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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

IM Production v. John Drake

Case No. D2014-1626

1. The Parties

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

The Respondent is John Drake of Indianapolis, Indiana, United States of America ("USA").

2. The Domain Name and Registrar

The disputed domain name <isabelmarantnyc.org> is registered with Network Solutions, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 19, 2014. On September 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2014, 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.

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 October 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 30, 2014.

The Center appointed Christos A. Theodoulou as the sole panelist in this matter on November 10, 2014. 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 with a presence in many countries around the world. According to the uncontested allegations of the Complainant, its products are distributed all over the world including the USA, China, France and the United Kingdom of Great Britain and Northern Ireland.

The disputed domain name <isabelmarantnyc.org> was registered on June 18, 2014. The disputed domain name is being used to sell articles of the Complainant's wares which the Complainant alleges are counterfeit.

The Complainant's mark ISABEL MARANT, which is named after Ms. Isabel Marant, the President of the Complainant, has been registered in France and in many countries around the world since 1998 (ISABEL MARANT – CTM Trademark Registration no. 001035534 filed on December 23, 1998 and duly renewed in classes 3, 14 and 25). The Complainant also owns many other trademarks registered before the registration of the disputed domain name.

Further, the Complainant is the owner of domain names including <isabelmarant.com>, <isabel-marant.com>,, <isabelmarant.tm.fr>, <isabelmarant.fr>, <isabel-marant.fr>, according to the uncontested allegations of the Complainant.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue relating to the default of the Respondent. The implications of a default in this case are telling since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy ("[i]n the administrative proceeding, the complainant must prove that each of these three elements are present"). As such, the Panel cannot merely grant the Complainant's request automatically due to the default, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic, WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd, WIPO Case No. D2009-1028.

The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Complainant has presented evidence to demonstrate that it owns registered trademark rights in ISABEL MARANT throughout the world.

The mere fact that the Respondent has added to the ISABEL MARANT mark the geographical term "nyc" and the suffix ".org" does not to this Panel affect the essence of the matter: the disputed domain name is identical or confusingly similar to the trademark of the Complainant and, in the circumstances of this case, is by itself sufficient to establish identity or confusing similarity for purposes of the Policy, as many previous UDRP panels have found. See e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Ltd., WIPO Case No. D2002-1021; DFDS A/S v. NOLDC INC, WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov, WIPO Case No. D2006-0252.

In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain name <isabelmarantnyc.org> is confusingly similar to the Complainant's trademark ISABEL MARANT.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant's right to or legitimate interest in a domain name. These circumstances are discussed in turn below, with regard to the specific facts of this case.

(i) Use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute: given the Respondent's use of the disputed domain name to sell what appear to be counterfeits of the Complainant's goods, the Respondent is not making a bona fide offering of goods but is rather using the disputed domain name to misleadingly attract customers to its website for its own commercial gain.

(ii) An indication that the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark rights: in this case, there is no such indication from the available record.

(iii) Legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue: again, in this case there is no such indication from the record.

Further the Respondent does not seem to have any trademark registrations including the term "Isabel marant". Additionally, it is to be noted that the Respondent did not present evidence of any license by the Complainant, with whom there seems to exist no relationship whatsoever.

As a conclusion on this point, the Panel finds that the Complainant has established an uncontested, prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant's argumentation on this point is mainly based on the circumstances mentioned in paragraph 4(b)(iv) of the Policy in order to demonstrate the Respondent's bad faith registration and use of the disputed domain name.

In reviewing the present case, it appears that the Respondent has registered the disputed domain name to create a likelihood of confusion with the Complainant's trademarks.

The Panel finds it highly unlikely that the Respondent would register randomly and unintentionally a domain name that is identical or confusingly similar to the Complainant's distinctive ISABEL MARANT trademark, which is the name of its President. Rather, on a reasonable examination of the evidence, it seems to this Panel more likely that such registration and use would be motivated by a hoped-for capitalization, i.e., commercial gain from the Complainant's reputation.

Further, according to the uncontested allegations of the Complainant, the disputed domain name at the time of filing the Complaint was directed to the website of the Respondent used for selling purported Isabel Marant products, which according to the Complainant's uncontested allegations are counterfeit. The Respondent offered these goods with a very low discount price, which are sold by the Complainant at a much higher price, indicating that the goods on offer at the disputed domain name cannot be genuine.

In addition, the use of the disputed domain name by the Respondent is to encourage consumers to believe that it is connected to the Complainant.

The Panel also notes the default of the Respondent, which in the present circumstances "reinforces the inference of bad faith registration and bad faith use". The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn, WIPO Case No. D2001-0915.

As a consequence of the above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

Accordingly, the Panel finds that the Complainant has successfully proven that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith.

7. Decision

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 name <isabelmarantnyc.org> be transferred to the Complainant.

Christos A. Theodoulou
Sole Panelist
Date: November 12, 2014

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