WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IM Production v. Robin Taylor
Case No. D2014-0989
1. The Parties
The Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France.
The Respondent is Robin Taylor of Frankfort, United States of America.
2. The Domain Name and Registrar
The disputed domain name <isabelmarantvon.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2014. On June 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing relevant 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 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2014.
The Center appointed Alejandro Garcia as the sole panelist (the “Panel”) in this matter on July 16, 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
A. The Complainant
The Complainant is a French fashion company that manufactures, sells and distributes products bearing the ISABEL MARANT trademark in a number of countries. The Complainant’s activities date back to 1991, when Ms. Isabel Marant, a designer and president of the Complainant, initiated her business for the creation, manufacturing and sale of garments and fashion accessories. As set out in the evidence provided to the Panel, the Complainant has a number of stores in China, France, the United Kingdom of Great Britain and Northern Ireland and the United States of America.
B. The Complainant’s Trademarks
The Complainant holds a number of registrations for the trademark ISABEL MARANT, including:
- International trademark registration No. 717 113 filed on June 17, 2009 in classes 3, 14 and 25; protected in China in classes 3, 14 and 25 and in Australia in class 25;
- International trademark registration No. 921 017 filed on December 4, 2006 in classes 9, 18 and 24. The trademark is protected in China in classes 9, 18 and 24;
- CTM trademark registration No. 001 035 534 filed on December 23, 1998 and renewed in classes 3, 14 and 25;
- CTM trademark registration No. 003 010 048 filed on January 8, 2003 in classes 9, 18, 21 and 24;
- Hong Kong trademark registration No. 20002034AA in classes 3, 14 and 25 filed on September 28, 1998 and renewed on March 29, 2005;
- Hong Kong trademark registration No. 300804960 in class 18 and filed on January 26, 2007;
- South Korea trademark registration No. 563542 filed on July 12, 2001 in classes 14 and 25;
- South Korea trademark registration No. 552904 filed on December 18, 2002 in class 18;
- Canadian trademark registration No. 624 908 filed on June 17, 1999 in classes 3, 14 and 25;
- United States trademark registration No. 2367858 filed on December 18, 1998 and renewed in classes 14 and 25; and
- United States trademark registration No. 3222267 filed on April 6, 2006 in class 18.
C. The Complainant’s Domain Names
The Complainant has registered a number of domain names containing the term “Isabel Marant”, for example, <isabelmarant.com>, <isabel-marant.com>, <isabelmarant.tm.fr>, <isabelmarant.fr> and <isabel-marant.fr>. The registration of these domain names predates the registration of the disputed domain name.
D. The Respondent
The Respondent did not participate in these proceedings. The disputed domain name was registered on January 13, 2013.
5. Parties’ contentions
A. The Complainant
Identical or Confusingly Similar
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s trademark ISABEL MARANT.
The Complainant submits that the disputed domain name <isabelmarantvon.com> combines the term “Isabel Marant”, identical to the Complainant’s ISABEL MARANT trademarks with the generic German word “von”.
The Complainant avers that if a domain name incorporates a distinctive trademark, such as the Complainant’s trademark in its entirety, it is confusingly similar to that mark despite the addition of other words. The Complaint refers to the decision in Roche Therapeutics Inc.v. Venkateshwara Distributor Private Limited/ PrivacyProtect.org, WIPO Case No. D2010-1391 in this regard.
Rights or Legitimate Interests
The Complainant indicates that the Respondent has never been authorized by the Complainant to request or use a domain name identical and confusingly similar to the trademark ISABEL MARANT. The Complainant is in no way associated or affiliated with the Respondent.
The Complainant adds that the Respondent is not commonly known by the disputed domain name. The Complainant further argues that, to its knowledge, the Respondent has never conducted a legitimate offline business under the disputed domain name <isabelmarantvon.com>. The Complainant also argues that the Respondent registered the disputed domain name long after the Complainant’s trademark was well-known.
Furthermore, the Complainant avers that the disputed domain name is used by the Respondent misleadingly to attract customers for his own commercial gain.
Registered and Used in Bad Faith
As for the requirement of bad faith registration and use, the Complainant contends that at the time of filing its Complaint, the disputed domain name resolved to a website employed for selling counterfeit products bearing the ISABEL MARANT trademark.
The Complainant adds that the Respondent sought to mislead consumers into believing that he was linked to the German section of the Complainant’s official website.
Referring to the decision in Prada v. Domains for Life, WIPO Case No. D2004-1019, the Complainant further contends that the use of a domain name to resort to a website which sells unauthorized and/or what appears to be counterfeit goods, constitutes strong evidence of bad faith.
The Complainant seeks the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Applicable Test
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and are being used in bad faith.
B. Identical or Confusingly Similar
The Complainant has established to the Panel’s satisfaction that it has rights in respect of the trademark ISABEL MARANT.
The dominant part of the disputed domain names is the term “Isabel Marant”. This term is identical to the ISABEL MARANT trademark registered by the Complainant. The addition of generic or descriptive terms to the disputed domain name (such as “von”) is insufficient to prevent the existence of confusion with the Complainant’s trademark. In this respect, paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) indicates:
“The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms […] typically being regarded as insufficient to prevent threshold Internet user confusion […]”
Accordingly, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark ISABEL MARANT within the meaning of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three non-exclusive examples under which a respondent can demonstrate that it has rights or legitimate interests in a domain name:
“(i) Before any notice […] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [The respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [The respondent is] making a 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.”
In this case, on the basis that the Complainant’s evidence annexed to the Complaint shows that the disputed domain name has resolved to a website selling what appeared to be non-authorized replicas (i.e., counterfeit goods in the Complainant’s submission), the Panel concludes that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests and that none of the circumstances set out in paragraph 4(c) of the Policy apply. Importantly, the Respondent has not rebutted the Complainant’s contentions. Accordingly, the Complainant meets the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
On the basis of the evidence before it, the Panel finds that the Respondent has engaged in bad faith registration within the meaning of paragraph 4(b)(iv) of the Policy. This finding, in turn, leads to the conclusion that the disputed domain name has been registered and is used in bad faith.
Also on the basis of the evidence before it and in particular the fact that the disputed domain name resolved to a website that appeared to sell non-authorized replica items (i.e., counterfeit goods in the Complainant’s submission), the Panel finds that the Respondent registered and is using the disputed domain name with the purpose of disrupting the business of the Complainant. Thus, in light of paragraph 4(b)(iii) of the Policy, the Panel is affirmed in its conclusion that the disputed 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 disputed domain name <isabelmarantvon.com> be transferred to the Complainant.
Date: July 30, 2014