WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IM Production v. Ted Kappernaros and David Farlee
Case No. D2012-2381
1. The Parties
The Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France.
The Respondents are Ted Kappernaros ("the First Respondent") of South Daytona, Florida, United States of America and David Farlee ("the Second Respondent”) of Green Castle, Pennsylvania, United States of America.
2. The Domain Names and Registrar
The disputed domain names <isabelmarantsoldeparis.com> ("first disputed domain name") and <officialisabelmarantsneakers.com> ("second disputed domain name") 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 December 4, 2012. On December 4, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 5, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are each listed as the registrants of the respective disputed domain names 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 December 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2012. The second Respondent sent various e-mails, dated December 24, 27 and 28, 2012, which were duly acknowledged by the Center.
The Center appointed Desmond J Ryan AM as the sole panelist in this matter on January 15, 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.
The Complainant requested that, notwithstanding that the disputed domain names are each registered by different respondents, the Panel consider them in a single proceeding.
4. Factual Background
The Complainant is a French corporation, the director of which is Isabel Marant, a well-known French fashion designer. The Complainant has operated under the trademark ISABEL MARANT since 1991. Its products are distributed worldwide including through stores located in France, Hong Kong, Lebanon, Spain, China, South Korea and the United States of America. The Complainant is the owner of several registered trademarks throughout the world, including the United States of America, consisting of, or including the words “Isabel Marant”. The Complainant is also the owner of several domain names including the words Isabel Marant and operates a website at “www.isabelmarant.tm.fr” at which its products are promoted. Also at that website are materials relating the company and to Ms Marant.
The first disputed domain name was registered on October 11, 2012 by the First Respondent, and the second disputed domain name was registered on July 4, 2012 by the Second Respondent.
According to the Complainant, as at November 30, 2012 the second disputed domain name redirected to the first disputed domain name. The website prominently displayed the name "Isabel Marant" and offered for sale, at discounted prices, a range of articles of footwear under the name "Isabel Marant", However, the domain name status and redirections report accessed by the Center on December 10, 2012, shows that, at that date, the first disputed domain name was listed as "Service Unavailable" and the second disputed domain name was listed as "OK". When the Panel attempted to access the first disputed domain name it did not resolve and "timed-out". The second disputed domain name however, resolved to a webpage substantially similar to the page accessed at the first disputed domain name by the Complainant on November 30, 2012, and shown in Annex 2 to the Complaint. The website at the second disputed domain name also, at that date, contained an extensive discussion, in French, of Isabel Marant men's shoes and instructions as to how to purchase them online.
5. Parties’ Contentions
The Complainant contends that:
- It is appropriate to consider the two disputed domain names in a single proceeding because both those domain names direct to the same website (at that time to the website at the first disputed domain name).
- The name "Isabel Marant" is the name of a famous French fashion designer who is a director of the Complainant and who has been recognized internationally since 1991. The name ISABEL MARANT is registered as a trademark in respect of International Class 5 and other classes in the European Community, China, South Korea, Hong Kong, United States of America, Canada, the European Union and Australia. The Complainant's United States registration and its Community trademark registration date from December 1998.
As the disputed domain names each incorporate the Complainant's distinctive trademark in its entirety is confusingly similar to that trademark, notwithstanding the addition of the French words "solde" and "paris" and the English words "official" and "sneakers". The Complainant's cite Roche Therapeutics Inc v. Venkateshwara Distributor Private Limited/PrivacyProtect.org, WIPO Case No. D2010-1391.
- The Respondents have no rights or legitimate interest in respect of the disputed domain names. The Complainant asserts that it has never authorized the Respondents or either of them to register domain names comprising Complainant's trademark and patronymic name ISABEL MARANT. They are not associated or affiliated in any way with the Complainant and have been granted no license or other rights to use the Complainant's trademark. The Complainant asserts that the Respondents are not commonly known by the disputed domain names and they have never conducted legitimate online businesses under the disputed domain names. The use which the Respondents are making of the disputed domain names is not legitimate, non-commercial nor fair. The Complainant contends that the disputed domain names are being used to promote the sale of unauthorized copies of Isabel Marant products and the use, in the second disputed domain name of the word "official" is obviously intended to mislead internet users to believe that it lead to the Complainant's official site.
The First Respondent did not reply to the Complainant’s contentions.
The Second Respondent did not file a formal response but in a series of e-mail communications with the Center, contended that he knew nothing about the disputed domain names; that the e-mail addresses shown were not his and that someone appeared to be using his identity.
6. Discussion and Findings
Paragraph 3(c) of the Rules appears, prima facie, to provide that a complaint may relate to more than one domain name only if the domain names are registered to the same domain name holder. In Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 the learned Panel noted that:
"… the Policy would seem to require a complainant to initiate separate proceedings against each domain name registrant, absent either a showing that the relevant domain name registrants are in fact one singular domain name holder under paragraph 3(c) of the Rules or a successful request for consolidation of the multiple domain name disputes under paragraph 10(e) of the Rules."
Annex 2 to the Complaint shows that at the time of filing the Complaint, the second disputed domain name redirected to the first disputed domain name. The Complainant submits that indicates that the two were subject to a common ownership or direction and that it was therefore appropriate to deal with them both in a single complaint. The subsequent history of the website direction of the two disputed domain names, in which the redirection was changed from the second to the first to a situation in which it was the second disputed domain name which resolved to an active website, tends to confirm that submission. Further, the Second Respondent denies any knowledge of or connection with the disputed domain names.
As noted by the learned Panel in Speedo Holding, supra, after an extensive review of prior UDRP decisions:
"… the consolidation of multiple domain name disputes under paragraph 3(c) or 10(e) of the Rules may be appropriate, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve. As noted above, indicia of common control have been found based on commonalities in registrant information, such as shared administrative or technical contacts and shared postal or email addresses, as well as other circumstances in the record indicating that the respondents are related or that a sufficient unity of interests otherwise exists that they may be essentially treated as a single domain name holder for purposes of paragraph 3(c) of the Rules."
"… the consolidation of multiple registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraph 3(c) or 10(e) of the Rules provided 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 Panel's opinion, the circumstances of the redirections of the disputed domain names, the change in direction, the denials of the Second Respondent and the failure of the First Respondent to contest either the Complainant's submissions or the Second Respondent's denials provide a strong indication that both the disputed domain names are subject to common control. It is therefore administratively efficient and appropriate that they should be dealt with in a single Complaint. Whether or not the Second Respondent is in fact responsible for the registration of the second disputed domain name he is a proper and necessary respondent to these proceedings pursuant to the Rules as he is the "holder of the domain name against which a complaint is initiated".
The Panel therefore in the exercise of its powers under Rule 10(e) of the Rules and notwithstanding paragraph 3(c) of the Rules proceeds to deal with each of the disputed domain names in a single proceeding.
A. Identical or Confusingly Similar
Each of the disputed domain names comprises, as an essential constituent, the Complainant's trademark ISABEL MARANT. The addition of the descriptive words "solde", "paris", "official" and "sneakers" do not serve to disguise the confusing similarity between the disputed domain names and the Complainant's trademark. The addition of those words, in each case in fact tends to accentuate the likelihood that confusion between the disputed domain names and the Complainant's trademark will be increased. The Complainant has conclusively shown existing rights in the trademark ISABEL MARANT dating from a time well prior to the registration of the disputed domain names.
The Panel therefore finds that each of the disputed domain names is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel accepts the uncontroverted assertions by the Complainant that it has not licensed or otherwise authorized the use of its trademark by either of the Respondents and that the only use which has been made of the disputed domain names is to direct to a site advertising unauthorized copies of the Complainant's products. Such use cannot be use in the bona fide offering of the Respondents' goods. There is no other evident basis upon which the Respondents could claim rights or legitimate interest under paragraph 4(c) of the Policy or otherwise. The First Respondent has not filed a response in rebuttal of the Complainant's contentions and submissions; the Second Respondent denies all knowledge of the matter.
The Panel therefore finds that neither of the Respondents have any right or legitimate interest in either of the disputed domain names.
C. Registered and Used in Bad Faith
Each of the disputed domain names incorporate, as its essential distinguishing feature, a trademark which is the famous personal name of the founder and director of the Complainant. Neither of the Respondents were authorized to do that. That, per se, indicates that the registrations were fraudulent and there is a strong presumption that the registrations were made with the intention that they be used to benefit from the attractive power of the Complainant's well established and widely known name and trademark. Each of the disputed domain names was subsequently used for that purpose; to deceive internet users into believing that the sites to which they resolved were the Complainant's site and to there offer for sale counterfeit copies of the Complainant's goods. That is a circumstance specifically identified in paragraph 4(c)(iv) of the Policy as evidence of bad faith. Bad faith is therefore apparent in both the registration and use of the disputed domain names.
The Panel therefore finds that each of the disputed domain names has been registered and is 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 disputed domain names, <isabelmarantsoldeparis.com> and <officialisabelmarantsneakers.com> be transferred to the Complainant.
Desmond J Ryan AM
Date: February 4, 2013