WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IM Production v. Jack Jonhon
Case No. D2013-0921
1. The Parties
The Complainant is IM Production of Paris, France represented by Cabinet Vittoz, France.
The Respondent is Jack Jonhon of Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <isabelmaran.com> (the “Domain Name”) is registered with GoDaddy.com, LLC. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2013. On May 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 27, 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.
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 May 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2013.
The Center appointed Steven A. Maier as the sole panelist in this matter on June 24, 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 joint stock company with its headquarters in Paris, France.
The status of the Respondent is unclear, but he appears to be a private individual resident in Fujian, China.
The Domain Name was registered on April 9, 2013.
At the date of the Center’s formal compliance check, May 30, 2013, the Domain Name resolved to an ISP information page stating that no website had been configured for the Domain Name.
5. Parties’ Contentions
The Complainant states that it is a French fashion house that sells shoes, ready to wear items, jewellery and couture collections under the trademark ISABEL MARANT, which it has used since 1991. Isabel Marant is the name of the designer who founded, and is President of, the Complainant.
The Complainant submits evidence that its products are sold under the mark ISABEL MARANT throughout the world, both online and in physical stores in Europe, North America, Australia and China.
The Complainant exhibits evidence of numerous trademark registrations for the mark ISABEL MARANT in various jurisdictions. The registrations include:
- Community Trade Mark number 1035534 filed on December 23, 1998 for ISABEL MARANT in International Classes 3, 14 and 25.
- United States trademark number 2367858 filed on December 18, 1998 for ISABEL MARANT in International Classes 14 and 25.
- International trademark number 717113 filed on June 17, 2009 for ISABEL MARANT in International Classes 3, 14 and 25 and having effect in over 50 countries including China.
The Complainant also submits that it is the owner of numerous domain names including the term “isabelmarant”, and in particular <isabelmarant.com>.
The Complainant submits that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4 a (i) of the Policy). The Complainant contends in particular that the Domain Name is identical to its mark ISABEL MARANT but for the omission of the final letter “t”, which cannot serve to distinguish the Domain Name from the Complainant’s mark.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4 a (ii) of the Policy). The Complainant is not affiliated with the Respondent and has never authorised the Respondent to register the Domain Name or otherwise to use its mark ISABEL MARANT. The Respondent is not commonly known by the Domain Name, has never conducted a legitimate business using the Domain Name and the Respondent is not making legitimate noncommercial or fair use of the Domain Name.
The Complainant submits that the Respondent has used the Domain Name to misleadingly attract customers to his website for the purpose of selling counterfeit merchandise to them. The Complainant exhibits screen prints of pages from a website at “www.isabelmaran.com” dated May 23, 2013 which offered “Isabel Marant” branded sneakers, boots and sandals for sale online.
The Complainant submits that the Domain Name has been registered and is being used in bad faith (paragraph 4 a (iii) of the Policy).
The Complainant refers to the website referred to above and states that it has identified the goods offered on that website as counterfeit. The Complainant states that these goods correspond with its 2011, 2012 and 2013 collections but are offered at much lower prices than those which are sold by the Complainant and its distributors. For that reason the Complainant concludes that the goods are counterfeit.
The Complainant submits that it is also clear from the above that the Respondent must have deliberately registered the Domain Name with the intention of misleadingly attracting consumers to the Respondent’s website for financial gain.
The Complainant seeks a transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4.a of the Policy are present. Those elements are:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
Even in a case such as this where the Respondent has failed to file a Response, the Complainant must still establish all three of the above matters.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it is the owner of registrations in numerous jurisdictions of the trademark ISABEL MARANT. Ignoring the gTLD “.com” and the space between the words as is practice following UDRP precedent, the Domain Name is identical to the Complainant’s mark but for the final letter “t”. The Panel agrees that this does not serve in any way to distinguish the Domain Name from the Complainant’s trademark and finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant’s submissions referred to above give rise to a prima facie case for the Respondent to answer that he has no rights or legitimate interests in respect of the Domain Name. On the contrary, neither the nature of the Domain Name nor the use to which the Complainant alleges the Domain Name has been put is suggestive of any such rights or legitimate interests.
The Respondent has chosen not to reply to the Complaint and there is no other evidence of rights or legitimate interests available to the Panel in this case. On the contrary, it appears to the Panel that the only plausible explanation for the Respondent’s choice of the Domain Name was to impersonate the Complainant, which is not a basis for any rights or legitimate interest.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Panel repeats its conclusion that the only plausible explanation for the Respondent’s choice of the Domain Name was to impersonate the Complainant; i.e. to divert to his website Internet users who inadvertently omit the final “t” in typing the Complainant’s name. The Panel finds, accordingly, that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his website or of the products on his website. This is unfairly to take advantage of the Complainant’s goodwill in its trademark and is an indication of bad faith under paragraph 4 b (iv) of the Policy.
As to the Complainant’s allegation that the Respondent has used the website to sell counterfeit goods, the Panel would have preferred the Complainant to have provided evidence of this in addition to inferences drawn from the Respondent’s low pricing. However, in view of the misleading nature of the Domain Name and the Respondent’s lack of any reply to the Complaint, the Panel accepts on balance the Complainant’s submissions in this regard. The use of the Domain Name to sell counterfeit goods under the Complainant’s trademark plainly constitutes use of the Domain Name in bad faith.
It makes no difference to the Panel’s conclusions that use of the Domain Name referred to above appears to have ceased after the commencement of this proceeding and that the Domain name subsequently resolved to an ISP holding page.
Accordingly, the Panel finds that the Domain Name 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 Domain Name <isabelmaran.com> be transferred to the Complainant.
Steven A. Maier
Date: July 8, 2013