WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IM Production v. Dayan Zhang
Case No. D2016-1861
1. The Parties
The Complainant is IM Production of Paris, France represented by Cabinet Vittoz, France.
The Respondent is Dayan Zhang of New York, New York, United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <isabelmarantshoes.com> (the "Disputed Domain Name") is registered with Gandi SAS (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 14, 2016. On September 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 15, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the registrant's 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 September 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 10, 2016.
The Center appointed Martine Dehaut as the sole panelist in this matter on October 13, 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
The Complainant is a French fashion company which sells under the ISABEL MARANT Trademark a broad range of fashionable products and accessories and notably clothings, shoes, ready to wear, jewelry and couture collection.
The Complainant's "Isabel Marant" brand originated in 1991 when Isabel Marant who is the designer of the Complainant company, started her business for the creation, manufacturing and sale of garments and fashion accessories
"Isabel Marant" products are distributed all over the world. The Complainant is notably selling its branded products in its own stores located in several European countries as well as in the Americas, Asia, and Middle East.
The Complainant owns numerous trademarks registered in many jurisdictions, including in particular the following:
European Union Trade Mark ("EUTM") ISABEL MARANT registration number 003010048, registered on January 17, 2005 in classes 9, 18, 21, 24.
EUTM ISABEL MARANT registration number 001035534, registered on May 3, 2000 in classes 3, 14, 25.
International Trademark ISABEL MARANT registration number 717113, registered on June 17, 1999 in classes 3, 14, 25.
United States Patent and Trademark Office ("USPTO") trademark ISABEL MARANT registration number 2,367,858, registered on July 18, 2000 in classes 14, 25.
Hong Kong Trademark registration ISABEL MARANT n° 200020334AA registered on June 25, 1998 in classes 3, 14, 25.
The Complainant registered also several domain names and notably the following:
<isabelmarant.com>, <isabel-marant.com>, <isabelmarant.fr>, <isabel-marant.com> and <isabel-marant.fr>.
The Respondent registered the Disputed Domain Name <isabelmarantshoes.com> on May 30 2016.
The Disputed Domain Name resolves to a website offering for sale, at discounted prices, shoes suspected to be counterfeit goods.
5. Parties' Contentions
The Complainant contends that the Disputed Domain Name <isabelmarantshoes.com>, which incorporates the element "Isabel Marant", is confusingly similar to its trademark ISABEL MARANT. The word "shoes", internationally understood according to the Complainant's assertion, is a descriptive element and consequently its addition to the term "Isabel Marant" is not likely to prevent the finding of confusing similarity with the Complainant's trademark. Moreover, the Complainant alleges that the Disputed Domain Name was registered well after the Complainant's trademark rights in ISABEL MARANT were acquired.
The Complainant states that it owns several domain names incorporating that trademark, as listed above.
The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. It alleges that the Respondent is not commonly known by the Disputed Domain Name, that it has never conducted any legitimate business activities under that name and that it has never been authorized by the Complainant to register domain names identical or confusingly similar to the Complainant's trademarks and to the patronymic " name Isabel Marant".
The Complainant asserts that it has not granted to the Respondent any rights to use the Complainant's trademark and that it is in no way affiliated or associated to the Respondent.
Finally, the Complainant claims that the Disputed Domain Name was registered and used in bad faith. To support its allegation, the Complainant indicates that the Respondent uses the Disputed Domain Name for selling goods at very low prices, identified by the Complainant as counterfeit. The Complainant alleges also that the Respondent intends to lead the Internet customers to falsely believe that its website is the Complainant's official website, by inserting under the heading "About Us" the following sentence "Welcome to the official Isabel Marant shoes online store".
Consequently, the Complainant requests the Panel to order that the Disputed Domain Name be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, and notwithstanding the default of the Respondent, the Complainant must prove that the following three criteria are met:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name (paragraph 4(a)(ii)); and
(iii) the Disputed Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii).
Each of these elements will be reviewed separately in the following sections.
A. Identical or Confusingly Similar
As stated in the Complaint, the Complainant is the owner of numerous trademark registrations for ISABEL MARANT and domain names incorporating said trademark.
The Disputed Domain Name is mainly consisting of "Isabel Marant" that identically reproduces the Complainant's trademark. The fact that the above is combined with the generic word "shoes" is insufficient to avoid a finding of confusing similarity between the Disputed Domain Name <isabelmarantshoes.com> and the Complainant's trademark ISABEL MARANT. See Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923, and more generally, WIPO Overview of WIPO Panel views on selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9.
As previously expressed in IM Production v. Name Redacted, WIPO Case No. D2016-1133, the addition of the generic word "shoes", which obviously refers to a range of products falling within the field of the Complainant's activities, is likely to enhance the confusing similarity of the Disputed Domain Name with the Complainant's trademarks.
Based on the foregoing, the Panel holds that the first requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Following the second condition of paragraph 4(a) of the Policy, the Complainant has to prove that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Panel finds that the Complainant has duly established a prima facie case that the Respondent is not commonly known by the Disputed Domain Name and has never conducted any offline business under that domain name.
The Complainant has duly asserted that it has not granted any license or any authorization to the Respondent to use the Disputed Domain Name and that it is in no way associated or related with the Respondent.
While no further evidence has been provided by the Complainant to support these allegations, unrebutted assertions like the ones above have generally been considered as sufficient by previous UDRP panels to conclude that a complainant has established a prima facie case that the respondent has no rights or legitimate interests in a disputed domain name. In such circumstances, it is admitted that the burden of production shifts to the Respondent to come forward with appropriate evidence or allegations. See WIPO Overview 2.0, paragraph 2.1. In the present case, the Respondent failed to submit any arguments in order to rebut the Complainant's assertions.
The Panel notes that the Respondent's website clearly gives the impression of being authorized by the Complainant, notably by stating "isabelmarantshoes.com is an official Isabel Marant shoes online outlet store, authorized by Isabel Marant Inc". Without coming to a conclusion as to whether the goods offered at the Respondent's website are genuine or not, the Panel finds that such statements misleadingly represent the Respondent's relationship with the Complainant, noting that in fact it has no authorization form or affiliation with the Complainant of ta nature that could give rise to rights or legitimate interests in the Disputed Domain Name as an unauthorized reseller for the Complainant's goods.
Accordingly, the Panel holds that the second requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Respondent has registered and used the Disputed Domain Name in bad faith. Paragraph 4(b) of the Policy gives examples of circumstances that may in particular but without limitation, be indicative of registration and use in bad faith as follows:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trademark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location.
In the present case, the Panel has duly noted the Complainant's allegations relating to the sale of counterfeit goods on the Respondent's website under the Disputed Domain Name. However, the Complainant fails to submit any further strong evidence likely to support such assertions which, as a consequence, cannot be taken into account by the Panel to evaluate the bad faith of the Respondent in registering and using the Disputed Domain Name.
Nevertheless, the Panel finds that the insertion in the heading of the Respondent's website of a sentence leading the website visitors to unduly believe that they are connected with the Complainant's official website clearly evidences the bad faith of the Respondent. In registering and in using the Disputed Domain Name, the Respondent intended to create confusion as to the source of the website leading the Internet users to unduly believe that the Disputed Domain Name resolves to the Complainant's official website or to that of any company affiliated or connected to the Complainant.
As correctly pointed out in the Complaint, such a behavior does not show any bona fide offering of goods and services but is rather indicative of the attempt of the Respondent to mislead the Internet users in order to attract them to its website for its own commercial gain.
The Respondent has not submitted any substantive arguments to rebut the contentions of the Complainant.
Considering all the above mentioned circumstances, the Panel holds that the Disputed Domain Name has been registered and is being used in bad faith and that the requirement of Policy, paragraph 4(a)(iii) is satisfied.
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.com> be transferred to the Complainant.
Date: October 25, 2016