WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IM Production v. 50448207 Qiang Pa [ . . . ] @live.com, 1290044 Q P [ . . . ] @live.com
Case No. D2012-0112
1. The Parties
The Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France.
The Respondents are 50448207 Qiang Pa [ . . . ] @live.com and 1290044 Q P [ . . . ] @live.com, of Xia Men, China and Beijing, China, respectively.
2. The Domain Names and Registrar
The disputed domain names <isabelmarant2u.com>, <isabelmarant4sale.com> and <isabelmarant4u.com> are registered with Internet.bs Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2012. On January 23, 2012 and January 25, 2012, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain names. On January 26, 2012, Internet.bs Corp. transmitted by email to the Center its verification response confirming that the 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 the Respondents of the Complaint, and the proceedings commenced on January 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondents’ default on February 17, 2012.
The Center appointed Francine Tan as the sole panelist in this matter on February 21, 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 that owns and uses the trade mark ISABEL MARANT in respect of clothing, jewellery and “couture collections”, named after the designer and President of the company, Isabel Marant. The Complainant states that the trade mark ISABEL MARANT has been in use since early as 1991, and asserts that it is highly appreciated by professionals and is well known in many countries, notably in China. Goods sold under the ISABEL MARANT trade mark are distributed all over the world including China, with stores located in Beijing and Shanghai.
The Complainant submitted evidence of trade mark registrations for ISABEL MARANT in China, Republic of Korea, the United States of America, Canada, the European Union and Australia. The Complainant claims that the trade mark has been in use in all of these locations.
In terms of domain name registrations, the Complainant has registered a number of domain names including <isabelmarant.com>, <isabel-marant.com>, <isabelmarant.fr>, <isabel-marant.fr>, <isabelmarant.cn> and <isabelmarant.cn>.
The second domain name in this dispute, <isabelmarant4u.com>, is registered in the name of 50448207 Qiang Pa [ . . . ] @live.com, whereas the other two domain names in this dispute, i.e. <isabelmarant2u.com > and <isabelmarant4sale.com>, are registered in the name of 1290044 Q P [ . . . ] @live.com. The Complainant has requested consolidation. It submits this to be appropriate for the following reasons, which show that the three disputed domain names (collectively, “the disputed domain names”) are, in effect, controlled in common by one party:
(i) the disputed domain names were all registered on the same day (December 7, 2011);
(ii) the “customer service” pages on the Respondents’ websites located at “www.isabelmarant4sale.com”, “www.isabelmarant4u.com” and “www.isabelmarant2u.com” (the “said websites”) are identical in content, even to the extent of typographical errors;
(iii) the same categories of “Isabel Marant clothing”, “Isabel Marant sneakers” and “Isabel Marant boots” appear on each of the said websites.
5. Parties’ Contentions
The Complainant submits that: (i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; (ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names were registered and are being used in bad faith.
In respect of the first ground, the Complainant points out that the disputed domain names all incorporate the Complainant’s ISABEL MARANT trade mark, and submits that where a domain name incorporates a distinctive trade mark in its entirety, it is confusingly similar to that mark despite the addition of other words such as, in this case, “4sale”, “4u” and “2u”. These words are all understood to mean, respectively, “for sale”, “for you” and “to you”.
In respect of the second ground, the Complainant submits that:
(a) the Respondents were never authorized by the Complainant to register domain names comprising the ISABEL MARANT trade mark;
(b) the Respondents are not commonly known by the disputed domain names;
(c) to the best of the Complainant’s knowledge, the Respondents have not conducted legitimate offline businesses under the disputed domain names;
(d) the Respondents registered the disputed domain names well after the Complainant had established its trade mark rights in ISABEL MARANT;
(e) the Respondents have not been granted any license or permission to use the Complainant’s trade mark ISABEL MARANT as part of any domain name or for any other purpose;
(f) the Complainant is in no way associated or affiliated with the Respondents;
(g) the Respondents are not making a legitimate non commercial or fair use of the disputed domain names; and
(h) the disputed domain names are used by the Respondents to mislead and attract customers to the corresponding websites for their own commercial gain. Furthermore, they have used the disputed domain names in relation to websites for selling copies of products bearing the ISABEL MARANT trade mark.
The Complainant states that the Respondents appear to be selling counterfeit ISABEL MARANT goods as they are sold at very low discount prices, way below the retail prices of the Complainant and/or those of its authorized distributors. It submits that the Respondents’ aim in using the disputed domain names has been to lead consumers to believe that the said websites are owned by the Complainant. The Respondents are well aware of the Complainant’s prior rights in the trade mark ISABEL MARANT as the Complainant has an additional case against the first Respondent herein which has been filed under the UDRP (in relation to the domain names <isabelmarant-outlet.com> and <isabelmarant-mart.com>, IM Production v. 50448207 Qiang Pa MAXINTRADING(at)LIVE DOT COM, WIPO Case No. D2011-2098).
The above demonstrate that the Respondents have deliberately registered and used the disputed domain names in bad faith to attract Internet users to the said websites for financial gain, by creating confusion with the Complainant’s ISABEL MARANT trade mark when it is not an authorized retailer and has no relationship with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Preliminary Procedural Issues: Consolidation
This Panel notes that the Complaint has been brought in respect of the disputed domain names which are registered in the names of two different parties. This Panel is satisfied that the Complainant has demonstrated that the disputed domain names are essentially controlled or managed by a single party and that it has a common grievance against the Respondents sufficient to justify consolidation in a single proceeding. The Panel therefore finds that it would be equitable and procedurally efficient to permit the consolidation.
A. Identical or Confusingly Similar
The Complainant has registered and common law rights to the trade mark ISABEL MARANT. The disputed domain names differ from the said trade mark only by the addition of the descriptive or generic terms “4sale”, “2u” and “4u”, respectively. These additional terms are, in the Panel’s view, differences which are not of a distinctive nature and do not serve to alter the overall impression of the disputed domain names which are, for all intents and purposes under the Policy, confusingly similar to the Complainant’s ISABEL MARANT trade mark.
The Panel therefore finds that the disputed domain names are confusingly similar to the Complainant’s trade mark ISABEL MARANT.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances which, if found by the Panel to have been established, would demonstrate the Respondents’ rights to or legitimate interests in the disputed domain names:
(i) before any notice to the Respondents of the dispute, the Respondents’ use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondents (as an individual, business, or other organization) have been commonly known by the domain name, even if the Respondents have acquired no trade mark or service mark rights; or
(iii) the Respondents are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondents have not, in failing to file any response (formal or otherwise), invoked any of the circumstances which could demonstrate their rights to and/or legitimate interests in the disputed domain names.
Notwithstanding the Respondents’ default in this case, the Complainant is still required to establish each of the elements stipulated under paragraph 4(a) of the Policy; and in relation to paragraph 4(c) of the Policy, the Complainant has to satisfy a minimum requirement of showing prima facie evidence of the Respondents’ lack of rights to or legitimate interests, in the disputed domain names. (See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.)
The Panel finds that there is sufficient basis to make a finding that the Respondents have no rights or legitimate interests in respect of the disputed domain names: there is no evidence that
(a) the Complainant has at any time granted a license or permitted the Respondents to use the Complainant’s ISABEL MARANT trade mark or to apply for any domain name incorporating the Complainant’s trade mark;
(b) the Respondents are known by the disputed domain names; and
(c) the Respondents are using the disputed domain names in connection with a legitimate non-commercial or fair use of the disputed domain names. The said websites give the false appearance of being an authentic website of the Complainant’s or are otherwise connected with or endorsed by the Complainant.
In these circumstances and in the absence of evidence to the contrary, the Panel concludes that the Respondents have no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
In this Panel’s view, it is not at all plausible that the Respondents were not aware of the Complainant or of its ISABEL MARANT trade mark when the disputed domain names were registered, in view of the evidence shown of how the disputed domain names are used in relation to the said websites. The Respondents have been selling the very products (or copies thereof) that the Complainant produces and sells. Although the Complainant has not furnished conclusive evidence that the products are in fact counterfeit products, the pertinent issue that the Panel has to address in these proceedings is that of bad faith registration and use. It is obvious in this case that the Respondents were well aware of the Complainant’s ISABEL MARANT trade mark, its reputation in the fashion industry, and its product range when the disputed domain names were registered. “Isabel Marant” is not in the nature of a term found in English dictionaries nor is it a common name nor one that the Respondents (based in China) would easily come up with. The Respondents have not come forward to offer an explanation as to how they came to choose the disputed domain names. In coming to its decision, the Panel has been guided by the principle established in previous panel decisions under the Policy, namely that where a domain name is so obviously connected with a well-established trade mark, its very use by someone with no connection to the trade mark suggests opportunistic bad faith (See Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303.)
In the Panel’s view, the circumstances of this case fall within paragraph 4(b)(iv) of the Policy: “by using the [disputed domain names, the Respondents] have intentionally attempted to attract, for commercial gain, Internet users to [their] 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 [their] web site or location or of a product or service on [their] web site or location.
The Panel therefore finds that the disputed domain names were registered and 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 disputed domain names <isabelmarant2u.com>, <isabelmarant4sale.com> and <isabelmarant4u.com> be transferred to the Complainant.
Dated: March 3, 2012