WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IM Production v. WuTao / Domain Whois Protection Service
Case No. D2015-1817
1. The Parties
The Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France.
The Respondent is WuTao of Paris, France / Domain Whois Protection Service of Nanjing, Jiangsu, China.
2. The Domain Name and Registrar
The disputed domain name <isabellemarantstore.com> (the "Domain Name") is registered with Jiangsu Bangning Science & Technology Co. Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 12, 2015. On October 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 13, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 14, 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 October 14, 2015.
On October 14, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On October 14, 2015, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due 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 November 5, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 26, 2015.
The Center appointed Linda Chang as the sole panelist in this matter on November 30, 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 a French fashion company that trades under the trademark ISABEL MARANT for garments and fashion accessories since 1991. The ISABEL MARANT trademark is derived from the name of the designer Mrs. Isabel Marant, who is also the president of the Complainant. The Complainant distributes products under the ISABEL MARANT trademark worldwide including in the United States of America, France, the United Kingdom of Great Britain and Northern Ireland and Asia.
The Complainant owns a number of trademark registrations for ISABEL MARANT in China, Hong Kong, China, United States of America, European Union and other jurisdictions, covering amongst other goods clothing items and accessories, the earliest of which dates June 17, 1999.
The Domain Name was registered on June 29, 2012 and resolves to a website which displays the ISABEL MARANT trademark and offers for sale Isabel Marant branded footwear at discounted prices.
5. Parties' Contentions
The Complainant contends as follows:
(1) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Domain Name combines "isabelle marant" which is phonetically identical to the Complainant's trademark and patronymic name, with the addition of an English word "store". The incorporation of the distinctive or consequently a phonetically identical trademark renders the Domain Name confusingly similar to the ISABEL MARANT trademark despite the addition of other words.
(2) The Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent was never authorized by the Complainant to register a domain name phonetically identical and confusingly similar to its trademark and patronymic name. The Respondent is not commonly known by the Domain Name. The Respondent has not been granted license or other rights to use the trademark as part of any domain name or for any other purpose. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name.
(3) The Domain Name was registered and is being used in bad faith. The Domain Name is directed to a website used for selling products at a very low discounted prices and the Complainant has identified as counterfeit. The Respondent used the Domain Name to encourage consumers to believe the site is connected to the official online store of the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Language of the Proceeding
The language of the Registration Agreement for the Domain Name is Chinese. The Complainant filed the Complaint in English and has requested for English to be the language of the proceeding, for the reasons stated below:
(i) The Domain Name consists of Latin letters, rather than Chinese characters.
(ii) The Domain Name includes an English word "store".
(iii) The Domain Name is directed to a website displayed in English, showing that the Respondent has an understanding of the English language.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings by taking into consideration all relevant circumstances, to ensure fairness of both parties and due expedition of the proceeding.
The Center has communicated the Complaint in both the English and Chinese and has invited the Respondent to comment on the language of the proceeding. The Respondent has been given a fair opportunity to object to English as the language of the proceeding but did not do so.
Considering that the website to which the Domain Name resolves is displayed in English, the Panel views that the Respondent is familiar with and comprehends English, and thus determines that English being the language of the proceeding would not be prejudicial to the Respondent in its ability to articulate the arguments for the case.
Taking both of the foregoing points, the Panel thus decides that the language of the proceeding shall be English and the decision will be rendered in English.
B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has registered trademark rights in the ISABEL MARANT mark.
The Domain Name contains a variation of the ISABEL MARANT trademark, which slightly differs from said trademark by adding two extra letters "le" between the words "isabel" and "marant" in the Domain Name. The Panel holds conduct of the Respondent constitutes "typo squatting", by incorporating a virtually confusingly similar and phonetically identical mark to the Complainant's trademark. See Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362; and AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000-0937.
The Panel further views that the addition of the generic word "store" does not avoid a finding of confusing similarity, but instead, increases the confusing similarity between the Domain Name and the Complainant's trademark, since the added word is descriptive for the Complainant's business.
As the addition of a suffix such as ".com" being the generic Top-Level Domain does not function as a distinguishing factor, the Panel accordingly holds the Domain Name is confusingly similar to the Complainant's trademark, and the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has rights in the ISABEL MARANT trademark. The Complainant contends that the Respondent has not been granted license or other rights to use the ISABEL MARANT trademark as part of any domain name or for any other purpose.
The Panel is satisfied that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. It is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent. See International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
The Respondent has failed to file a response to prove its rights or legitimate interests in the Domain Name under paragraph 4(c) of the Policy or otherwise. There is no indication that the Respondent is commonly known by the Domain Name. Further, based on the evidence presented on the record, the Panel holds that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name, as the Respondent appears to impersonate the Complainant while offering products asserted to be counterfeit goods of the Complainant.
For all of the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Complainant has been trading under its trademark ISABEL MARANT since 1991 and has developed goodwill in its ISABEL MARANT mark. The Complainant distributes its trademarked products worldwide including in China where the Respondent is located. The Panel finds it unlikely that the Respondent would not have had actual notice of the Complainant's trademark at the time of registering the Domain Name, especially given that the ISABEL MARANT trademark is highly distinctive. The Respondent's offer for sale of ISABEL MARANT branded products on the associated site is a further indication that it has the knowledge of the ISABEL MARANT mark. The Panel concludes that the Respondent was well aware of the ISABEL MARANT mark at the time of registration and such awareness suggests opportunistic bad faith registration. See Deutsche Bank AG v. Diego-Arturo Bruckner, WIPO Case No. D2000-0277.
The Respondent is using the Domain Name to divert Internet users to a website offering for sale of ISABEL MARANT branded products at discounted prices. The Panel finds that bad faith is established by the Respondent's use of the Domain Name to attract Internet users to a for-profit online store selling ISABEL MARANT branded products. By incorporating the ISABEL MARANT trademark in the Domain Name, the Respondent is intentionally creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website, and that the Internet users are likely to be confused into thinking that the Domain Name has a connection with the Complainant, which is contrary to the fact.
The Complainant claims that the offered ISABEL MARANT products on the site are counterfeit. The Panel also notes these goods are offered at low prices compared to the genuine goods of the Complainant. In all the circumstances, the Panel is satisfied that the Respondent is using the Domain Name to facilitate the sale of counterfeit products and such act of the Respondent is sufficient evidence of bad faith. See Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019.
Moreover, the Respondent has chosen not to respond to the contentions of the Complainant and such failure may be further indicative of bad faith. See The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, "The failure of the Respondent to respond to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787)".
In light of the above facts and reasons, the Panel therefore determines that the Domain Name was registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <isabellemarantstore.com>, be transferred to the Complainant.
Date: December 14, 2015