WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IM Production v. Linyuanzhi
Case No. D2013-0656
1. The Parties
The Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France.
The Respondent is Linyuanzhi of Putian, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <isabelmarantofficialsneakers.com> (the “Disputed Domain Name”) is registered with Xin Net Technology Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2013. On April 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 11, 2013, 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. On April 17, 2013, 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 April 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2013.
The Center appointed Kar Liang Soh as the sole panelist in this matter on May 29, 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. Factual Background
The Complainant is a French fashion company. Its designer and president is Ms. Isabel Marant, whose name is used as a trademark of the Complainant for shoes, jewellery and garments. The Complainant started using ISABEL MARANT as its trademark in 1991. Its products are distributed in many countries including China.
The Complainant owns various trademark registrations for ISABEL MARANT, including the following
June 17, 2009
December 12, 2006
Hong Kong, China
June 25, 1998
May 3, 2000
The Complainant is also the registrant of the domain names <isabelmarant.com>, <isabel-marant.com>, <isabelmarant.tm.fr>, <isabelmarant.fr>, <isabel-marant.fr> and <isabelmarant.cn>.
The Disputed Domain Name was registered on March 28, 2013. The WhoIs record of the Disputed Domain Name identifies the city and province of the Respondent in China but states the street address with simply the letters “hh”. The identical address is provided for the administrative contact, technical contact and billing contact. The email address of all these contacts is stated with only the domain name but not the address portion, i.e., “@qq.com”. Following registrar verification, the full email address was clarified but the street address remains as “hh”.
The Disputed Domain Name resolved to a purely English language website which displayed the trademark ISABEL MARANT prominently and in relation to apparel product showcased therein. The homepage title states “Isabel Marant Sneakers Sale Shop, Official Isabel Marnant Shoes Online”. The homepage also contains a write-up about Ms. Isabel Marant. Online shopping cart purchasing facilities also appear to be incorporated.
No further information associated with the Respondent beyond the WhoIs information of the Disputed Domain Name and the website resolved therefrom is available.
5. Parties’ Contentions
The Complainant contends that:
1) The Disputed Domain Name incorporates the Complainant’s trademark ISABEL MARANT in its entirety and is confusingly similar to the Complainant’s trademark. The Disputed Domain Name combines the trademark ISABEL MARANT with the words “official” and “sneakers” which are internationally understood;
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant never authorized the Respondent to register the Disputed Domain Name or granted a license or right to the Respondent to use the Complainant’s trademark. The Respondent is not commonly known by the Disputed Domain Name. The Respondent is not associated or affiliated with the Respondent. The only use of the Disputed Domain Name by the Respondent is misleading; and
3) The Disputed Domain Name is registered and is being used in bad faith. The goods offered on the website resolved from the Disputed Domain Name are counterfeit. These goods are offered at a very low price. Some of these goods correspond to the Complainant’s collections which are sold at much higher retail prices. The Respondent uses the Disputed Domain Name to encourage consumers to believe the Respondent is connected to a website owned by the Complainant. The Respondent deliberately registered and used the Disputed Domain Name to attract Internet users to the Respondent’s website for financial gain by creating confusion with the Complainant’s trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of Proceeding
Since the registration agreement is in Chinese, the default language of the proceeding should be Chinese as per paragraph 11(a) of the Rules. The Complainant has requested that English be used instead as the language of the proceeding. Having considered the circumstances, the Panel determines that English be adopted as requested. The following factors were particularly pertinent to the Panel in coming to this decision:
1) The Complainant does not understand Chinese;
2) The website resolved from the Disputed Domain Name was purely in English. The Respondent is either conversant in English or is able to handle the English language; and
3) The Respondent did not file a Response while the Complaint has already been filed in English and did not comment on the language of the proceedings. It would unnecessarily delay the proceedings should the Complainant be required now to submit the Complaint in Chinese. It would in all likelihood cause the Complainant to incur more cost in doing so.
The Complainant is required to establish all 3 limbs of paragraph 4(a) of the Policy to succeed in these proceedings. The Panel will proceed to consider each of these 3 limbs in turn.
A. Identical or Confusingly Similar
The Complainant is required to show that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant’s trademark registrations for ISABEL MARANT confirm that the Complainant has rights in the same. The Disputed Domain Name clearly incorporates the trademark ISABEL MARANT entirely. The only difference between the Disputed Domain Name and the trademark ISABEL MARANT is the obvious addition of the suffix words “official sneakers”. These words are readily descriptive of goods sold via the website resolved from the Disputed Domain Name and which are also goods associated with the Complainant’s trademark.
The Panel is of the view that these descriptive words do not distinguish the Disputed Domain Name from the trademark ISABEL MARANT. In accordance with the consensus view of previous UDRP panels, the Panel accordingly holds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark ISABEL MARANT. The first limb of paragraph 4(a) is therefore established on the facts.
B. Rights or Legitimate Interests
The second limb of paragraph 4(a) requires the Complainant to show that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. It has been held by numerous UDRP panels that the Complainant only has to establish a prima facie case as such which the Respondent must rebut. In the present case, the Complainant has confirmed that the Respondent is not related to the Complainant and has not been authorized to use the trademark ISABEL MARANT or the Disputed Domain Name. There is nothing to suggest that the Respondent is known by the Disputed Domain Name or that the Respondent is making a fair non-commercial use of the Disputed Domain Name. On the contrary, the facts indicate that the Respondent is using the Disputed Domain Name to operate a website with commercial purposes.
The Panel is satisfied from the evidence submitted by the Complainant that a prima facie case has been established that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. In the absence of a Response, this prima facie case is not rebutted and the second limb is made out.
C. Registered and Used in Bad Faith
The third limb of paragraph 4(a) requires the Complainant to show that the Respondent registered and is using the Disputed Domain Name in bad faith. The Complainant has allayed a very strong accusation that the Respondent is selling counterfeit goods using the website resolved at the Disputed Domain Name. Although there is no evidence before the Panel in support of this contention beyond a bare accusation, it is a very serious accusation. A reasonable and honest person who is the target of such an accusation should ordinarily deny with certain forcefulness. The lack of any reaction from the Respondent here is disconcerting.
Paragraph 4(b)(iv) of the Policy outlines a classic example of bad faith registration and use as follows as an admonishment to a registrant:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location”
The website resolved from the Disputed Domain Name is clearly intended for commercial gain. The Respondent must clearly have known of the Complainant’s trademark ISABEL MARANT which pre-dates the registration of the Disputed Domain Name by many years. The homepage title claims to be the “Official Isabel Marnant” website. The insertion of the letter “n” between the “r” and second “a” in “Marant” appears to be a typographical error as the spelling “Isabel Marant” used all throughout the homepage. The obvious intention must have been to refer to the website as the “Official Isabel Marant” website. The copious use of the trademark ISABEL MARANT in association with goods which correspond to specific collections of the Complainant’s goods on the Respondent’s website points directly to the natural conclusion that the Respondent is attempting to create a likelihood of confusion with the trademark ISABEL MARANT as to the source, sponsorship, affiliation or endorsement of that website and the goods thereon.
In view of the above, the Panel determines that the Disputed Domain Name was registered and being used in bad faith in the manner of paragraph 4(b)(iv).
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, <isabelmarantofficialsneakers.com>, be transferred to the Complainant.
Kar Liang Soh
Date: June 17, 2013