WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IM Production v. Name Redacted
Case No. D2016-1133
1. The Parties
The Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France.
The Respondent is Name Redacted1 .
2. The Domain Name and Registrar
The disputed domain name <isabelmarantshoes.net> is registered with 1API GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2016. On June 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 2016, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on June 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 30, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2016.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on July 5, 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
IM Production, the Complainant, is a French company specialized in fashion. It inter alia manufactures and sells high-end clothing, shoes and accessories under the brand ISABEL MARANT.
The Complainant owns numerous trademarks ISABEL MARANT, including the following ones:
- European Union trademark ISABEL MARANT No. 001035534, registered May 3, 2000, duly renewed and covering goods in classes 3, 14 and 25.
- International trademark ISABEL MARANT No. 717113, registered June 17, 2009, duly renewed and covering goods in classes 3, 14 and 25.
The Complainant is also the owner of several domain names, such as:
- <isabelmarant.fr>, registered on June 3, 2004 and duly renewed,
- <isabelmarant.com> registered on April 20, 2002 and duly renewed,
- <isabelmarant.cn>, registered on April 11, 2003 and duly renewed.
The disputed domain name, <isabelmarantshoes.net>, was registered on April 13, 2016 and resolves to a website entitled “Isabel Marant Shoes & Isabel Marant Sneakers”, advertising the sale of Isabel Marant products at discounted prices.
5. Parties’ Contentions
Firstly, the Complainant contends that the disputed domain name is confusingly similar to its trademarks since it incorporates the sign “Isabel Marant” with the generic term “shoes”, which is internationally understood.
Secondly, the Complainant considers that the Respondent lacks any rights or legitimate interests in respect to the disputed domain name, since it has used erroneous WhoIs information by identifying itself as a person working for the Complainant, but associated to a different email address.
The Complainant also states that it has never authorized the Respondent to register domain names “phonetically identical and confusingly similar to the trademark and patronymic name ISABEL MARANT”.
The Complainant claims that the disputed domain name was registered long after the Complainant’s trademarks and that the Respondent was not granted any license nor other rights to use the Complainant’s trademark.
Also, the Complainant argues that the Respondent only uses the disputed domain name to mislead Internet users in order to attract them to its website for its own commercial gain. Indeed, an Isabel Marant outlet is announced on the website to which the disputed domain name resolves.
Thirdly, the Complainant alleges that the disputed domain name was registered in bad faith, considering that it is identical to the well-known trademark ISABEL MARANT. Besides, the Complainant notes that the disputed domain name was registered in the name and postal address of someone working for the Complainant but with a different email address, which demonstrates identity theft.
Furthermore, the Complainant argues that the Respondent uses the disputed domain name in relation to an outlet for counterfeit ISABEL MARANT products, which shows opportunistic bad faith for financial gain.
Therefore, the Complainant requests the Panel to order that the disputed domain name <isabelmarantshoes.net> be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name, the Complainant shall prove the following three elements:
(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 Complainant has demonstrated that it owns valid ISABEL MARANT trademarks, registered throughout the world.
In the present case, the disputed domain name <isabelmarantshoes.net> fully incorporates the Complainant’s trademark. The Complainant inter alia notes that the expression “isabelmarant” in the disputed domain name is phonetically identical to its prior trademark. The Panel notes that it is also visually identical.
Previous UDRP panels have held that when a domain name entirely incorporates a complainant’s registered trademark, this fact might be sufficient to establish confusing similarity for purposes of the Policy (see, e.g., RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059 or Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150).
Besides, the expression “isabelmarant” is followed by the generic term “shoes”. As stated by the Complainant, this word is generic. It might be internationally understood, as claimed by the Complainant. In any case, it has to be said that the term “shoes” is an obvious reference to part of the Complainant’s field of activity, since the latter designs and commercializes shoes under the mark ISABEL MARANT.
Therefore, the addition of this generic term does not dispel the confusing similarity but rather enhances it, since this word is commonly used in relation with fashion products.
The Panel notes that the confusing similarity between the ISABEL MARANT trademark and a domain name similar to the disputed domain name - <isabel-marantsoldes.com>, was recognized by a previous UDRP panel (see IM Production v. Sun Xingwang, WIPO Case No. D2015-0086).
Finally, it is well established that the Top-Level Domain, as “.net” in the present case, may be disregarded to assert whether or not a disputed domain name is identical or confusingly similar to a complainant’s trademark. (See, e.g., Diamonique Corporation v. Foley Services, WIPO Case No. D2007-0893).
In view of the above, the Panel considers that the Complainant has proved that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Prior UDRP panels have stated that it is sufficient that the complainant shows a prima facie case that the respondent lacks rights or legitimate interests in a disputed domain name in order to shift the burden of production to the respondent (see, e.g., Credit Industriel et Commercial S.A. v. Zabor Mok, WIPO Case No. D2015-1432).
In the present case, the Complainant has made a prima facie showing that the Respondent does not benefit from a license nor authorization granted by the Complainant to use the ISABEL MARANT trademark. Moreover, there is no business relationship between the Complainant and the Respondent and the Respondent is not commonly known by the disputed domain name.
In this regard, the Respondent has provided incorrect WhoIs information and falsely identified itself as someone working for the Complainant, using the Complainant’s postal address. However, the Respondent provided an email address completely different to those used by the Complainant.
Furthermore, the Respondent has not filed a response to the Complainant’s contentions to try to demonstrate a possible legitimate interest or right in the disputed domain name.
Finally, the disputed domain name is resolving to a website which advertises the Complainant’s products at discounted prices, without authorization from the Complainant. Besides, on the website set up by the Respondent, the Panel notes the presence of an advertisement leading to the website “www.celineparisshop.com”, which offers for sale products of a competitor of the Complainant.
It is likely that the products offered for sale by the Respondent are counterfeit goods.
Therefore, the Panel finds that there is no bona fide offering of goods by the Respondent.
The Respondent has not provided evidence of the circumstances set in paragraph 4(c) of the Policy. Consequently, the Panel considers that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant must also show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) provides a non-exhaustive list of circumstances that are evidence of registration and use of a domain name in bad faith.
As stated above, the disputed domain name incorporates the Complainant’s ISABEL MARANT trademark entirely, associated with the generic word “shoes” which matches part of the Complainant’s field of activity.
Moreover, the Respondent had registered the disputed domain name under the identity of a person working for the Complainant, using the Complainant’s postal address. Numerous UDRP decisions have already considered that a deliberate concealment of identity and contact information may be a further indication of bad faith (see, e.g., Schering Corporation v. Name Redacted, WIPO Case No. D2012-0729 and TTT Moneycorp Limited v. Diverse Communications, WIPO Case No. D2001-0725).
The above elements demonstrate that the Respondent was fully aware of the Complainant and of its trademark when registering the disputed domain name.
In consideration of the above-mentioned elements, the Panel concludes that the Respondent has registered the disputed domain name in bad faith.
As previously mentioned, the disputed domain name resolves to a website advertising the Complainant’s goods for sale, at reduced prices (e.g., 70% off). Buyers who desire to check the list of goods sold on this website are redirected to another one, “www.redsoles.cn”. Also, as previously noted the website at the disputed domain name also includes advertising leading to products of a competitor ot the Complainant (“www.celineparisshop.com”).
It seems clear that the Respondent is using the renown of the Complainant’s ISABEL MARANT trademark to attract Internet users to its website for commercial gain, in an effort to trade on the Complainant’s reputation, which is evidence of bad faith registration and use (see, e.g., Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057).
Consequently, the Panel finds that the Respondent also used the disputed domain name 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, <isabelmarantshoes.net>, be transferred to the Complainant.
Date: July 15, 2016
1 Given that the record suggests that the true registrant (whomever that may be) has fraudulently used the name of one of the Complainant’s employees and the Complainant’s address when registering the disputed domain name, the Panel has decided to redact that name from this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.