WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IM Production v. Wen Ben Zhou
Case No. D2014-0520
1. The Parties
Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France.
Respondent is Wen Ben Zhou of Xiamen, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <isabelmarantofficiel.net> 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 April 1, 2014. On April 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 2, 2014.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on May 9, 2014. 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
Complainant IM Production is a French fashion company, whose president, Ms. Isabel Marant, has been designing clothing under the name and mark ISABEL MARANT since 1991. Complainant markets its clothing globally, including in China, where Respondent lists his address of record. Complainant owns registration for its ISABEL MARANT mark, including International Registration No. 717113 (registered 1999), International Registration No. 921017 (registered 2006), and Hong Kong Registration No. 300804960 (registered 2007). Complainant also owns some registrations for variations of the mark, such as ISABEL MARANT ETOILE, including Hong Kong Registration No. 301955089 (registered 2011).
Complainant also holds the registrations for several domain names, including <isabelmarant.com>, <isabel-marant.com>, and <isabelmarant.tm.fr>. Complainant uses these domain names to advertise its fashion product.
Respondent registered the disputed domain name <isabelmarantofficiel.net> on February 4, 2014, and used the website associated with the disputed domain name to advertise what appear to be counterfeit goods under Complainant's marks, advertising rates that "save 86%." Respondent has not been authorized to use Complainant's marks.
5. Parties' Contentions
Complainant contends that (i) the disputed domain name is identical or confusingly similar to Complainant's trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether the disputed domain name is "identical or confusingly similar to a trademark or service mark in which the Complainant has rights" in accordance with paragraph (4)(a)(i) of the Policy. The Panel finds that it is. The disputed domain name incorporates in full Complainant's registered mark ISABEL MARANT and adds only the term "officiel" which is translated from French to English as "official." See <translate.google.com>. The Panel finds that consumers would expect to find on such a website products that are "official," "authentic" or from the manufacturer itself, and that are associated with, and endorsed by Complainant. That Complainant owns marks containing variants of its mark with additional wording further adds to this conclusion.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less "identical or confusingly similar" for purposes of satisfying this first prong of paragraph (4)(a)(i) of the Policy. See, for example, Microsoft Corporation v. Step-Web, WIPO Case No. D2000-1500; Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620; General Electric Company v. Recruiters, WIPO Case No. D2007-0584.
This Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain names at issue in a UDRP dispute. For example, paragraph (4)(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name "in connection with a bona fide offering of goods or services"; (ii) demonstration that Respondent has been "commonly known by the domain name"; or (iii) "legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
Respondent did not formally reply to the Complaint, however, and no evidence has been presented to this Panel that might support a claim of Respondent's rights or legitimate interests in the disputed domain name. Rather, as mentioned in Section 4 of this Panel's decision, Respondent appears to be advertising counterfeit goods under Complainant's mark.
There is no indication or allegation that Respondent is an authorized reseller of Complainant's goods. To the extent that may be at issue here, the Panel turns to previous UDRP decisions for guidance. In considering whether an authorized or unauthorized reseller of goods has "rights or legitimate interests" in a domain name which contains such a mark, the majority view of UDRP panels is expressed in paragraph 2.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions ("WIPO Overview 2.0"). As explained by this paragraph of WIPO Overview 2.0, an authorized or unauthorized reseller may be considered to have rights or legitimate interests in a mark, provided certain requirements are met. These generally include that: (i) the site is used only to sell the trademarked goods; (ii) the site accurately and prominently discloses the registrant's relationship to mark holder; and (iii) respondent does not try to "corner the market" in domain names that reflect the mark. Id. See also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095; BlackRock Institutional Trust Co., N.A. v. Investors FastTrack, WIPO Case No. D2010-1038.
Respondent here does not satisfy these requirements. Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent's lack of "rights or legitimate interests" in the disputed domain name in accordance with paragraph (4)(a)(ii) of the Policy which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that domain names were registered and used in bad faith. For example, paragraph (4)(b)(iv) of the Policy states that bad faith can be shown where "by using the domain name [Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with [Complainant's] mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [the] web site or location." As noted in Section 4 of this decision, Respondent appears to be selling counterfeit goods under Complainant's mark advertising rates that "save 86%," presumably for Respondent's own commercial gain. The Panel further notes that even if the goods were genuine, Respondent does not meet the requirements as set out above under Section 6.B.
Therefore, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph (4)(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <isabelmarantofficiel.net> be transferred to Complainant.
Dated: May 16, 2014