WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

IM Production v. Mei Mi, Weben Ben, Wanda Guzman

Case No. D2013-0401

1. The Parties

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

The Respondents are Mei Mi of Jiangsu, Henan, China (“Mei”); Weben Ben of Xiamen, Fujian, China (“Weben”); and Wanda Guzman of Bronx, New York, United States of America (“Guzman”).

2. The Domain Names and Registrar

The Disputed Domain Names <isabelmarantofficials.com>, <isabelmarantofficialshop.com>, <isabelmarantofficialsite.com>, <isabelmarantofficialsites.com>, <isabelmarantofficialstore.com>, <isabelmarantofficialweb.com> and <isabelmarantofficialwebs.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2013. On February 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names (except <isabelmarantofficialshop.com>). On February 28, 2013, the Registrar transmitted by email to the Center its verification response confirming that each of the relevant Respondents was listed as the registrant of one of the relevant Disputed Domain Names and providing the contact details. On March 7, 2013, the Complainant requested that the domain name <isabelmarantofficialshop.com> be added to the administrative proceeding and filed an amended Complaint. On March 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <isabelmarantofficialshop.com>. On March 7, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Mei Mi is listed as the registrant of the Disputed Domain Name <isabelmarantofficialshop.com> and providing the contact details. Further details as to which Respondent is associated with each of the Disputed Domain Names is set out in section 4 below.

The Center verified that the Complaint together with the amended 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 each of the Respondents of the Complaint, and the proceedings commenced on March 11, 2013. Each Respondent was notified by e-mail at the address recorded in the Registrar’s records, although it appears to the Panel that each of these e-mails was rejected by the relevant host system as being an unknown or invalid address. The Center also notified the Complaint to an email address appearing on the web pages found at the Disputed Domain Names under a section entitled “Contact Us” where the following text appears “We prefer our valued customers any information and any question, please contact us as following ways: Email: […]@gmail.com”. Subsequent attempts by the Center to notify the Respondents by facsimile transmission were not successful. Hard copies of the Written Notice were sent to each Respondent at the addresses recorded for each of them in respect of the relevant Disputed Domain Name. These deliveries were not, so far as the Panel can determine, successful as the addresses in question either did not exist or contained errors or omissions.

On March 7, 2013 the Center had also transmitted by e-mail to the Complainant’s representatives a notification that Annex 2 to the Complaint had not been received by the Center and a request for it to be re-filed. This e-mail was also copied to the e-mail addresses for each of the Respondents including the above mentioned Gmail address. A reply was received to this e-mail from the e-mail address […]@gmail.com which stated “sorry we don’t have but u can ask the bank”.

In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2013. None of the Respondents submitted any response. Accordingly, the Center notified the Respondents’ default on April 3, 2013.

The Center appointed Nick J. Gardner as the sole panelist in this matter on April 10, 2013. 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. Preliminary Procedural Issues

Communication of the Complaint to the Respondents

Under the Rules the Panel finds the Center has fulfilled all the necessary steps to seek to communicate the Complaint to each of the Respondents including by sending the Complaint to any e-mail address shown on any web page to which the respective Disputed Domain Name (when preceded by “www.”) resolves. Whilst it appears to the Panel that delivery to each of the email addresses recorded in the Registrar’s records may have failed, and physical delivery of hard copies of the Written Notice were not successful, the electronic delivery of the Complaint to the e-mail address […]@gmail.com which is the email address shown under the “contact us” section of the web pages located at the Disputed Domain Names was not rejected, and as appears from the procedural history that e-mail address is a live e-mail address which subsequently produced a reply to the March 7, 2013 communication from the Center. In these circumstances the Panel is satisfied that actual notice of the Complaint was received by the Respondents, and the Panel can reach any inferences it considers appropriate by reason of the Respondents filing no Response.

Multiple Respondents

In this case multiple Respondents are identified. Adopting the approach of the panel in previous UDRP decisions such as Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 and the cases therein cited, the Panel in the present case concludes that the consolidation of multiple registrants as respondents in a single administrative proceeding is appropriate under paragraph 3(c) or 10(e) of the Rules if the complainant can demonstrate that the disputed 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 and fair and equitable to all parties. In the present case the Registrant/Respondents and the resolution of the Disputed Domain Names, when relevant, are as follows:

As appears five of the Disputed Domain Names were registered by the Respondent Mei, but the website addresses at two of these Disputed Domain Names are redirected to websites at the Disputed Domain Names registered by the Respondents Wenben and Guzman. The filed evidence shows that all of the websites located at the non-redirected Disputed Domain Names have a very similar “look and feel” and contain substantially similar content. In these circumstances the Panel concludes that all of the Disputed Domain Names are under common control and it is appropriate to consolidate the Complainant’s complaints against each Respondent into a single administrative proceeding.

5. Factual Background

The relevant facts are straightforward and can be summarized very briefly as follows:

The Complainant is a French fashion company. It is the corporate vehicle for products designed by Ms. Isabel Marant who is its designer and president. It produces a range of fashion and couture items designed by Ms Marant including in particular footwear. It has carried on business since 1991. It carries on business on a worldwide basis including in Europe, North America and China. It owns numerous registered trade marks in many countries throughout the world for ISABEL MARANT including, for example, International registration No. 717113 registered on June 17, 1999 through WIPO pursuant to the Madrid Convention and effective in, amongst other countries China; and United Sates trade mark registration No. 2367858 filed on December 18, 1998. .

The Complainant operates a number of websites under the name “Isabel Marant” – for example at “www.isabelmarant.com” and “www.isabelmarant.fr”.

Each of the Respondents’ websites (other than those that redirect, as indicated above) offers for sale a range of merchandise which is clearly marketed as being products of the Complainant and which is advertised as being offered for sale at a very substantial discount to the price normally payable for such products, for example at a 68% discount.

6. Parties’ Contentions

A. Complainant

The Complainant’s contentions are straightforward. It makes effectively the same contentions in relation to each of the Disputed Domain Names. These contentions can be summarized as follows:

Each Disputed Domain Name is confusingly similar to its trade mark ISABEL MARANT in which it clearly has rights.

The Complainant says that each Respondent’s selection of each of the Disputed Domain Names, each of which wholly incorporates the ISABEL MARANT trade mark cannot be a coincidence as ISABEL MARANT is not a descriptive or generic term; it is a famous and well known trade mark.

The Complainant says that none of the Respondents has any rights or legitimate interests in the term “Isabel Marant”. There is no other meaning associated with ISABEL MARANT other than in relation to the Complainant’s products and business.

The Complainant says that the inclusion of generic English words such as “official”, “web”, “site” and “store” (or plurals of these words) does not serve to distinguish any of the Disputed Domain Names from the Complainant’s well known trade mark. Further the use of the term “official” adds to the confusion and similarity as it is clearly intended to suggest that the relevant Disputed Domain Name is connected with or approved by the Complainant.

In consequence the Complainant alleges that each of the Disputed Domain Names was registered and is being used in bad faith. The content of the Respondents’ web sites suggests an affiliation or connection with the Complainant which is not the case. The Respondent is not an authorized distributor of the Complainant’s products and the Complainant says the products each of the Respondents is offering for sale are not authentic.

The Complainant relies upon previous UDRP decisions which have found that coupling a common word with the complainant’s mark or even a word similar to the complainant’s mark in a domain name, especially a well known mark like the ISABEL MARANT, does not negate a finding of confusing similarity but serves to reinforce the similarity – for example, IM Production v. Liu An Qiang, Liu An, Liu An Fu, Liu An Xing, Liu An Jin, WIPO Case No. D2011-2318 concerning <isabelmarantonline.com> and other domain names also including the term “Isabel Marant”.

The Complainant says each of the Disputed Domain Names is being used to advertise counterfeit Isabel Marant products being sold at very low prices. It says that such a use is contrary to a bona fide offering of goods or services or a legitimate interest.

B. Respondent

None of the Respondents has formally replied to the Complainant’s contentions.

7. Discussion and Findings

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of each Disputed Domain Name that:

(i) The Disputed Domain Name is identical with 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 Name;

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the trade mark ISABEL MARANT. The filed evidence establishes the Complainant’s products have been sold on a substantial sale on a world-wide basis under this trade mark and are well known. The Complainant has a wide range of registered trade marks for the “Isabel Marant”.

Each of the Disputed Domain Names is confusingly similar to the ISABEL MARANT trade mark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).

It is also established that the addition of a generic term (such as here words such as “official” or “store”) which simply suggest an online sales operation of some kind) to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).

Accordingly the Panel finds that each of the Disputed Domain Names is confusingly similar to the Complainant’s trade mark. Accordingly the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

The Panel finds “Isabel Marant” is a term with no other meaning save in relation to the Complainant’s products. The addition of non-distinctive words such as “store” or “official” does not provide any additional basis for the Respondent to claim rights in the Disputed Domain Names.

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial 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.

None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the ISABEL MARANT trade mark. The Complainant has prior rights in the ISABEL MARANT trade mark which precede each Respondent’s registration of any of the Disputed Domain Names. The Complainant has therefore established a prima facie case that none of the Respondents has any rights or legitimate interests in any of the Disputed Domain Names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of each such Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

In the present case, particularly as the Respondents incorporated the word “official” in each of the Disputed Domain Names, and each website at the Disputed Domain Names appears to hold itself out as the Complainant or at least authorized by the Complainant, the Panel concludes that the Respondents selected each of the Disputed Domain Names precisely because of its association with the Complainant and its products and in order to use the relevant Domain Name to promote sales of unauthorized replicas of the Complainant’s products. Numerous previous UDRP decisions have held that use of a domain name to facilitate the sale of replica or counterfeit products is strong evidence of bad faith – see for example Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019, Hermes International, SCA v. cui zhenhua, WIPO Case No. D2010-1743 and Balenciaga v. liu zhixian, zhixian liu, WIPO Case No. D2010-1831. At the very least such activity shifts the burden onto the Respondent to explain why such registration and use is not in bad faith. In this case none of the Respondents has filed a Response and hence has not availed themselves of the opportunity to present any case of legitimate registration and use that they might have. The Panel infers that none exists.

The Panel finds that each of the Respondents has failed to produce any evidence to establish their rights or legitimate interests in the Disputed Domain Names. The Panel is unable otherwise to find any rights or legitimate interests on behalf of the Respondents, under the circumstances. Accordingly the Panel finds that none of the Respondents has any rights or legitimate interests in each Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

In the present circumstances, the distinctive nature of the ISABEL MARANT trade mark, and the evidence as to the extent of the reputation the Complainant enjoys in the ISABEL MARANT trade mark, and the confusingly similar nature of each of the Disputed Domain Names to the ISABEL MARANT trade mark, and the lack of any explanation from any of the Respondents as to why they registered each of the Disputed Domain Names lead the Panel to conclude the registration and use was in bad faith.

In the present case, the Panel concludes that each Respondent was aware of the Complainant’s ISABEL MARANT trade mark when the Respondent in question registered the relevant Disputed Domain Name. The Panel concludes that each Respondent selected the relevant Disputed Domain Name because of its similarity with the Complainant’s ISABEL MARANT trade mark. The addition of words such as “official” or “store” suggest to the Panel that each Respondent was deliberately choosing a name with a close and confusing connection to the Complainant’s name. The Panel finds that the Respondents are engaged in a deliberate scheme to trade under and by reference to the Complainant’s ISABEL MARANT trade mark and to suggest that they are connected with the Complainant when they are not, for commercial gain. Further the Panel notes that none of the Respondents has filed a Response and hence has not availed themselves of the opportunity to present any case of legitimate use that it might have. The Panel infers that none exists.

As a result the Panel finds that each of the Disputed Domain Names has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.

8. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that each of the Disputed Domain Names <isabelmarantofficials.com>, <isabelmarantofficialshop.com>, <isabelmarantofficialsite.com>, <isabelmarantofficialsites.com>, <isabelmarantofficialstore.com>, <isabelmarantofficialweb.com> and <isabelmarantofficialwebs.com> be transferred to the Complainant.

Nick J. Gardner
Sole Panelist
Date: April 22, 2013