WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IM Production v. Whoisguard Protected / Whoisguard Inc. / Tina Fusa
Case No. D2015-1532
1. The Parties
The Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France.
The Respondent is Whoisguard Protected / Whoisguard Inc. of Panama / Tina Fusa of Bradford, Canada.
2. The Domain Name and Registrar
The disputed domain name <isabelmarant-official.com> is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 27, 2015. On August 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 1, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on the same date.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 2, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 30, 2015.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on October 19, 2015. 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 the French fashion company IM Production, with its head offices in Paris, France. The Complainant's products are distributed worldwide.
Among other registrations in different countries, the Complainant owns International Registration No. 717 113, registered on June 17, 1999, in classes 3, 14 and 25, Hong Kong, China Registration No. 20002034AA, filed on May 10, 2007, in classes 3, 14 and 25, the Community Trademark Registration No. 001 035 534, filed on December 23, 1998 and registered on May 3, 2000, in classes 3, 14 and 25, and United States of America Registration No. 2367858, filed on December 18, 1998 and registered on July 18, 2000, currently valid in classes 14 and 25, all for the mark ISABEL MARANT.
The mark ISABEL MARANT corresponds to the name of the designer and president of the Complainant and is used to identify the Complainant's fashion goods.
The Complainant is the owner of several domain names, including <isabelmarant.com>.
The disputed domain name was registered on August 10, 2015. The disputed domain name resolves to a website selling products bearing the ISABEL MARANT mark.
5. Parties' Contentions
The Complainant claims that the disputed domain name entirely incorporates its trademark ISABEL MARANT and its designer's patronymic name "Isabel Marant" and combines it with the word "official," which would be internationally understood. According to the Complainant, consumers will believe that the website "www.isabelmarant-official.com" is the Complainant's official website. The Complainant cites Roche Therapeutics Inc. v. Venkateshwara Distributor Private Limited / PrivacyProtect.org, WIPO Case No. D2010-1391, in which it was decided that the incorporation of a third party's entire mark suffices to establish confusing similarity, in spite of the addition of other words.
According to the Complainant, no authorization to use the trademark ISABEL MARANT or to register domain names encompassing it has been granted to the Respondent by the Complainant.
The Complainant alleges that the Respondent is not known by the disputed domain name and that it has no prior rights or legitimate interests in the disputed domain name. The Complainant argues that the use of the disputed domain name by the Respondent is illegitimate.
The Complainant argues that the Respondent is using the disputed domain name for its own commercial gain, to host a website that sells Isabel Marant's goods, which the Complainant identifies as counterfeit. The sale of Isabel Marant's goods on the website under the disputed domain name can be verified in Annex 7 to the Complaint.
The Complainant explains that Isabel Marant's products offered at the Respondent's website have very low discount prices, even those which correspond to products of the last collections. These goods are sold by the Complainant and its distributors at a higher retail price, which demonstrates that the goods offered at the website under the disputed domain name are not genuine.
The Complainant cites that according to other UDRP decisions (e.g. Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019), the use of a domain name associated with a website that sells goods that seem to be counterfeit is a strong evidence of bad faith.
For these reasons the Complainant contends that the Respondent is acting in bad faith by using the disputed domain name.
Finally, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
As per paragraph 4(a) of the Policy, the Complainant must prove that:
(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 has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The evidence presented demonstrates that the Complainant is the owner of the trademark ISABEL MARANT in several countries, in different classes to cover clothing, footwear, perfumery, among other products. The documents presented by the Complainant also prove that the company's manager is Ms. Isabel Marant. The Panel also ascertained that the Complainant owns a registration for the trademark ISABEL MARANT in Canada and the domain name <isabelmarant.com>. The Complainant's trademarks predate the disputed domain name.
The disputed domain name comprises the Complainant's trademark ISABEL MARANT with the addition of a hyphen and the word "official."
The main element of the disputed domain name is "isabel marant", which is identical to the Complainant's trademark ISABEL MARANT.
The word "official" and the hyphen are not enough to avoid a finding of confusing similarity. The expression "official" gives the idea of an official website of the Complainant and the hyphen does not give the disputed domain name any distinctive character.
The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
The Respondent has not submitted a response to the Complaint, in accordance with paragraph 5 of the Rules.
There is no evidence that the Respondent has any authorization to use the Complainant's trademark or to register domain names containing the trademark ISABEL MARANT.
There is no evidence that the Respondent is commonly known by the disputed domain name.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The Complainant argues that the website under the disputed domain name offers for sale products bearing the Complainant's trademark without authorization and at prices much lower than the actual retail price, which is evidence of counterfeit. The Panel finds that such use of the disputed domain name does not correspond to a bona fide offer of goods or services under the Policy.
For the above reasons, the Complainant has made an unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The trademark ISABEL MARANT is registered by the Complainant in several countries, in different classes, basically to cover goods and services related to the fashion field.
The disputed domain name comprises the trademark ISABEL MARANT with the addition of a hyphen and the word "official," which does not avoid confusion with the Complainant's trademark.
The Respondent has no rights or legitimate interests in the disputed domain name.
The website at the disputed domain name currently displays Isabel Marant goods for sale, which according to the Complainant are not genuine.
Moreover, the homepage of the website at the disputed domain name currently displays the same 3 pictures of models displayed at the homepage of the Complainant's website at "www.isabelmarant.com".
In view of the above reasons, the Panel finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for its own commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trademark and misleading the consumers to believe that the website under the disputed domain name is the official website of the Complainant, as described in the Policy paragraph 4(b)(iv).
The Panel finds that the Respondent's bad faith registration and use of the disputed domain name, with the intention of taking undue advantage of the trademark ISABEL MARANT of the Policy have been demonstrated.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., 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 <isabelmarant-official.com> be transferred to the Complainant.
Mario Soerensen Garcia
Date: October 30, 2015