WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IM Production v. Erica Wong
Case No. D2016-2097
1. The Parties
The Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France.
The Respondent is Erica Wong of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <isabelmarant-shoes.com> is 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 October 14, 2016. On October 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 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 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 October 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 15, 2016.
The Center appointed David Stone as the sole panelist in this matter on November 25, 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 well-known French company active in the business of manufacturing, marketing and selling shoes, handbags, ready-to-wear, jewellery and couture collections. The Complainant's products, including shoes under the brand ISABEL MARANT, can be found at retail stores located around the world, including in China, where the Respondent is based.
The disputed domain name <isabelmarant-shoes.com> was created on August 8, 2016. Based on the available records, the disputed domain name previously re-directed to a website that apparently sold counterfeit products of the Complainant. At the time of this decision, the disputed domain name, however, does not resolve to any active page.
5. Parties' Contentions
The Complainant alleges that it has been using ISABEL MARANT as a trade mark, including for shoes, since at least 1991. It has registered the ISABEL MARANT mark and related trade marks globally. The Complainant owns around 126 applications and registrations for ISABEL MARANT worldwide, including in China, where the Respondent is based.
The Complainant alleges that the disputed domain name is confusingly similar to the ISABEL MARANT mark, because it consists of the Complainant's well-known registered trade mark ISABEL MARANT together with the English word "shoes". The Complainant submits that the addition of the suffix term and hyphen will not lessen the confusing similarity between the disputed domain name and the Complainant's trade mark.
The Complainant submits that the Respondent has no rights or legitimate interest in the disputed domain name, has not used the disputed domain name in connection with a bona fide offering of goods or services and has not been commonly known by the disputed domain name. Further, the Complainant has not licensed or otherwise permitted the Respondent to use its mark or the disputed domain name and is in no way associated or affiliated with the Respondent.
The Complainant submits that the Respondent has acted in bad faith in relation to the disputed domain name as the disputed domain name was for a time being used to divert Internet users to a second domain <isabelmarantshoes.com> advertising counterfeit ISABEL MARANT products. The Complainant accepts that the disputed domain no longer redirects to the second domain but alleges, due to the similarity of the disputed domain name to the Complainant's trade mark, the Respondent could not intend (or have intended) to develop a legitimate activity using the disputed domain name.
The Complainant requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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
As set out above, the Claimant has been using ISABEL MARANT as a trade mark in respect of goods including shoes since 1991 and owns registrations for ISABEL MARANT, including international trade mark no. 717113, registered on June 17, 1999, designating China, where the Respondent is based. The disputed domain name combines "isabel marant" which is phonetically identical to the Complainant's trade mark and patronymic name "Isabel Marant" together with the English word "shoes".
Previous UDRP panels have held that adding common terms to a registered trade mark and registering the result as a domain name does not mitigate the confusing similarity between the domain name and the mark (EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 and Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022).
Indeed, previous UDRP panel decisions have applied this reasoning to trade marks registered by the Complainant. IM Production v. WuTao / Domain Whois Protection Service, WIPO Case No. D2015-1817.
In this case, the Panel finds that the addition of the descriptive word "shoes" to the Complainant's ISABEL MARANT trade mark, by referencing the goods for which the mark is known, increases the likelihood of confusion: see Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; Google Inc. v. Thilak Raj, Net Jobs, WIPO Case No. D2009-0033; and LEGO Juris A/S v. Private, Registration/Dohe Dot, WIPO Case No. D2009-0753.
Accordingly the Panel finds that the Complainant has established element 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Guidance in relation to establishing respondent rights or legitimate interests is provided in paragraph 4(c) of the Policy. Three circumstances are identified: (i) bona fide prior use; (ii) common association with the domain name and; (iii) legitimate noncommercial use. The Complainant has made a prima facie case that none of these circumstances apply. The Respondent did not exercise her right to respond substantively in these proceedings. Thus, she has failed to rebut the prima facie case made by the Complainant (or advance any other argument supporting rights or legitimate interests).
Accordingly the Panel finds that the Complainant has established element 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Guidance regarding establishing bad faith is provided in paragraph 4(b) of the Policy. Four (non-exhaustive) circumstances are identified where the respondent's intention in registering a domain name may provide evidence of bad faith. These intentions may be summarised as follows: (i) to sell the domain name to the rights holder at a profit; (ii) to prevent the rights holder registering a domain name; (iii) to disrupt the business of a competitor; and (iv) to divert Internet traffic for financial gain.
The Claimant has provided evidence of ISABEL MARANT products featured in various Chinese fashion magazines, alongside similar high-end brands. The Panel is satisfied that the ISABEL MARANT trade mark is sufficiently well-known in China that, in all likelihood, the Respondent would have been aware of the Complainant's trade mark at the time the disputed domain name was registered. Previous UDRP panels have made a finding of bad faith where the Complainant's trade mark was shown to be well-known or in wide use at the time of registration of the disputed domain name (see SembCorp Industries Limited v. Hu HuanXin, WIPO Case No. D2001-1092; and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113). The fact that the disputed domain name redirected to a website advertising goods purporting to originate from the Complainant supports the Panel's findings in this respect.
The Complainant claims that the offered ISABEL MARANT products on the second website are counterfeit as evidenced by the unusually low price of the products as compared to genuine ISABEL MARANT goods. The Panel is satisfied that the Respondent is using (or has used) the disputed domain to facilitate the sale of counterfeit products. This act of the Respondent is sufficient evidence of bad faith. See Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019.
The Panel finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the websites at the disputed domain names (and hence divert Internet traffic) by creating a likelihood of confusion with the Complainant's trade mark.
Accordingly the Panel finds that the Complainant has established the third element under 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 disputed domain name <isabelmarant-shoes.com> be transferred to the Complainant.
Date: December 9, 2016