WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IM Production v. Zheng He
Case No. D2015-0141
1. The Parties
The Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France.
The Respondent is Zheng He of Xiamen, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <isabelmarant-sales.com> is registered with Xin Net Technology Corp. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 28, 2015. On January 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 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.
On January 29, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On January 30, 2015, the Complainant confirmed its request 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 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 in both Chinese and English, and the proceeding commenced on February 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 26, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on March 2, 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 ISABEL MARANT trade mark in respect of fashion, fashion accessories, shoes and jewellery. Isabel Marant is the name of the designer and president of the Complainant. The mark has been used since 1991. Products bearing the ISABEL MARANT trade mark are distributed all over the world including in China, the United States of America ("U.S."), the United Kingdom of Great Britain and Northern Ireland and countries of the European Union.
The Complainant's ISABEL MARANT trade mark has been registered in China, the Republic of Korea, Hong Kong, China, the U.S., Canada, Australia and the European Union. The Complainant has also registered various domain names including <isabelmarant.com>, <isabel-marant.com>, <isabelmarant.tm.fr>, <isabelmarant.fr>, <isabel-marant.fr> and <isabelmarant.cn>.
The disputed domain name was registered on November 19, 2014 and resolves to a website which shows the ISABEL MARANT trade mark and the offer for sale of what appears to be ISABEL MARANT footwear at discounted prices.
5. Parties' Contentions
A. Complainant
(1). The disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. The disputed domain name combines the Complainant's mark ISABEL MARANT with the usual English word, "sales". The incorporation of the distinctive trade mark of the Complainant in its entirety renders the disputed domain name confusingly similar to the trade mark despite the addition of other words.
(2). The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent was never authorized by the Complainant to file domain names comprising the trade mark ISABEL MARANT. The Respondent was never granted a licence or other rights to use the Complainant's trade mark as part of any domain name or for any other purpose. The Respondent is not commonly known by the disputed domain name and there is no evidence that he has ever conducted a legitimate business offline under the disputed domain name <isabelmarant-sales.com>. The registration of the disputed domain name took place very recently, long after the Complainant had established its trade mark rights in ISABEL MARANT.
The Respondent is also using the disputed domain name to mislead and attract customers to his website for his own commercial gain. The selling of copies of ISABEL MARANT products is evidence of the Respondent's intention to mislead. The use of the term "sales" in the disputed domain name also shows an intention to mislead Internet users to think that the Respondent's website is the official website of the Complainant which proposes sales of its ISABEL MARANT collection.
(3). The disputed domain name was registered and is being used in bad faith. The goods offered on the Respondent's website are counterfeit and offered at very low prices compared to the original retail prices of corresponding goods sold by the Complainant and/or its distributors. The prices offered demonstrate that the goods sold by the Respondent are not genuine. The Respondent is also using the disputed domain name to encourage consumers to believe him to be connected to the Complainant and its website.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Language of the Proceeding
Paragraph 11(a) of the Rules stipulates 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.
Paragraph 10(b) and (c) of the Rules stipulate, respectively, that:
"(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel."
The Complainant requested that English be the language of the proceeding for the reasons that the disputed domain name consists of Latin characters rather than Chinese characters and the Respondent's website appears to resolve to a web page in English, which shows that the Respondent has an understanding of the English language.
Whilst there is a language requirement that is provided for in paragraph 11(a) of the Rules, the Panel, at the same time, has to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their case.
The Panel takes the view that English should be the language of the proceeding in this case. As pointed out by the Complainant, the disputed domain name comprises Latin characters. The content of the Respondent's website is in English, which also shows the Respondent's familiarity with and comprehension of the English language. The Respondent has been given the opportunity to present his case in this proceeding and to respond to the issue of the language of the proceeding but chose not to do so. In the circumstances, the Panel believes that the Respondent would not be prejudiced if English is adopted as the language of the proceeding.
Accordingly, the Panel determines English to be the language of this proceeding.
B. Identical or Confusingly Similar
The Complainant has shown it has trade mark rights in ISABEL MARANT. This mark has been incorporated in its totality within the disputed domain name with the addition of the hyphen and the generic term, "sales". The Panel is of the view that the disputed domain name is indeed confusingly similar to the Complainant's trade mark. The mark ISABEL MARANT is clearly identifiable and is the prominent element in the disputed domain name. It has been well established by many earlier UDRP panel decisions that the addition of non-distinctive elements (e.g. hyphens) and generic terms would not serve to remove the confusing similarity where the entire distinctive trade mark has been incorporated. Moreover, given the nature of the Complainant's business and the content of the Respondent's website, the addition of the word "sales" would certainly add to the confusion with the Complainant's mark.
The Panel therefore concludes that paragraph 4(a)(i) of the Policy has been established.
C. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant did not authorize the Respondent to use the ISABEL MARANT trade mark or to register a domain name that incorporates the trade mark. The Complainant has no relationship whatsoever with the Respondent. The Respondent's use of the disputed domain name in the manner shown by the Complainant (i.e. creating the impression that it is a website of the Complainant or one that is associated with or endorsed by the Complainant) does not constitute a bona fide offering of goods. On the face of the evidence, the Respondent's intention by use of his website is to misleadingly divert consumers for commercial gain.
Having established a prima facie case, the Complainant has satisfied its burden of satisfying the second condition of paragraph 4(a) of the Policy. The evidentiary burden consequently falls on the Respondent to prove otherwise. In failing to file a response or to submit evidence to rebut the Complainant's assertions, the Panel can only conclude that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.
The Panel therefore concludes that paragraph 4(a)(ii) of the Policy has been established.
D. Registered and Used in Bad Faith
The Panel finds in the circumstances of this case that there has been bad faith registration and use of the disputed domain name. The Respondent was clearly aware of the Complainant and of its ISABEL MARANT mark and what the Complainant's brand is known for when he registered the disputed domain name, and the intention in registration was for the specific and illegitimate purpose asserted by the Complainant. It is clear to the Panel that "by using the domain name [the Respondent had] intentionally attempted to attract, for commercial gain, Internet users to [his] 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 [his] web site or location or of a product […] on [his] web site or location" (paragraph 4(b)(iv) of the Policy). In the absence of any authorization from the Complainant, no bona fide or legitimate use of the disputed domain name can reasonably be claimed by the Respondent. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.
The Panel does not make a finding in this proceeding that the goods offered for sale on the Respondent's website are counterfeit goods as asserted by the Complainant as no specific evidence was submitted in support.
The Panel concludes that paragraph 4(a)(iii) of the Policy has been established.
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 <isabelmarant-sales.com> be transferred to the Complainant.
Francine Tan
Sole Panelist
Date: March 16, 2015
