WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IM Production v. Sonia Lyon
Case No. D2013-1018
1. The Parties
The Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France.
The Respondent is Sonia Lyon of Illinois, United States of America.
2. The Domain Name and Registrar
The disputed domain name <isabelmarantboutiquefrance.com> 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 June 7, 2013. On June 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 7, 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 June 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2013.
The Center appointed Marilena Comanescu as the sole panelist in this matter on July 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.
The language of the proceeding is English.
4. Factual Background
The Complainant is a French fashion house that sells footwear, ready to wear items, jewelry 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 currently the President of, the Complainant.
The ISABEL MARANT products are distributed worldwide, both online and in physical stores in the United States of America, China, Australia, Europe and Canada.
The Complainant holds numerous worldwide trademark registrations for ISABEL MARANT, such as the following:
- the United States trademark ISABEL MARANT no. 2367858 filed on December 18, 1998 registered for goods in classes 14, 25;
- the International word mark ISABEL MARANT no. 717 113 filed on July 17, 2009 registered for goods in classes 3, 14, 25; and
- the Community word Trademark ISABEL MARANT no. 1035534 filed on December 23, 1998 for goods in classes 3, 14, 25.
The Complainant operates numerous websites including “www.isabelmarant.com’’ and “www.isabel-marant.com’’.
The disputed domain name was created on January 7, 2013.
At the time the Complaint was filed, the disputed domain name was used in connection to a website which was offering for sale counterfeits of the Complainant’s goods branded ISABEL MARANT.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The disputed domain name <isabelmarantboutiquefrance.com> is confusingly similar to its trademark ISABEL MARANT:
The disputed domain name combines the Complainant’s trademark and patronymic name Isabel Marant in its entirety with the non-distinctive French terms “boutique” and “france” which are internationally understood and commonly used in the fashion business.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name:
The Complainant is not affiliated with the Respondent and has never authorized the Respondent to register the disputed domain name or otherwise to use its mark ISABEL MARANT. The Respondent is not commonly known by the disputed domain name, has never conducted a legitimate business using the disputed domain name and the Respondent is not making legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the Respondent has used the disputed domain name to misleadingly attract customers to its website for the purpose of selling counterfeit merchandise to them. The Complainant exhibits screen prints of pages from a website at “www.isabelmarantboutiquefrance.com” dated June 7, 2013 which offered “Isabel Marant” branded sneakers, boots and sandals for sale online.
(iii) The disputed domain name <isabelmarantboutiquefrance.com> was registered and is being used in bad faith:
The Complainant states that the disputed domain name was used for selling counterfeits as the goods offered on this website 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 counterfeits.
Furthermore, the Respondent has redirected the website “www.isabelmarantsneakersboutique.fr” on the website corresponding to the disputed domain name in order to deepen the confusion for the consumers with relation to the authenticity of the goods marketed via the disputed domain name.
The Complainant submits that it is also clear from the above that the Respondent must have deliberately registered the disputed domain name with the intention of misleadingly attracting consumers to the Respondent’s website for financial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer or cancellation of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent does not have rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used by the Respondent in bad faith.
The Respondent’s failure to respond does not automatically result in a decision in the favor of the Complainant, the latter must establish each of the three elements provided by paragraph 4(a) of the Policy, above listed.
Consequently, the Panel shall further analyze the eventual concurrence of these circumstances in the present case.
A. Identical or Confusingly Similar
There are two requirements that a complainant must establish under this element, namely: that it has rights in a trademark, and, if so, that the disputed domain name is identical or confusingly similar to its mark.
The Complainant has rights in the ISABEL MARANT trademark, holding registrations worldwide, including in the United States of America since 1998 where the Respondent appears to be located.
The dominant part of the disputed domain name <isabelmarantboutiquefrance.com> incorporates the Complainant’s trademark ISABEL MARANT and corresponding patronymic name in its entirety.
In addition to this, the disputed domain name contains the generic terms “boutique” and “france”, whereas the Complainant is involved in the fashion industry where such terms are commonly used and the Complainant’s headquarters are located in France. These two terms are therefore descriptive of the Complainant’s business.
Numerous UDRP panels have considered that the addition of generic or descriptive words to trademarks in a domain name is not sufficient to escape the finding of confusing similarity and does not change the overall impression of the domain name as being connected to a complainant’s trademark. In fact, adding descriptive terms for the business of the Complainant, as in this case, may even increase the likelihood of confusion (see Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511; Nike, Inc. v. Farrukh Zia, WIPO Case No. D2000-0167; Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602; Sanofi-Aventis, Aventis Inc. v. Searchology, Domain Registrant, WIPO Case No. D2007-0889; Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; Revlon Consumer Products Corporation v. Vladimir Sangco, WIPO Case No. D2010-1774; Revlon Consumer Products Corporation v. IONE Inc., WIPO Case No. D2010-1000).
Further, it is well established in decisions under the UDRP that the presence or absence of characters (e.g., hyphens, dots) in a domain name and indicators for generic top level domains (e.g., “.com”, “.info”, “.net”, “.org”) are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name.
For all the above, the Panel finds that the disputed domain name <isabelmarantboutiquefrance.com> is confusingly similar to the Complainant’s trademark ISABEL MARANT.
Accordingly, the Panel finds that the first element of the Policy is established, and the Complainant has proven that the disputed domain name is confusingly similar to its trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant has provided a prima facie case under this element of the Policy showing that it has had no relationship with the Respondent and has not granted the Respondent any right to register and use its trademark ISABEL MARANT. Therefore, in line with prior UDRP decisions, the burden of production on this element shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name.
Although properly notified by the Center, the Respondent failed to submit any response in the present procedure. Considering other relevant circumstances of a matter, the silence of the Respondent may support a finding that it has no rights or legitimate interests in respect of the disputed domain name. See also Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; The Great Eastern Life Assurance Company Limited v. Unasi Inc., WIPO Case No. D2005-1218; Ronson Plc v. Unimetal Sanayi ve Tic.A.S, WIPO Case No. D2000-0011.
Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain name, or has been known by this disputed domain name, or is making any legitimate noncommercial or fair use of the disputed domain name.
In fact, the disputed domain name resolves to a website selling alleged counterfeits of the Complainant’s footwear, as, according to the Complainant, the products promoted on the website corresponding to the disputed domain name are copies of the Complainant’s goods from its recent collections sold at much lower prices than those offered by the Complainant or its authorized distributors.
Regarding the offer to sale of prima facie counterfeit goods, this Panel obviously agrees with the Complainant and previous UDRP panels that it cannot be a legitimate interest in a domain name used for the sale of counterfeits.
For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires proof of bad faith in both the registration and use of the disputed domain name.
When assessing the bad faith in the registration requirement, the following should be considered (1) whether the Respondent knew of the Complainant and its trademark, and (2) whether the Respondent targeted the Complainant to benefit from confusion generated by the similarity between the disputed domain name and the trademark (see Avon Products, Inc. v. Mary Ultes, WIPO Case No. D2009-0471).
The Complainant’s trademark has been used since 1991 and is registered worldwide, including in the USA since 1998, where the Respondent is apparently located.
The ISABEL MARANT trademark represents the name of the designer and the President of the Complainant, therefore it is distinctive for the claimed goods.
The disputed domain name <isabelmarantboutiquefrance.com> was registered in January 2013 and incorporates, along with Complainant’s distinctive trademark, two generic words related to the Complainant’s business, namely “boutique” and “france”.
From the above, the Panel concludes that the Respondent had knowledge of the Complainant’s trademark and business and incorporated the ISABEL MARANT trademark and descriptive terms in the disputed domain name in order to create confusion and attract Internet users on its web portal.
At the time the Complaint was filed, the Respondent was using the Complainant’s trademark for a website selling products marketed as being genuine ISABEL MARANT goods. Due to the much lower prices, the Complainant concludes that the goods are counterfeits.
The Respondent is using without permission the Complainant’s distinctive trademark in order to get traffic on its web portal and to obtain commercial gain from the false impression created for the Internet users with regard to a potential affiliation or connection with the Complainant. This impression is increased by the use of the Complainant’s trademark along with descriptive words for Complainant business in the disputed domain name and the content on the website corresponding to the disputed domain name.
Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the Respondent’s] website 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 [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location” is evidence of registration and use in bad faith.
Given that the disputed domain name incorporates the Complainant’s trademark and the website operated under the disputed domain name displays the Complainant’s trademarks and goods from its collections indeed in this Panel’s view, the Respondent intended to attract Internet users accessing the website corresponding to the disputed domain name <isabelmarantboutiquefrance.com> who may be confused and believe that it is a website held, controlled by, or somehow affiliated or related to the Complainant, for its commercial gain.
In the same time, the Complainant found another domain name <isabelmarantsneakersboutique.fr> held by the Respondent and diverted on the website corresponding to the disputed domain name, which reinforces this approach.
Further, the Respondent chose not to participate in these proceedings and has not contested any of the allegations made by the Complainant, and did not provide any evidence whatsoever of any legitimate noncommercial, or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s trademark. Such passive attitude of the Respondent can be considered further evidence of bad faith. See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Kabushiki Kaisha Toshiba v. Shan Computers, WIPO Case No. D2000-0325; Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
For all these reasons, the Panel finds that the third element of the Policy is established on the record in these proceedings, and accordingly that the disputed domain name was registered and is being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <isabelmarantboutiquefrance.com> be transferred to the Complainant.
Date: July 24, 2013