The Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France.
The Respondent is ShiHua Ren, RenShiHua of Xiamen, Fujian, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with B, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2016 in relation to the disputed domain name . On January 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2016, 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 January 15, 2016, the Complainant requested to add the disputed domain name into the proceeding. The Center sent an email communication to the Complainant on January 18, 2016 inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 18, 2016. Also on that date the Registrar confirmed that the Respondent is the registrant of and provided the contact details.
On January 13, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On January 14, 2016, the Complainant requested 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 together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on January 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2016.
The Center appointed Douglas Clark as the sole panelist in this matter on February 17, 2016. 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.
The Complainant is the owner of the trademark ISABEL MARANT registered in various countries since the early 2000s, including China. It is also the registrant of various domain names which include the words “isabel marant”. The founder of the Complainant is Ms. Isabel Marant.
The disputed domain names were registered on October 29 and November 6, 2015 respectively.
The websites to which the disputed domain names resolve appear to sell counterfeit versions of the Complainant’s products. 5. Parties’ Contentions A. Complainant
The Complainant contends as follows:
Identical or confusingly similar
The Complainant contends that the disputed domain names and are confusingly similar to the Complainant’s registered trademark ISABEL MARANT. The only difference is the addition of the generic terms “fr” meaning “France” and “soldes” meaning “sales” in the case of the first disputed domain name and the addition of the generic term “noir” meaning “black” in the case of the second.
No rights or legitimate interests
The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for ISABEL MARANT. It, therefore, has no rights or legitimate interests in the disputed domain name.
Registered and used in bad faith
Before acquiring the disputed domain name, it is highly likely the Respondent knew of the Complainant’s rights in the mark ISABEL MARANT and acquired the disputed domain name to prevent the Complainant from reflecting its mark in a corresponding domain name and/or disrupting the Complainant’s business. B. Respondent
The Respondent did not respond to the Complainant’s contentions. 6. Discussion and Findings
Language of Proceeding
The language of the Registration Agreements is Chinese. 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 Complainant requested the language of the proceeding be English on the grounds that some of the websites the disputed domain names redirect to are in English; it would cause unnecessary expense for the Complainant to translate the Complaint and the disputed domain names are in Roman characters.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
The websites under the disputed domain names are in French, indicating an intention to do business internationally. It is very likely the Respondent is familiar with English, which is the main language of international business.
Given the merits of the case being strongly in favour of the Complainant; and, that some website under the disputed domain name are in French the Panel does not consider it appropriate to require the Complainant to translate the Complaint into Chinese.
The Panel determines to follow the Center’s preliminary determination. It will render its decision in English.
Substantive Decision A. Identical or Confusingly Similar
The disputed domain names and are other than the generic Top-Level Domain (“gTLD”) “.com” confusingly similar to the Complainant’s trademark ISABEL MARANT. The only difference is the addition of the generic terms “fr” meaning “France” and “soldes” meaning “sales” in the case of the first disputed domain name and the addition of the generic term “noir” meaning “black” and the letter “s” in the case of the second.
The first part of paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 provides:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore 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.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy sets out ways in which a respondent may establish it has rights and legitimate interests. These are:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads.
None of the circumstances in paragraph 4(c) of the Policy are, therefore, present in this case.
The second part of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith:
The Panel finds that the disputed domain names and were registered in bad faith and are being used in bad faith. Given the disputed domain names redirect to pages that appear to sell counterfeits of the Complainant’s products, the Respondent clearly knew of the Complainant’s rights in the trademark ISABEL MARANT when it registered the disputed domain name.
This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“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.”
The websites under the disputed domain names were being used to attract users to the websites for commercial gain via confusion with the Complainant’s mark.
The third part of paragraph 4(a) of the Policy is, therefore, satisfied. 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 names, and be transferred to the Complainant.
Douglas Clark
Sole Panelist
Date: February 27, 2016
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