WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

IM Production v. iabelmrant

Case No. D2014-0205

1. The Parties

Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France.

Respondent is iabelmrant of France.

2. The Domain Name and Registrar

The disputed domain name <isabelmarantofficiel.com> is registered with eName Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2014. On February 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 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.

On February 11, 2014, the Center transmitted an email to both parties in Chinese and English regarding the language of the proceeding. On February 12, 2014, Complainant submitted its request that English be the language of the proceeding by email to the Center. Respondent did not submit any comments on the language of the proceeding within the specified due date.

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 Respondent of the Complaint, and the proceedings commenced on February 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 12, 2014.

The Center appointed Yijun Tian as the sole panelist in this matter on March 19, 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

Complainant, IM Production, is a company incorporated in Paris, France. Complainant is a leading French Fashion Company for manufacturing shoes, ready to ware, jewelry, and couture collection. Its ISABEL MARANT branded products are distributed all over the world and Complainant owns its stores ISABEL MARANT in China, United Kingdom of Great Britain and Northern Ireland (“UK”), France, United States of America (“US”), Spain, Lebanon, Hong Kong China, Japan and Republic of Korea (see Annex 7 to the Complaint).

Complainant has exclusive rights in numerous ISABEL MARANT related trademarks (hereafter “ ISABEL MARANT Marks”). Complainants are the owners of well-known registered ISABEL MARANT Marks globally, such as the US (since 2000), Australia (since 1988), European Union CTM registration (since 2000), China (since 2009) and Hong Kong China (since 2007)(see Annex 8 to the Complaint).

Respondent is iabelmrant of France. The disputed domain name <isabelmarantofficiel.com> was registered by Respondent on December 27, 2013, long after the ISABEL MARANT Marks became internationally famous (see Annex 8 to the Complaint).

5. Parties’ Contentions

A. Complainant

(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

Complainant is the owner of well-known registered ISABEL MARANT Marks globally (see Annex 8 to the Complaint), such as the US (since 2000), Australia (since 1988), European Union CTM registration (since 2000), China (since 2009) and Hong Kong China (since 2007).

ISABEL MARANT mark is the name of a designer who is also the president of Complainant (see Annex 9 to the Complaint).

disputed domain name <isabelmarantofficiel.com> registered by Respondent combines ISABEL MARANT (which is strictly identical to Complainant’s MARANT prior marks and ISABEL MARANT patronymic name) with the usual French word “officiel” similar to the usual English word “official” and which is internationally understood.

If a domain name incorporates a distinctive trade mark, such as Complainant’s trade mark, in its entirety, it is confusingly similar to that mark despite the addition of other words.

(b) Respondent has no rights or legitimate interests in respect of the disputed domain name.

Respondent was never authorized by Complainant to file domain names comprising the ISABEL MARANT Marks and patronymic name ISABEL MARANT.

Respondent is not commonly known by the disputed domain name filed recently.

Respondent has never conducted legitimate offline businesses under the disputed domain name “isabelmarantofficiel.com”.

Respondent registered the disputed domain name well after Complainant had established its trademark rights above mentioned.

Respondent has been granted no license or other rights to use Complainant’s ISABEL MARANT Marks as part of any domain name or for any other purpose. Complainant is in no way associated or affiliated with Respondent.

Respondent is not making a legitimate non-commercial or fair use of the disputed domain name.

The only use the disputed domain name by Respondent is to misleadingly use it to attract consumers to the attached <isabelmarantofficiel.com> website (Annex 4 to the Complaint) for its own commercial gain.

Respondent’s current use of the disputed domain name as a website for selling copies of Isabel Marant products is evidence of Respondent’s intent to mislead consumers.

By using the word “officiel” in the disputed domain name, Respondent obviously intends to mislead the consumers to believe that the website <isabelmarantofficiel.com> is the official website of Complainant.

(c) The disputed domain name was registered and is being used in bad faith.

At the time of preparing and filing of the Complaint, the disputed domain name <isabelmarantofficiel.com> was redirected to the URL <isabelmarantofficiel.com > selling Isabel Marant’s products that Complainant has identified as counterfeits (Annex 4 to the Complaint).

Respondent offers counterfeit goods which are proposed at a very low discount price whereas some of these goods correspond to the collections 2011, 2012 and 2013 sold by Complainant and/or its distributors at a retail price which is much higher. Such offer demonstrates that the goods offered on the litigious website are not genuine products.

Respondent uses the disputed domain name to encourage consumers to believe it to be connected to the official website owned by Complainant whereas only goods infringing Complainant’s trademarks are sold.

Complainant submits that the above shows that Respondent deliberately registered and used the disputed domain name to attract Internet users to the its website for commercial gain, by creating confusion with Complainant’s marks when Respondent is not authorized retailer and has no relationship with Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) The disputed domain name <isabelmarantofficiel.com> consists of Latin letters, rather than Chinese letters;

(b) The website resolved by the disputed domain name contains some words in English language such as “RUSSIAN STORE”, “IN CONVERSATION WITH …”, and this English content demonstrates that Respondent has an understanding of English language (Annex 4 to the Compliant);

(c) In previous UDRP decisions IM Production v. Wang Shan Shan, WIPO CaseNo. 2011-1751 and IM Production v. Liu An Qiang, Liu An, Liu An Fu, Liu An Xing, Liu An Jin, WIPO Case No. 2011-2318, where Complainant was also the French Company IM PRODUCTION, the panels considered in these decisions that English should be the language of the proceedings.

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:

“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and Complainants would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. Munhyunja,WIPO Case No. D2003-0585).

The Panel has taken into consideration the fact that Complainant is a company from France, and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the disputed domain name includes Latin characters “isabel marant” and French word “officiel” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <isabelmarantofficiel.com > is registered in Latin characters rather than Chinese script; (b) the content on the website is not in Chinese but in multi-language, including English. For example, the product categories and some other webpage contents contain English words such as “RUSSIAN STORE”, “IN CONVERSATION WITH …” (Annex 4 to the Complaint); (c) the website appears to have been directed to users worldwide, particularly European rather than Chinese speakers; (d) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has not objected to Complainant’s request that English be the language of the proceeding; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) The disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) 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.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the Marks acquired through registration. The ISABEL MARANT Marks have been registered worldwide such as in China, France, the US, Canada, the European Union. Complainant has a widespread reputation as a leading French fashion company for manufacturing shoes, ready to ware, jewelry, and couture collection. Its ISABEL MARANT branded products are distributed all over the world and Complainant owns its stores in China, UK, France, US, Spain, Lebanon, Hong Kong China, Japan and Republic of Korea (see Annex 7 to the Complaint).

The disputed domain name < isabelmarantofficiel.com> comprises the ISABEL MARANT Marks in their entirety. The disputed domain name only differs from Complainant’s trademark by a suffix of “officiel” to the ISABEL MARANT Marks. This does not eliminate the confusing similarity between Complainant’s registered trademark and the disputed domain name.

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; ).

Mere additions of the descriptive term “officiel” as a suffix to Complainant’s mark fails to distinguish. By contrast, it may increase the likelihood of confusion. The usual French word “officiel” is similar to the usual English word “official”. Consumers who visit <isabelmarantofficiel.com> are likely to be confused and may falsely believe that the website at the disputed domain name is an “official” website operated by Complainant for selling ISABEL MARANT branded products online.

Thus, the Panel finds that the additional suffix is not sufficient to negate the confusing similarity between the disputed domain name and the ISABEL MARANT Marks.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has been known commonly by the disputed domain name; or

(iii) legitimate noncommercial or fair use of the disputed domain name.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant has rights in the ISABEL MARANT Marks globally, including in China (since 2009) and Hong Kong China (since 2007) (see Annex 8 to the Complaint) which long precedes Respondent’s registrations of the disputed domain name (December 27, 2013).

According to the Complaint, Complainant is a leading French fashion company for manufacturing shoes, ready to ware, jewelry, and couture collection. Its ISABEL MARANT branded products are distributed all over the world and Complainant owns its stores ISABEL MARANT in China, UK, France, US, Spain, Lebanon, Hong Kong China, Japan and Republic of Korea (see Annex 7 to the Complaint).

Moreover, Respondent is not an authorized dealer of ISABEL MARANT branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “isabelmarant” in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the ISABEL MARANT Marks or to apply for or use any domain name incorporating the ISABEL MARANT Marks;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name isabelmarantofficiel.com> on December 27, 2013, long after the ISABEL MARANT Marks became internationally known. The disputed domain name is identical or confusingly similar to Complainant’s Marks.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was actually advertising, offering and selling purported ISABEL MARANT products at “www.isabelmarantofficiel.com”.

The Panel finds that Respondent has failed to rebut the prima facie case and produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the ISABEL MARANT Marks with regard to its products. Complainant has registered its ISABEL MARANT Marks globally, such as the US (since 2000), Australia (since 1988), European Union CTM registration (since 2000), China (since 2009) and Hong Kong China (since 2007) (see Annex 8 to the Complaint).

Respondent would not have advertised products purporting to be ISABEL MARANT products on the website if it was unaware of Complainant’s reputation. In other words, it is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name. The Panel therefore finds that the ISABEL MARANT Marks are not ones that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the previous UDRP decisions in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s ISABEL MARANT branded products.

b) Use in Bad Faith

Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” offering Complainant’s ISABEL MARANT branded products and services without authorization. Complainant claimed that Respondent offers counterfeit goods which are proposed at a very lpw discount price whereas some of these goods correspond to the collections 2011, 2012 and 2013 sold by Complainant and/or its distributors at a retail price which is much higher.

To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).

Given the widespread reputation of the ISABEL MARANT Marks (as well as the contents on the website mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, which is contrary to the fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. In other words, Respondent has, through the use of a confusingly similar domain name and webpage contents, created a likelihood of confusion with the ISABEL MARANT Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the website, potential partners and end users are led to believe that the website “www.isabelmarantofficiel.com” is either Complainant’s site or a site of an official authorized partner of Complainant, which it is not. Moreover, Respondent has not responded to the Complaint. The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

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 at <isabelmarantofficiel.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: April 10, 2014