WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IM Production v. Jorg Richter
Case No. D2013-1319
1. The Parties
The Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France.
The Respondent is Jorg Richter of Hamburg, Germany.
2. The Domain Name and Registrar
The disputed domain name <isabelmarantoutlet2013.org> (the “Disputed 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 July 19, 2013. On July 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 23, 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 July 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2013.
The Center appointed Pierre Olivier Kobel as the sole panelist in this matter on August 28, 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 Disputed Domain Name was registered on June 18, 2013.
The Complainant is a French fashion company organized as a French Joint Stock Company. Ms. Isabel Marant is the Designer and President of the Complainant, IM Production. Her name is used as a trademark by the Complainant. IM Production owns and uses the ISABEL MARANT trademark for shoes, ready to wear, jewelry, and couture collections. It started using the ISABEL MARANT trademark in 1991 and distributes its products in many countries.
The Complainant is the owner of the following trademarks filed and/or registered in the name of the Complainant in several jurisdictions, such as the United States of America, China, the Republic of Korea, Hong Kong, ChinaCanada, European Union and Australia:
- ISABEL MARANT – International Trademark registration n° 717113 registered on June 17, 1999 in classes 3, 14, 25
- ISABEL MARANT – International Trademark registration n° 921017 registered on December 4, 2006 in classes 9, 18, 24
- ISABEL MARANT ETOILE – International Trademark registration n° 1 095 322 registered on June 27, 2011, notably in classes 14, 18 and 25 and designates United States among other countries
- ISABEL MARANT – Hong Kong Trademark registration n° 200002034AA in classes 3, 14 and 25 filed on June 25, 1998 and renewed on May 10, 2007
- ISABEL MARANT – Hong Kong Trademark registration n° 300804960 and registered on January 26, 2007 in class 18
- ISABEL MARANT ETOILE – Hong Kong Trademark registration n° 301955089 registered on June 23, 2011 in classes 14, 18 and 25
- ISABEL MARANT – the Republic of Korea Trademark registration n° 563542 filed on July 12, 2001 in classes 14 and 25
- ISABEL MARANT –the Republic of Korea Trademark registration n° 552904 filed on December 18, 2002 in class 18
- ISABEL MARANT – Canadian Trademark registration n° 624 908 filed on June 17, 1999 in classes 3, 14 and 25
- ISABEL MARANT – CTM Trademark registration n° 001035534 filed on December 23, 1998 in classes 3, 14 and 25 and duly renewed
- ISABEL MARANT – CTM Trademark registration n° 003 010 048 filed on January 8, 2003 in classes 9, 18, 21 and 24 and duly renewed
- ISABEL MARANT ETOILE – CTM Trademark registration n° 009 970 682 filed on May 16, 2011 in classes 3, 9, 14, 18 and 25
- ISABEL MARANT – US Trademark registration n°2367858 filed on December 18, 1998 and duly renewed in classes 3, 14 and 25
- ISABEL MARANT – US Trademark registration n° 3222267 filed on April 6, 2006 in classes 3 and 18.
However, the Complainant does not own a trademark composed of the exact terms ISABEL MARANT OUTLET 2013.
The Complainant is also the registrant of a collection of domain names, notably <isabelmarant.com>, <isabel-marant.com>, <isabelmarant.tm.fr>, <isabelmarant.fr>, <isabel-marant.fr>.
5. Parties’ Contentions
First, the Complainant argues that the Disputed Domain Name <isabelmarantoutlet2013.org> combines the ISABEL MARANT trademark with purely descriptive terms, i.e. the internationally understood English word “outlet” and the number “2013”. According to the Complainant if a domain name incorporates a distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of other words.
Secondly, the Complainant submits that the Respondent does not have rights or legitimate interests regarding the Disputed Domain Name. According to the Complainant, the Respondent:
- was never authorized by IM Production to file the Disputed Domain Name nor is associated or affiliated to the Complainant in any way;
- is not commonly known by the Disputed Domain Name;
- has never conducted any legitimate offline business under the name “isabelmarantoutlet2013.org”;
- registered the Disputed Domain Name well after the Complainant had established its trademark’s rights;
- has not been granted a license nor any other rights to use the Complainant’s trademark as part of any domain name nor for any other purpose;
- is not making a legitimate noncommercial or fair use of the Disputed Domain Name. According to the Complainant, the only use of the Disputed Domain Name is to misleadingly use it to attract customers to its website for its own commercial gain. The Complainant alleges that the Respondent’s intent to mislead is demonstrated by the use of the Disputed Domain Name as a website for selling copies of ISABEL MARANT products.
Finally, the Complainant contends that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant, the Respondent:
- is not selling genuine ISABEL MARANT products but counterfeit products; and
- is leading Internet users to believe that they are using a website connected or affiliated to the Complainant’s trademark and activities, i.e. the sale of authentic ISABEL MARANT products pertaining to the 2013 collection.
In conclusion the Complainant is asking for the transfer of the Disputed Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, where the Complainant provides evidence that:
i. the disputed domain name is identical or confusingly similar to its trademark or service mark, and
ii. the Respondent has no rights or legitimate interests in respect of the domain name, and
iii. the domain has been registered and is being used in bad faith,
The Complainant may obtain the cancellation or the transfer of the disputed domain name under paragraph 4(i) of the Policy.
Where the Respondent does not submit a response, and unless there are exceptional circumstances explaining or justifying such failure to respond, the Panel shall decide the dispute based upon the complaint (paragraph 5(e) of the Rules).
This is confirmed by paragraph 14(a) of the Rules which stipulates that the Panel shall proceed to a decision on the complaint in the event that a Party does not comply with any of the time periods established by these Rules or the Panel. In addition, the Panel is entitled to draw such inferences it deems appropriate from any failure by a Party to comply with any provision or requirement under these Rules (paragraph 14(b) of the Rules). Exceptional circumstances are reserved.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant must show that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. It is well settled under the UDRP that the addition of descriptive terms (such as “outlet”) is typically insufficient to avoid a finding of confusing similarity (IM Production v. Linyuanzhi, WIPO Case No. D2013-0656; IM Production v. Dana Mixon, WIPO Case No. D2013-0587; L’Oréal v. World-shine Global Trade Co, Ltd., WIPO Case No. D2013-0423; IM Production v. Liu An Qiang, Liu An, Liu An Fu, Liu An Xing, Liu An Jin, WIPO Case No. D2011-2318; Roche Therapeutics Inc. v. Venkateshwara Distributor Private Limited/ PrivacyProtect.org, WIPO Case No. D2010-1391; Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002; Caterpillar Inc. v. Roam the Planet Ltd., WIPO Case No. D2000-0275).
The Complainant’s trademark registrations for ISABEL MARANT confirm the Complainant’s rights to its trademark. The Disputed Domain Name <isabelmarantoutlet2013.org> clearly and entirely contains the trademark ISABEL MARANT. The only difference between the Disputed Domain Name and the trademark is the addition of the internationally understood word “outlet” and the number “2013”. The use of the descriptive word “outlet” with the addition of the number “2013” does not to the Panel distinguish the Disputed Domain Name and the Complainant’s trademark but in fact, tends to accentuate the confusion. The addition of words generally used in the fashion industry to direct to points of sale or to designate annual collections, actually reinforces the association between the Disputed Domain Name and the Complainant’s trademark and activities.
Therefore, the Panel is of the view that the Disputed Domain Name is confusingly similar to the Complainant’s trademark ISABEL MARANT and the requirements of paragraph 4(a)(i) of the Policy are satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant is required to show that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Paragraph 4(c) of the Policy identifies three circumstances in which the Respondent can demonstrate its rights or legitimate interests: (i) bona fide prior use of the domain name; (ii) common association with the domain name; (iii) legitimate noncommercial or fair use of the domain name.
According to previous UDRP panels, the Complainant is only required to establish a prima facie case. Thus, the burden of production shifts to the Respondent who must demonstrate its rights or legitimate interests in the disputed domain name (L’Oréal v. World-shine Global Trade Co, Ltd., WIPO Case No. D2013-0423; Altria Group, Inc. v. Steven Company, WIPO Case No. D2010-1762). In other words, the Respondent is then required to rebut the prima facie case brought against it by the Complainant (IM Production v. Linyuanzhi, WIPO Case No. D2013-0656; Swarovski Aktiengesellschaft v. Brian Belzee, WIPO Case No. D2013-0478).
The Complainant stated that it never authorized or provided any license to the Respondent authorizing use of its trademark ISABEL MARANT or the Disputed Domain Name. The Respondent failed to reply.
Furthermore, there is nothing to suggest that the Respondent is known by the Disputed Domain Name, nor that it is using the Disputed Domain Name in a fair noncommercial way.
In the absence of response, the Panel finds that it has no reason to doubt the statement made by the Complainant in its complaint. The Panel is therefore satisfied that the Complainant has made an unrebutted prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the requirements of paragraph 4(a)(ii) of the Policy are satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to show that the Respondent registered and is using the Disputed Domain Name in bad faith. Evidence of registration or use in bad faith is outlined, in particular but without limitation, in paragraph 4(b) of the Policy. Paragraph 4(b)(iii) states as an example the registration of the domain name primarily for the purpose of disrupting the business of a competitor. According to paragraph 4(b)(iv), there is evidence of registration or use in bad faith when the respondent uses the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website or location.
First, the Respondent clearly was aware of the ISABEL MARANT trademark which pre-dates the registration of the Disputed Domain Name by many years.
The website resolved from the Disputed Domain Name, “www.isabelmarantoutlet2013.org”, offers products that the Complainant identifies to be counterfeit ISABEL MARANT products. The complainant argues that the sale of ISABEL MARANT products at a very high discount (up to 80%) implies that the products can only be counterfeit. However, the Complainant offers no proof of its accusations. Absent any actual evidence that the products are counterfeit goods, the Panel finds the Complainant’s argument in this case unconvincing. Indeed, retailers remain legally free to determine their prices. Resale price maintenance is typically prohibited by most antitrust legislation.
This being said, the Panel recognizes that the Complainant could not actually purchase products and therefore test its inferences. The Panel visited the website resolving from the Disputed Domain Name on September 12, 2013 and found, on the “News” webpage, the following indication: “This store is for demo purpose only. No order will be proceed”. Despite the Complainant’s absence of proof, the Panel therefore must give credit to its thesis: apparently offering goods at very specific and extraordinary discounts whilst no sale can be performed does point towards a case of registration and use in bad faith. So does as well the Respondent’s further lack of reaction to these accusations.
Furthermore, the Panel finds that posting such high discounts on luxury goods using a website which has all the looks of a genuine ISABEL MARANT website, but without actually selling any products, may seriously discredit the image of the Complainant. Indeed, consumers are led to believe that original ISABEL MARANT products could be sold for such prices and that as a result, the original retail prices practiced by ISABEL MARANT or its retailers, do not reflect the value of the luxury goods. The legitimate inference that consumers could make is that if it is possible to offer ISABEL MARANT products for 20% of the retail price, then the regular prices for such products are definitely exaggerated. The Panel finds that the resulting disparaging effect may be an example of registration of the Disputed Domain Name primarily for the purpose of disrupting the Complainant’s business according to paragraph 4(b)(iii) of the Policy.
Finally, according to the documentary evidence and the Panel’s visit to the website on September 12, 2013, customers are required to fill out a form containing their personal information when “checking-out” of what looks like an online outlet store. When the purpose of a website is to actually sell products, this type of form is certainly required for billing and shipping use. However, because the Respondent’s website doesn’t actually sell any goods, the Panel believes that the Respondent might be using the website to obtain personal information intended for commercial gain. Therefore, the aim of the website using the Disputed Domain Name would be to attract, for commercial gain, Internet users, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Under these circumstances there would be evidence of registration and use of the Disputed Domain Name in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
In any case, combined with the Respondent’s absence of response, the Panel finds that there is sufficient evidence of the Respondent’s bad faith. As a result, the Panel concludes that the Respondent registered and is using the Disputed Domain Name in bad faith and the requirements of paragraph 4(a)(iii) of the Policy are satisfied.
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 <isabelmarantoutlet2013.org> be transferred to the Complainant.
Pierre O. Kobel
Date: September 17, 2013