose of selling the domain name registration to the complainant who is the owner of the trademark (Paragraph 4(b)(i)); and
- registration of the domain name in order to prevent the owner of the domain trademark from reflecting the mark in a corresponding domain name, provided that the complainant have engaged in a pattern of such conduct (Paragraph 4(b)(ii)); and
- by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location. (Paragraph 4(b)(iv).
The Respondent must have had knowledge of the Complainant’s rights in the ISABEL Marks when it registered the Domain Name, since the Complainant’s ISABEL Marks are unique and well-known. The Respondent’s awareness of the Complainant’s trademark rights in the ISABEL Marks at the time of registration suggests opportunistic bad faith registration. (See BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007). Also, the fact that the Domain Name is linked to a website which is not associated with the Complainant and selling products which are likely to be counterfeit, and at a minimum, are competing with the Complainant’s goods, would amount to bad faith. (See Prada S.A. v. Domains for Life, supra).
The evidence also establishes that the Respondent is linking the Domain Name to a website which offers ISABEL MARANT products without being authorized or approved by the Complainant, despite having likely known of the Complainant’s trademark rights in the ISABEL Marks. The website prominently displays the ISABEL MARANT ETOILE trademark and does not disclose the Respondent’s relationship (or lack thereof) with the Complainant. Further, given that the products sold on the website are at large discounts when compared to retail price, it is likely that such products are counterfeit ISABEL MARANT products. Finally, it is probable that the Respondent is intentionally profiting of the goodwill associated with the ISABEL Marks by selling “Isabel Marant” products to Internet users who are likely confused of the source, affiliation, or endorsement of such products. Therefore, the Panel is satisfied that the Complainant has established bad faith registration and use as required by paragraph 4(a)(iii) 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 Domain Name be transferred to the Complainant.
Haig Oghigian
Sole Panelist
Date: October 15, 2014
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