WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IM Production v. sdfdfg dfgfdgfd
Case No. D2016-0770
1. The Parties
Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France ("Complainant").
Respondent is sdfdfg dfgfdgfd, of China ("Respondent").
2. The Domain Names and Registrar
The disputed domain names <isabel-marant.online> and <isabelmarant.online> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 19, 2016. On April 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 20, 2016, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceeding commenced on April 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 13, 2016.
The Center appointed M. Scott Donahey as the sole panelist in this matter on May 19, 2016. 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 is a French fashion company, which markets jewelry, shoes, clothing and couture under the trademark ISABEL MARANT. The goods have been marketed under this mark since 1991. Complaint, Annex 6. The products are marketed throughout the world, but mainly in the United States of America, France, the United Kingdom of Great Britain and Northern Ireland, and in Asia. Complaint, Annex 7.
Complainant is the registered owner of the trademark ISABEL MARANT in numerous jurisdictions. For example, Complainant's first registration of the mark in China was effective on December 4, 2006, and in Hong Kong, China on September 28, 1998.
Respondent registered the disputed domain names on April 1, 2016. The disputed domain name <isabelmarant.online> is being used to resolve to a web site at which counterfeit goods bearing Complainant's trademark are offered for sale. The counterfeit goods are represented to be Complainant's trademarked goods being offered at discount prices. Complaint, Annex 2. The disputed domain name <isabel-marant.online> does not resolve to an active website.
5. Parties' Contentions
Complainant contends that the disputed domain names are confusingly similar to Complainant's ISABEL MARANT trademarks, that Complainant has not authorized Respondent to use the trademark, nor is Respondent commonly known by the mark, and that Respondent has registered and is using the disputed domain names in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
One disputed domain name differs from Complainant's ISABEL MARANT trademark only by the elimination of the space and the addition of a period before the English word "online." The second disputed domain name differs from the trademark only but the substitution of a hyphen for the space and the addition of a period and the English word "online." Such slight differences and the addition of a descriptive term to a trademark to form a domain name have long been held to be confusingly similar to the trademark. Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant's trademark.
B. Rights or Legitimate Interests
The consensus view of UDRP panels concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore, a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview, 2.0"), Section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain names and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
Respondent is using the disputed domain name <isabelmarant.online> to resolve to a web site at which it offers counterfeit goods for sale, representing them as Complainant's goods being sold at discount prices. In the present circumstances, and in line with UDRP precedent, the passive holding of the disputed domain name <isabel-marant.online> does not prevent Respondent's bad faith finding. The Panel finds that such conducts constitutes bad faith registration and use.
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 names, <isabel-marant.online> and <isabelmarant.online>, be transferred to the Complainant.
M. Scott Donahey
Date: May 26, 2016