WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NEUF v. Zhaoyifang
Case No. D2011-1004
1. The Parties
The Complainant is NEUF of Paris, France, represented by Field Fisher Waterhouse, France.
The Respondent is Zhaoyifang of Qihe, Shandong, China.
2. The Domain Name and Registrar
The disputed domain name <maisonmartinmargielashop.com> (“the Domain Name”) is registered with Xiamen eName Network Technology Corporation Limited dba eName Corp (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2011. On June 15, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 17, 2011, 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 June 17, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, 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, and the proceedings commenced on June 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2011.
The Center appointed Karen Fong as the sole panelist in this matter on July 21, 2011. 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.
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the Respondent and the Registrar in relation to the Domain Name (“the Registration Agreement”), the language of the proceedings 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 proceedings.
The Panel accepts the Complainant’s submissions in paragraph 10 of the Complaint regarding the language of the proceeding and is satisfied that the Respondent appears to be familiar with the English language, as the Domain Name is made up of a name and the English word “shop” and the website to which the Domain Name resolves is an English based website. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English, and the Respondent did not comment on the language of the proceeding by the specified due date. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
4. Factual Background
The Complainant is a French fashion company with limited liability that owns and uses the MAISON MARTIN MARGIELA and MARTIN MARGIELA trade marks for their luxury ready to wear and couture collections. The Complainant presented its first ready to wear collection in 1989. The MAISON MARTIN MARGIELA and MARTIN MARGIELA trade marks have been used worldwide including China.
The Complainant has trade registrations for the MAISON MARTIN MARGIELA trade mark globally, with the earliest trade mark (French trade mark registration No. 3755774) filed on July 27, 2010. Other trade mark registrations include CTM registration No.935304, International trade mark registration No.1067947 designating China, and Hong Kong, China trade mark registration No.301807777. The Complainant also owns several Community, French and International MARTIN MARGIELA registered trade marks, the earliest (French trade mark No.3253274) dating back to 2003.
NEUF owns several “maisonmartinmargiela” domain names, the earliest submitted by the Complainant in the Complaint registered in 2000 (<maisonmartinmargiela.com>) and others including <maisonmartinmargiela.eu>, <maisonmartinmargiela.fr> and <maisonmartinmargiela.net>.
The Domain Name was registered on March 15, 2011. At the time of the filing of the Complaint, the Domain Name was connected to a website “www.martinmargielashop.com” selling Maison Martin Margiela’s products that the Complainant has identified as counterfeit.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy have been met.
Identical or Confusingly Similar
The Complainant contends that the Domain Name is identical or confusingly similar to trade marks in which the Complainant has rights. The Complainant states that it owns numerous trade mark registrations for MAISON MARTIN MARGIELA around the world, and that these trademarks predate the registration of the Domain Name.
The Complainant asserts that the Domain Name contains the Complainant’s MAISON MARTIN MARGIELA trade marks in their entirety, and that the addition of the descriptive word “shop” does nothing to prevent the Domain Name from being confusingly similar to the mark MAISON MARTIN MARGIELA.
Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The circumstances used as evidence for this are that the Respondent has neither a commercial relationship nor any association with the Complainant, and has no permission from the Complainant to use the MAISON MARTIN MARGIELA mark.
Registered and Used in Bad Faith
The Complainant asserts the following to support its contention that the Domain Name has been registered and used in bad faith:
Firstly, the Domain Name was registered after the MAISON MARTIN MARGIELA and the MARTIN MARGIELA trade mark registrations. The Respondent’s awareness of the existence of the prior trade marks when he/she registered the Domain Name is proved by infringing Maison Martin Margiela products offered on the website connected to the Domain Name.
Secondly, the Respondent offers counterfeit Maison Martin Margiela goods, of poor quality and less expensive than authentic goods, on the website connected to the Domain Name. This is evidenced by infringing sunglasses model “Acetate Wrong Lens Sunglasses” sold for 80 USD as opposed to the 400 USD price tag for the genuine product, and false information about the product on the website.
Thirdly, the Respondent uses the Domain Name to encourage consumers to believe him/her to be connected to or owned by the Complainant as only goods infringing the Complainant’s trade marks are sold.
The above show that the Respondent deliberately registered and used the Domain Name to attract Internet users to the registrant’s website for financial gain, by creating a likelihood of confusion with the Complainant’s mark when it is not an authorised retailer and has no relationship with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Rules, paragraph 15(a), state that the Panel should decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules or principles of law that it deems applicable.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name 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 Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Panel accepts that the Complainant has registered rights to the trade mark MAISON MARTIN MARGIELA and that the mark is well-known.
The Domain Name integrates the Complainant’s registered trade mark MAISON MARTIN MARGIELA with the descriptive term “shop” and the generic “.com” domain suffix. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic domain suffix. The addition of the descriptive term “shop” does not negate the confusing similarity encouraged by the Respondent’s complete integration of the MAISON MARTIN MARGIELA trade mark in the Domain Name. E.g. N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org, WIPO Case No. D2011-0260; Oakley, Inc. v. wu bingjie aka bingjie wu/ Whois Privacy Protection Service, WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207.
The Panel finds that the Domain Name is confusingly similar to the MAISON MARTIN MARGIELA trademark of the Complainant, and that the requirements of paragraph 4(a)(i) of the Policy are therefore fulfilled.
C. Rights or Legitimate Interests
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent.
In the absence of a response from the Respondent, the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name. The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. The Panel accepts that the Complainant’s claims against the Respondent prove the Respondent does not demonstrate any of these circumstances.
Filing no Response, the Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the Domain Name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
D. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent was aware of the Complainant’s marks when it registered the Domain Name. The Complainant has provided sufficient evidence, in Annexes 4 and 5 to the Complaint, that the Domain Name registration post dates the MAISON MARTIN MARGIELA trade marks registration. The very incorporation of the Complainant’s trade mark in the Domain Name and the display of the Complainant’s products on the website connected to the Domain Name confirms the Respondent’s awareness of the trademarks. Thus, the Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. The products offered for sale on the website to which the Domain Name routed are indeed likely to be counterfeit Maison Martin Margiela products, for reasons set out in section 5.A. The Panel concludes that the Respondent deliberately intended to attract for commercial gain by misleading Internet users into believing that the Respondent’s website is and the products sold on it are authorised or endorsed by the Complainant. See e.g. Burberry Limited v. Jonathan Schefren, WIPO Case No. D2008-1546.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <maisonmartinmargielashop.com> be transferred to the Complainant.
Dated: August 3, 2011