The Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France.
The Respondent is Jimmy Choo of Cross Junction, Virginia, 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 July 17, 2015. On July 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2015, 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 proceeding commenced on July 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2015.
The Center appointed Luca Barbero as the sole panelist in this matter on August 27, 2015. 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 fashion company that owns and uses the trademark ISABEL MARANT in connection with shoes, ready to wear clothing, jewelry and couture collections.
Ms. Isabel Marant, the designer and president of the Complainant, initiated her business in the creation, manufacturing and sale of garments and fashion accessories under the trademark ISABEL MARANT in 1991.
The Complainant’s ISABEL MARANT products are distributed, amongst others, in the United States of America, France, the United Kingdom of Great Britain and Northern Ireland and Asia.
The Complainant is the owner, amongst others, of the following trademark registrations for ISABEL MARANT (word mark): International Trademark Nos. 717113, registered on June 17, 1999, in classes 3, 14 and 25, and 921017, registered on December 4, 2006, in classes 9, 18 and 24; Community Trademark Nos. 001035534, registered on May 3, 2000, in classes 3, 14 and 25, and 003010048, registered on January 17, 2005, in classes 9, 18, 21 and 24; United States Trademark Nos. 2367858, filed on December 18, 1998, in classes 14 and 25, and 3222267, filed on April 6, 2006, in class18.
The Complainant is also the owner of several domain names incorporating the trademark ISABEL MARANT, including , registered on April 20, 2002, , registered on June 3, 2004 and, , registered on April 11, 2003.
The disputed domain name was registered on November 1, 2014 and is pointed to a web site where purported ISABEL MARANT products are offered for sale. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the trademark ISABEL MARANT, as it incorporates the trademark with the addition of the word “sneaker”, which is internationally understood.
The Complainant states that it is in no way associated or affiliated with the Respondent and that the Respondent has never been granted any license or other rights to use the Complainant’s trademarks or authorized by the Complainant to register the disputed domain name.
The Complainant further submits that the Respondent is not commonly known by the disputed domain name and that the Respondent has never conducted a legitimate offline business under the name “”.
In addition, the Complainant contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name as the disputed domain name is used to misleadingly attract customers for commercial gain to the Respondent’s web site, where copies of ISABEL MARANT products are sold.
With reference to the circumstances evidencing bad faith, the Complainant asserts that the disputed domain name is pointed to a web site where counterfeit ISABEL MARANT products are offered for sale at very low prices and that the Respondent has used the disputed domain name to encourage consumers to believe that it is connected to the Complainant and its official web site, as it published the following sentence under the “About us” page of the site: “welcome to the official Isabel Marant online sale store”.
The Complainant also states that the Respondent deliberately registered and used the disputed domain name to attract Internet users to its web site for financial gain, by creating confusion with the Complainant’s mark when it is not an authorized retailer and has no relationship with the Complainant. In view of the above, the Complainant also asserts that the Respondent’s conduct shows opportunistic bad faith as the disputed domain name is connected with the activities identified by the Complainant’s trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights;
(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 Complainant has provided evidence of several trademark registrations for ISABEL MARANT granted before the registration date of the disputed domain name.
As indicated in paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the location of the trademark, its date of registration and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.
The threshold test for confusing similarity under paragraph 4(a)(i) of the Policy involves a comparison between the trademark and the disputed domain name to determine the likelihood of confusion by Internet users. The trademark at issue generally needs to be recognizable as such within the domain name, and the addition of common, dictionary, descriptive or negative terms are typically not regarded as sufficient to prevent threshold confusion by Internet users. See paragraph 1.2 of the WIPO Overview 2.0.
In the case at hand, the Panel notes that the trademark ISABEL MARANT is entirely included in the disputed domain name, with the addition of the term “sneaker”, which is insufficient to exclude the likelihood of confusion between the disputed domain name and the Complainant’s trademark.
See, among the numerous UDRP decisions finding that the addition of generic or descriptive terms to a trademark is not a distinguishing feature, Barry D. Sears, Ph.D. v. YY / Yi Yanlin,WIPO Case No. D2007-0286 (“diet” added to the ZONE mark); Fry’s Electronics, Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1435 (“electronic” added to the FRY mark); Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to the WALMART mark); PepsiCo, Inc. v. Henry Chan,WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to the PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Web site Pros, Inc. and Quality,WIPO Case No. D2005-1028 (“net” and “training” added to the ISO mark); Banca Intesa S.p.A v. Roshan Wickramaratna,WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma,WIPO Case No. D2007-0565 (“software” added to the AUCHAN mark).
The Panel furthermore finds that the inclusion of the term “sneaker” is particularly apt to mislead Internet users into believing that the web site published at the disputed domain name is operated by, or with the authorization of, the Complainant, as it is descriptive of one of the products manufactured and sold by the Complainant.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is established in paragraph 4(a) of the Policy that the Complainant has the burden of proof. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with previous UDRP decisions, it is well-established that it is sufficient that the Complainant make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (See Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393; Accor v. Eren Atesmen,WIPO Case No. D2009-0701).
In the case at hand, the Panel finds that the Complainant has made a prima facie case and that the Respondent, by not submitting a Response, has failed to prove any of the circumstances that could demonstrate, pursuant to paragraph 4(c) of the Policy, rights or legitimate interests in the disputed domain name.
According to the documents and statements submitted by the Complainant, there is no relation between the Respondent and the Complainant, the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark or to register the disputed domain name.
In addition, there is also no indication before the Panel that the Respondent might be commonly known by the disputed domain name.
The Panel notes that the disputed domain name is redirected to a web site promoting the sale of purported ISABEL MARANT products. Based on a review of said web site, the Panel finds that the Respondent’s use of the disputed domain name is apt to induce users to believe that the web site is operated by, or affiliated with, the Complainant.
In view of the above, the Panel finds that the disputed domain name has not been used in connection with a bona fide offering of goods or services, or with a legitimate, noncommercial or fair use.
The Panel therefore finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
In light of the prior registration and use of the Complainant’s trademark ISABEL MARANT in connection with the products manufactured and sold by the Complainant since 1991 and promoted also through the Complainant’s web site “www.”, and considering that the Respondent has used the disputed domain name to promote the sale of purported ISABEL MARANT products, the Panel finds that the Respondent was unquestionably aware of the Complainant’s trademark at the time of the registration of the disputed domain name, with which it is confusingly similar.
As to the use of the disputed domain name, the Panel notes that, in light of the contents of the Respondent’s web site and in particular the publication of sentences inducing users to believe that the web site is the official web site of the Complainant (such as “official Isabel Marant online sale store”), Internet users could be easily misled about the source or affiliation of the web site and of the products promoted therein.
Therefore, the Panel finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has been attempting to attract Internet users to its web site for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its web site and of the products on said web site.
Therefore, the Panel finds that the disputed domain name was registered and is being used in bad faith. 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.
Luca Barbero
Sole Panelist
Date: September 10, 2015
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