WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IM Production v. Liu An Qiang, Liu An, Liu An Fu, Liu An Xing, Liu An Jin
Case No. D2011-2318
1. The Parties
The Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France.
The Respondents are Liu An Qiang, Liu An, Liu An Fu, Liu An Xing, Liu An Jin (the “Respondent”) of China.
2. The Domain Names and Registrar
The disputed domain names <isabelmarantdresses.com>, <isabelmarantonline.com>, <isabelmarantoutlet.com>, <isabelmarantsale.com>, <isabelmarants.com>, <isabelmarantstore.com> (the “Domain Names”) are registered with Hangzhou E-Business Services Co., Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2011. On January 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 5, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrants and providing the contact details. On January 5, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings 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 January 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2012.
The Center appointed Karen Fong as the sole panelist in this matter on February 7, 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
The Complainant is a French fashion company which owns and uses the ISABEL MARANT trade mark for ready to wear, jewellery and couture collections. Ms. Isabel Marant, the President and Designer of the Complainant started the business under the ISABEL MARANT brand in 1991. The ISABEL MARANT trade mark has become a well-known fashion brand in many countries worldwide including China. The Complainant has two stores in China (Beijing and Shanghai) selling ISABEL MARANT products. The Complainant has submitted many copies of Chinese publications featuring ISABEL MARANT products evidencing its reputation and use in China.
The Complainant has registered trade marks for ISABEL MARANT in many countries including China, Republic of Korea, Hong Kong, China, United States of America, Canada, European Union and Australia. It also owns a number of domain names including <isabelmarant.com>, <isabel-marant.com>, <isabelmarant.fr>, <isabel-marant.fr> and <isabelmarant.cn>.
The Domain Names were registered between October 8, 2011 and November 28, 2011. All the Domain Names were connected to active websites (“the Websites”) at the time of the filing of the Complaint. The Websites offered exclusively ISABEL MARANT clothing, shoes, bags, jewelry and accessories. A number of the Websites had photographs of models on the catwalk wearing ISABEL MARANT. The content and layout of all the Websites were very similar. The Websites do not appear to be active now.
5. Parties’ Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to the ISABEL MARANT trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names which belong to five registrants, all of which it believes are connected to each other and are owned and controlled by the same person/organization.
The basis of its belief that there is a common link between the registrants and that all the Domain Names have been registered by the same entity/registrant are as follows:
1. The Complainant’s agents in China spoke to a representative of the Registrar and was informed that all six Domain Names in addition to the domain name <isabelmarantshop.com> (which has been the subject of a successful UDRP complaint under IM Production v. Wang Shan Shan, WIPO Case No. D2011-1751) were registered by the same person as they all had the same contact information registered with the Registrar. The representative of the Registrar refused to provide written confirmation of this;
2. All the Websites have the same United States server DNS named “he.net”; and
3. All the Websites have a similar look, feel and structure (the categories on the Websites feature shoes, clothing, accessories, bags and jewellery) and a few have the same photographs of models dressed in ISABEL MARANT.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Preliminary Procedural Issues
(i) Consolidation of Proceedings
Paragraph 5(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder. The panel in Speedo Holdings BV v Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 reviewed the relevant UDRP decisions in relation to consolidation in multiple respondents’ cases and extracted the following general principles:
1. Consolidation of multiples registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the domain names or the websites to which they resolve are subject to common control, and the panel having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient, fair and equitable to all parties.
2. The administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondents have the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.
In the present case, each of the Domain Names incorporates the Complainant’s trade mark ISABEL MARANT in its entirety together with the descriptive terms, “outlet”, “dresses”, “online”, “store”, “sale” and the inclusion at the end of one of the Domain Names the letter “s”. The Panel accepts the Complainant’s reasons set out in Section 5.A above as being indicative that the Domain Names are subject to common control by the same person or company. In addition, the Panel notes that all the Domain Names are registered with the same Registrar and some of the Websites bear the trade mark ISABEL MARANT written in the same font on the top left corner of the webpage. They all have at the top of the webpage one or two of the following expressions “Isabel Marant Outlet Online”, “Cheap Isabel Marant”, “Discount Isabel Marant”, “Isabel Marant Online Store”, “Isabel Marant Online Shop”, “Isabel Marant Authenticated Online Shop” or “Isabel Marant Sale Online”.
The Respondent had the opportunity but did not respond substantively to the Complaint.
Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to the common ownership or control of the same person or company. The Panel finds such common control justify consolidation of the Complainant’s claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules.
(ii) Language of the Proceeding
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 disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the Registration Agreement is Chinese.
The Complainant submits in paragraph 10 of the Complaint that the language of the proceeding should be English. The Complainant contends amongst other things that the Domain Names consist of words in the English language and also all the Websites are in English. This indicates that the Respondent who is in control of the Domain Names is able to communicate in English. Conducting the proceedings in Chinese would disadvantage the Complainant as it would have to incur substantial added expense and inconvenience in having this Complaint translated into Chinese.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding and is satisfied that the Respondent is familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Further, the Respondent did not respond to the Complaint or the language of the proceeding by the specified due dates. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trade mark ISABEL MARANT.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Complainant’s registered trade mark ISABEL MARANT is the dominant portion of the Domain Names. The addition of the descriptive terms, “outlet”, “dresses”, “online”, “store”, “sale” and the inclusion at the end of one of the Domain Names the letter “s” does nothing to minimise the risk of confusion. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix “.com”.
In addition, the Complainant has also submitted evidence of actual confusion of an Internet user in Denmark as to whether one of Websites was affiliated with the Complainant. An inquiry by the user who wanted to purchase an ISABEL MARANT belt was directed to the Complainant asking if she should provide her credit card details to the Website connected to the Domain Name <isabelmarantdresses.com> as she was not sure if it was connected to the Complainant (as shown in the Annex 15 to the Complaint).
The Panel finds that the Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
The Complainant contends that it has not authorized or licensed the Respondent to use the ISABEL MARANT trade mark in the Domain Names or in any other manner. The Respondent is not commonly known by the Domain Names and to the best of the Complainant’s knowledge, the Respondent has never conducted a legitimate offline business under these names.
The Complainant has alleged that the Respondent is selling counterfeit Isabel Marant products as the prices for which they are offered for sale on the Websites are heavily discounted compared to the same goods sold by the Complainant and its distributors. There can be no legitimate interest in the sale of counterfeits (see Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552 and Farouk Systems, Inc v. QYM, WIPO Case No. D2009-1572). The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent.
In any event, whether the Respondent is selling genuine goods or counterfeits is irrelevant as the Respondent has failed to establish the criteria set out in Oki Data Americas, Inc v. ASD, Inc, WIPO Case No. D2001-0903, referred to in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). In particular, the Websites do not accurately or prominently disclose the relationship between the registrants and the trade mark owner.
Further, as the Respondent failed to respond to the Complainant’s contentions, it therefore has failed to displace the assertion on the part of the Respondent that the Respondent has no rights or legitimate interests in the Domain Names. Paragraph 14 of the Rules provides that the panel may draw such inferences from such a default as it considers appropriate. 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 Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
E. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent must have been aware of the Complainant’s ISABEL MARANT mark when it registered the Domain Names. The fact that the Domain Names incorporate the Complainant’s trade mark in its entirety is in the Panel’s view evidence that the registration of the Domain Names was in bad faith.
The Panel also concludes that the actual use of the Domain Names is in bad faith. The Websites offer ISABEL MARANT products for sale which are likely to be counterfeit. The Websites reproduce the Complainant’s ISABEL MARANT trade mark as well as pictures of the Complainant’s products creating the impression that the Websites are owned or endorsed by the Complainant. The use of the Domain Names to sell products which are suspected to be counterfeit amounts to use in bad faith.
As stated in Section 6.C above, evidence of an incident of actual confusion was submitted by the Complainant indicating that the Respondent succeeded in its intention to confuse and mislead Internet users. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s Websites are and the products sold on they are those of or authorised or endorsed by the Complainant. The above is clearly 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 Names, <isabelmarantdresses.com>, <isabelmarantonline.com>, <isabelmarantoutlet.com>, <isabelmarantsale.com>, <isabelmarants.com> and <isabelmarantstore.com> be transferred to the Complainant.
Dated: February 17, 2012