WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

IM Production v. Xu Jing / Lary Brown

Case No. D2015-0753

1. The Parties

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

The Respondent is Xu Jing / Lary Brown of Changsha City, Hunan, China.

2. The Domain Name and Registrar

The disputed domain name <isabelmarantshoponline.net> is registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2015. On April 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 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 April 30, 2015, the Center transmitted an email to the parties in English and Chinese regarding the language of the proceeding. On May 4, 2015, the Complainant submitted its request that English be the language of the proceeding by email to the Center. The Respondent did not comment 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 the Respondent of the Complaint in Chinese and English, and the proceeding commenced on May 7, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2015.

The Center appointed Sok Ling MOI as the sole panelist in this matter on June 4, 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 ready-to-wear footwear, jewellery and couture collections. Isabel Marant is the name of the designer and president of the Complainant.

The Complainant owns several trade mark registrations for the ISABEL MARANT trade mark. In China, its ISABEL MARANT trade mark is protected by virtue of International Trade Mark Registrations No. 717113 (registered on June 17, 1999) and No. 921017 (registered on December 4, 2006).

The Complainant has also registered the domain names <isabelmarant.com>, <isabel-marant.com>, <isabelmarant.tm.fr>, <isabelmarant.fr>, <isabel-marant.fr> and <isabelmarant.cn>.

The disputed domain name <isabelmarantshoponline.net> was registered on March 9, 2015 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

The ISABEL MARANT label was created and founded by the designer and president of the Complainant in 1991 and has been used for clothing and fashion accessories ever since. Products bearing the ISABEL MARANT trade mark are distributed all over the world including in China (via stores located in Beijing and Shanghai) and the United States of America (“USA)” (via stores located in New York and Los Angeles).

The Complainant has registered its ISABEL MARANT trade mark in China, the USA, the European Union and Australia, covering goods in Classes 3, 9, 14, 18, 21, 24 and 25. It also owns several domain names that incorporate the ISABEL MARANT trade mark.

A1. The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights:

The disputed domain name is a combination of the Complainant’s ISABEL MARANT trade mark and the generic English words “shop” and “online”.

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.

A2. The Respondent has no rights or legitimate interests in respect of the disputed domain name:

The Respondent is not commonly known by the name “Isabel Marant Shop Online”. To the Complainant’s knowledge, the Respondent has never conducted legitimate offline business under the name “isabelmarantshoponline.net”.

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 was never authorized by the Complainant to register any domain names comprising the Complainant’s ISABEL MARANT trade mark, nor has the Respondent been granted any licence or other rights to use the Complainant’s trade mark for any purpose. The Complainant is in no way associated or affiliated with the Respondent.

The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The only use of the disputed domain name is to misleadingly attract customers to its website for its own commercial gain. The Respondent is using the said website to sell counterfeit ISABEL MARANT products. The Respondent’s intent to mislead is evidenced by the words “OFFICIAL ONLINE STORE OF ISABEL MARANT” stated in its website.

A3. The disputed domain name was registered and is being used in bad faith:

The products offered on the Respondent’s website have been identified by the Complainant as counterfeit. These products are offered at very low prices compared to the original retail prices of corresponding goods sold by the Complainant and/or its distributors, and this demonstrates that the products offered by the Respondent are not genuine.

The Respondent is using the disputed domain name to encourage consumers to believe the said website is owned by the Complainant and this is evidenced by the words “OFFICIAL ONLINE STORE OF ISABEL MARANT” stated in its website.

It is clear that the Respondent has deliberately registered and used the disputed domain name to attract Internet users to its website for commercial gain, by creating confusion with the Complainant’s trade mark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, 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 requires the Panel 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 respective case.

The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The 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 consists of Latin characters rather than Chinese characters.

(b) The Respondent’s website “www.isabelmarantshoponline.net” resolves to a web page in English and with English contents, which shows that the Respondent has an understanding of the English language.

(c) The Respondent’s website “www.isabelmarantshoponline.net” is addressed to English speaking clients because it allows payment in USD.

The Panel has taken into consideration the fact that the Complainant is a company from France, and requesting the Complaint to be re-filed in Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and would cause delay to the proceeding.

On the record, the Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that (a) the disputed domain name <isabelmarantshoponline.net> is registered in Latin characters, rather than Chinese script; (b) the content of the Respondent’s website is entirely in English; (c) the Center has notified the Respondent of the proceeding in both Chinese and English; (d) 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 has chosen not to do so; and (e) the Center informed the Respondent that it would accept a Response in either English or Chinese.

Considering the above 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 (i) it shall accept the Complaint as filed in English; (ii) 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 directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:

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

(ii) the 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 the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the ISABEL MARANT trade mark by virtue of use and registration.

The disputed domain name is confusingly similar to the ISABEL MARANT trade mark because it incorporates the Complainant’s distinctive ISABEL MARANT trade mark in its entirety. The mark ISABEL MARANT is clearly identifiable and is the prominent element of the disputed domain name. The addition of the generic Top-Level Domain “.net” and generic words “shop” and “online” does not detract from the confusing similarity. The Panel has no difficulty in finding that the disputed domain name is confusingly similar to the ISABEL MARANT trade mark in which the Complainant has rights.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii), the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii), the burden shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c):

(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 trade mark 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 trade mark or service mark at issue.

(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd, WIPO Case No. D2013-0974)

The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. Indeed, by claiming to be the “OFFICIAL ONLINE STORE OF ISABEL MARANT” despite the lack of affiliation or association with the Complainant, it is clear that the Respondent has intent to mislead internet users into believing that its website “www.isabelmarantshoponline.net” is somehow connected with the Complainant.

The Respondent has failed to respond.

Accordingly, the Complainant has satisfied the requirements of the second element under 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 the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the 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, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 the Respondent’s websites or location or of a product.

The Panel finds that the Respondent has registered the disputed domain name in bad faith. The Respondent was clearly aware of the Complainant and of its ISABEL MARANT trade mark and products when it registered the disputed domain name. According to the Complainant, the products offered on the Respondent’s website correspond to those sold by the Complainant and/or its distributors, though offered at much lower prices.

The Panel agrees with the Complainant’s assertion that the Respondent is using the disputed domain name to take advantage of the similarity with the Complainant’s ISABEL MARANT trade mark, to unfairly attract customers to its website. Further, by claiming to be the “OFFICIAL ONLINE STORE OF ISABEL MARANT” despite the lack of affiliation or association with the Complainant, it is clear that the Respondent has intent to mislead consumers and Internet users into believing that its website “www.isabelmarantshoponline.net” is owned by or somehow connected with the Complainant. In the Panel’s opinion, there is therefore a high possibility that consumers and Internet users would be confused as to the sponsorship, affiliation and endorsement of the Respondent’s website, and to the source of the products offered on the Respondent’s website. Without having to make a finding on the Respondent’s products being counterfeit, the Panel is satisfied that the Respondent is using the disputed domain name for mala fide purpose and illegitimate financial gain.

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

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy.

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 <isabelmarantshoponline.net> be transferred to the Complainant.

Sok Ling Moi
Sole Panelist
Date: June 16, 2015