WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IM Production v. 50448207 Qiang Pa MAXINTRADING(at)LIVE DOT COM
Case No. D2011-2098
1. The Parties
Complainant is IM Production, Paris, France, represented by Cabinet Vittoz, France.
Respondent is 50448207 Qiang Pa MAXINTRADING(at)LIVE DOT COM, Xia Men, China.
2. The Domain Names and Registrar
The disputed domain names <isabelmarant-mart.com> and <isabelmarant-outlet.com> are registered with Internet.bs Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2011. On November 30, 2011, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain names. On December 1, 2011, Internet.bs Corp. transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 3, 2012.
The Center appointed Roberto Bianchi as the sole panelist in this matter on January 17, 2012. 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 is a French fashion company that owns and uses the ISABEL MARANT trademarks for ready to wear garments, jewels and couture collections. Ms. Isabel Marant, the designer and President of Complainant, initiated her own business for the creation, manufacturing and sale of garments under the ISABEL MARANT trademark in 1991.
Complainant owns the following registrations for the ISABEL MARANT trademark:
- International Trademark, Reg. No. 717113. China: International Classes 3, 14 and 25. Australia: International Class 25.
- Hong Kong: Reg. No. 20002034AA in International Classes 3, 14 and 25, filed on September 28, 1998 and renewed on March 29, 2005. Reg. No. 300804960 in International Class 18, filed on January 26, 2007.
Complainant also owns registrations for the ISABEL MARANT mark in South Korea, Canada, United States of America, as well as Community Trademark registrations.
Complainant owns the <isabelmarant.com>, <isabel-marant.com>, <isaabelmarant.fr>, <isabel-marant.fr> and <isabelmarant.cn> domain names.
The disputed domain names were registered on November 6, 2011
5. Parties’ Contentions
In its Complaint, Complainant contends the following:
The disputed domain names combine the “isabel marant” expression, strictly identical to Complainant's prior trademark ISABEL MARANT and Ms. Isabel Marant`s name, with the usual English words “outlet”, used to designate a point of sale, and “mart”, which means market. Therefore, the disputed domain names are confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in respect of the disputed domain names. Respondent was never authorized by Complainant to file in its name domain names comprising the trademark and patronymic ISABEL MARANT. Respondent is not commonly known by the disputed domain names. To Complainant’s knowledge, Respondent has never conducted any legitimate offline business under the names “isabelmarant-outlet” and/or “isabelmarant-mart”. Respondent has been granted no license or other rights to use Complainant’s trademarks 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 names. The only use of the disputed domain name <isabelmarant-outlet.com>, is to misleadingly use to attract customers to Respondent's website for its own commercial gain, selling copies of Isabel Marant products, which is evidence of Respondent's intent to mislead. Regarding the above, Respondent has obviously no tights or legitimate interests to have registered the <isabelmarant-mart.com> domain name.
The disputed domain names were registered and are being used in bad faith. At the time of filing the Complainant, the <isabelmarant-outlet.com> domain name resolved to a website selling Isabel Marant products that Complainant has identified as counterfeit, at a very low price, whereas Complainant and/or its distributors sell the legitimate products at a much higher retail price. This demonstrates that the products offered at the disputed domain name <isabelmarant-outlet.com> are not genuine. Thus, Respondent registered and used the domain name <isabelmarant-outlet.com> domain name to attract Internet users to the registrant’s website for financial gain, by creating a confusion with Complainant's mark while it is not an authorized retailer and has no relationship with Complainant. As to the <isabelmarant-mart.com> domain name, it is currently not used but Complainant would like to make a reference to the Telstra Corporation Limited v. Nuclear Marshmallows. WIPO Case No. D2000-0003, where the panel stated that a passive holding can constitute use in bad faith.
The Respondent did not reply to the Complainant’s contentions, and is in default.
6. Discussion and Findings
Under Policy, paragraph 4(a), a complainant must make out its case that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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.
A. Identical or Confusingly Similar
Complainant has shown that it owns trademark rights in the ISABEL MARANT mark registered in China and elsewhere.
The disputed domain names <isabelmarant-outlet.com> and <isabelmarant-mart.com> incorporate the ISABEL MARANT mark in its entirety, adding only the descriptive terms “outlet” and “mart” and the gTLD “.com”. It is well established that the addition in a domain name of descriptive or generic terms or of gTLDs to a mark is generally inapt to distinguish the domain name from the mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.9: “Is a domain name consisting of a trademark and a generic, descriptive or geographical term confusingly similar to a complainant's trademark? […] The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name […].”
Moreover, in the present case the addition in the disputed domain names of the terms “outlet” and “mart”, meaning points of sales usually employed to sell the kind of products protected by Complainant's mark, reinforces the association with the mark.
The Panel concludes that the disputed domain names are confusingly similar to Complainant's ISABEL MARANT mark. The first element of the Policy, paragraph 4(a) is thus met.
B. Rights or Legitimate Interests
Complainant contends that Complainant did not authorize Respondent to register any domain names comprising the trademark and patronymic ISABEL MARANT. Complainant adds that Respondent is not commonly known by the disputed domain names, and never conducted any legitimate offline business under the names “isabelmarant-outlet” and/or “isabelmarant-mart”. Also, Complainant did not grant Respondent any license or other rights to use Complainant’s trademarks as part of any domain name or for any other purpose. Complainant is in no way associated or affiliated with Respondent. Complainant says that Respondent is not making a legitimate noncommercial or fair use of the disputed domain names because the only use of the disputed domain name <isabelmarant-outlet.com>, is to misleadingly attract customers to Respondent's website for its own commercial gain, selling counterfeit Isabel Marant products. Given the above, Complainant contends that Respondent also has obviously no rights or legitimate interest to have registered the <isabelmarant-mart.com> domain name.
Considered together, these contentions of Complainant are apt to constitute a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. It is well established that once a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests in a domain name, it is then up to the respondent to come forward with arguments and evidence that it does have some rights or legitimate interests in the domain name. In the present case, Respondent failed to present any argument in its own favor. Moreover, the only use of the disputed domain name <isabelmarant-outlet.com> is a website where Respondent is offering presumably counterfeit Isabel Marant products.
The Panel believes that this conduct cannot be a legitimate use of the disputed domain names. See Cartier International, N.V., Cartier International, B.V. v. David Lee, WIPO Case No. D2009-1758 (“The Respondent is using the disputed domain name to offer for sale counterfeit imitations of the Complainant's branded products. This is not a legitimate use of the domain name.”); see also Guccio Gucci S.p.A. v. Edardy Ou, WIPO Case No. D2011-1028 (“Use of a trade mark to sell what appears to be counterfeit goods using the Complainant’s Gucci brand and other well-known brands is clearly not a bona fide use in relation to goods or fair use and is not non-commercial.”)
Since Respondent has failed to come forward with any elements in its own favor, the Panel finds that it lacks rights or legitimate interests in the disputed domain names. Accordingly, the Panel finds that the second element of the Policy is also met.
C. Registered and Used in Bad Faith
Complainant has shown that it had registered its ISABEL MARANT trademark in China, where Respondent resides, and elsewhere, before the registration of the disputed domain names. By using the website at the disputed domain name <isabelmarant-outlet.com> Respondent is selling presumably counterfeit goods under the ISABEL MARANT mark. Therefore it is clear that Respondent must have known Complainant and its products at the time of the registration of the disputed domain names. In other words, Respondent registered the disputed domain names, incorporating Complainant’s mark in its entirety, with Complainant's mark and products in mind, i.e. in bad faith. See Jean Cassegrain S.A.S. v. Abel Magee, WIPO Case No. D2011-1572.
Respondent's use of the disputed domain name <isabelmarant-outlet.com> (selling presumably counterfeit goods under Complainant’s mark) is evidence of bad faith use. See Moncler S.r.l. v. Daniel Park, WIPO Case No. D2011-0488 (“Respondent used Complainant’s known trademark to attract users to websites offering counterfeited MONCLER products and to a parking page. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondents’ website or of a product or service on Respondents’ website.”) See also Jean Cassegrain cited above. This is a circumstance of bad faith registration and use of the domain name pursuant to Policy, paragraph 4(b)(iv).
Given the bad faith use of the <isabelmarant-outlet.com> domain name, it is more likely than not that Respondent will use the disputed domain name <isabelmarant-mart.com> in exactly the same way, i.e. to offer presumably counterfeit ISABEL MARANT products for sale at a fraction of the price of the genuine products. Alternatively, the Panel agrees with Complainant that under Telstra Corporation Limited v. Nuclear Marshmallows, supra, in the circumstances of this case the present lack of use of the <isabelmarant-mart.com> domain name strongly indicates bad faith use.
The Panel concludes that the disputed domain names were registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <isabelmarant-mart.com> and <isabelmarant-outlet.com> be transferred to Complainant.
Dated: January 31, 2012