The Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France.
The Respondent is Mi Ji of Lan Me, India. 2. The Domain Name and Registrar
The disputed domain name is registered with BigRock Solutions Pvt Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 28, 2016. On July 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 24, 2016.
The Center appointed Mihaela Maravela as the sole panelist in this matter on August 29, 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 that owns and uses the ISABEL MARANT trademark for shoes, ready to wear, jewelry, and couture collections. Ms. Isabel Marant who is the designer of the Complainant initiated her business for the creation, manufacturing and sale of garments and fashion accessories under the trademark ISABEL MARANT since 1991.
The Complainant owns several registered trademarks for ISABEL MARANT, including International Trademark Registration No. 717113, registered on June 17, 1999, and European Union Trademark Registration No. 001035534, registered on May 3, 2000.
The disputed domain name was registered on July 3, 2016, and previously resolved to a website selling products under the ISABEL MARANT trademark. At the time of this decision the disputed domain name no longer resolves to an active website. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name incorporates its trademark ISABEL MARANT and the generic terms "sneakers" and "official" which are internationally understood. The Complainant argues that if a domain name incorporates a distinctive trademark it is confusingly similar to that mark despite the addition of other words.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it was never authorized by the Complainant to register such domain name and the Respondent has not been granted a license or other rights to use the Complainant's trademark. The Complainant is in no way associated or affiliated with the Respondent. To the Complainant's knowledge, the Respondent has never conducted legitimate offline business under the name "". The use of the disputed domain name is to misleadingly attract customers to the website to which it resolves for the Respondent's own commercial gain since the website is used for selling copies of ISABEL MARANT products.
The Complainant also contends that at the time of the Complaint the disputed domain name is directed to a website used for selling counterfeit ISABEL MARANT products. The Respondent offers counterfeit goods with a very low discount price. The Complainant argues that the Respondent deliberately registered and used the disputed domain name to attract Internet users to its website for financial gain, by creating a confusion with the Complainant's trademark when it is not an authorized retailer and has no relationship with the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Noting the fact that the Respondent has not filed a Response, the Panel shall consider the issues present in the case based on the statements and documents submitted to the Panel by the Complainant.
"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable", paragraph 15(a) of the Rules.
Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(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 Panel must find that the Complainant has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed. Here, the Complainant has demonstrated inter alia its ownership of International Trademark ISABEL MARANT registered under number 717113 as of June 17, 1999 and of the European Union trade mark ISABEL MARANT registered under number 001035534 as of May 3, 2000. The Complainant's trademark rights predate the registration of the disputed domain name on July 3, 2016.
As regards the question of identity or confusing similarity for the purposes of the Policy, it requires a comparison of the disputed domain name to the trademark. Here the disputed domain name includes two generic words "sneakers" and "official" in addition to the ISABEL MARANT trademark.
Many UDRP panels have established that the addition of a generic word to a trademark will not avoid a determination that the disputed domain name is confusingly similar. See Hoffmann-La Roche Inc. v. Lindy Shaw,WIPO Case No. D2008-0985. The fact that a domain name wholly incorporates a complainant's trademark may be sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The addition of a generic term does not serve to distinguish the domain name from the trademark, but may reinforce the association of the complainant's trademark with a domain name. See Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet, Ltd.,WIPO Case No. D2000-0275; Société Air France v. R Blue,WIPO Case No. D2005-0290.
In this case, apart from the generic Top-Level Domain ("gTLD"), the domain name consists of the Complainant's trademark ISABEL MARANT and the terms "sneakers" and "official". The Panel agrees with the opinion expressed by previous UDRP panels that generic terms such as "sneakers" and "official" and the gTLD ".com" have no trademark significance and, thus, their addition to the disputed domain name does not avoid a finding of confusing similarity between the disputed domain name and the trademark (see IM Production v. Whoisguard Protected / Whoisguard Inc. / Tina Fusa,WIPO Case No. D2015-1532; IM Production v. Linyuanzhi,WIPO Case No. D2013-0656, IM Production v. he le,WIPO Case No. D2013-0595).
It is well accepted by UDRP panels that a gTLD, such as ".com", is typically ignored when assessing identity or confusing similarity between a trademark and a domain name.
In the absence of any argument to the contrary from the Respondent, this Panel concludes that, on balance, the disputed domain name is confusingly similar to the Complainant's trademarks. See also Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441.
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent's rights or legitimate interests in a disputed domain name:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), which states: "[…] 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 a 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 […]".
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights. The Complainant has established that it is the owner of the ISABEL MARANT trademark and claims that the Complainant has not licenced or otherwise authorised the Respondent to use the ISABEL MARANT trademark. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name "Isabel Marant" (see for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei,WIPO Case No. D2014-0957).
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910.
Further, as discussed in section C below, the Panel also finds that the Respondent is not engaged in a bona fide offering of goods or services. There is also no evidence in the record that the Respondent's use of the disputed domain name is a legitimate noncommercial or fair use.
The Panel finds that the requirement of paragraph 4(a)(ii) is satisfied. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain name's registration and use in bad faith.
The fact that the disputed domain name is confusingly similar with the Complainant's trademark ISABEL MARANT and that the said trademark has been widely used for a long period of time indicates not only that the Respondent must have been aware of the Complainant's business and trademark at the time of registration, but also that it registered the disputed domain name to mislead Internet users into thinking it is some way connected, sponsored, endorsed by or affiliated with the Complainant's services.
The Respondent provided no explanations for which it registered the disputed domain name.
As regards the use of the disputed domain name, the Complainant adduced evidence that the website to which the disputed domain name resolved was used for online sales of presumably counterfeit products marked with the ISABEL MARANT trademark. This shows in the Panel's view that the website to which the disputed domain name resolved was used to create a likelihood of confusion as to Complainant's affiliation with the site and offers for sale of presumably counterfeit replicas of Complainant's goods. For a similar finding, see IM Production v. Yan Si,WIPO Case No. D2015-1633.
This Panel agrees that even in the event that the Complainant offers genuine ISABEL MARANT goods (e.g. as a non-authorised reseller) rather than counterfeits, misleading Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business, or that the Respondent's activities are approved or endorsed by the Complainant, indicates bad faith (see Swarovski Aktiengesellschaft v. ,WIPO Case No. D2013-1529, and also Swarovski Aktiengesellschaft v. bingbing chen,WIPO Case No. D2011-1524).
Additional factors retained by the Panel as indicative of bad faith registration and use of the disputed domain name include:
- the Respondent's failure to respond to the Complaint and provide any evidence of bona fide registration and use (see Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications,WIPO Case No. D2001-0210);
- also, as noted above, the Panel has concluded that the Respondent evidently had knowledge of the Complainant's trademarks at the time of registration of the disputed domain name. The Respondent provided no explanations for which it registered the disputed domain name.
- the Respondent seems to have provided false or incomplete contact information for the registration of the disputed domain name.
In the Panel's view these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence to the contrary. Consequently, the Panel finds that the disputed domain name was registered and is being used in bad faith. The fact that the disputed domain name no longer resolves to an active website does not alter the Panel's findings above. 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.
Mihaela Maravela
Sole Panelist
Date: September 12, 2016
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