WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IM Production v. Wen Dong Wang
Case No. D2017-0062
1. The Parties
1.1 The Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France.
1.2 The Respondent is Wen Dong Wang of Shanghai, China.
2. The Domain Names and Registrar
2.1 The disputed domain names <fr-isabelmarantbox.com>, <fr-isabelmarantclub.com>, <fr-isabelmarantshop.com>, <isabelmarantcancer.com>, <isabelmarantgemini.com>, <isabelmarantleo.com>, <isabelmaranttaurus.com>, <isabelmarantvirgo.com>, <uk-isabelmarantbox.com> and <uk-isabelmarantclub.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2017. On January 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 13, 2017, 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.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2017.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on March 6, 2017. 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
4.1 The Complainant is a French fashion company that manufactures and sells shoes, ready to wear jewellery, and clothing collections under the name “Isabel Marant”. Isabel Marant is the name of the designer behind these products and is the founder of that business.
4.2 Products have been sold under that name since at least 1991 and the Complainant now has stores in the United Kingdom of Great Britain and Northern Ireland, France, and China, as well as elsewhere in Europe, North America, Asia and the Middle East.
4.3 The Complainant owns a number of trade marks around the world that either comprise of incorporate the term “Isabel Marant”. They include,
(i) international trade mark registration no 717113, registered on June 17, 1999 (and based on an earlier French registered trade mark registered) for the work mark ISABEL MARANT, in classes 3, 14 and 25.
(ii) international trade mark registration no 1095322, registered on June 27, 2011 (and based on an earlier French registered trade mark) for the word mark ISABEL MARANT ETOILE in classes 3, 4, 8, 9, 11, 14, 16, 18, 20, 21, 24, 25, 26 and 27.
Each of these marks designated and proceeded to grant a large number of territories including China.
4.4 The Domain Names were registered on the following dates:
(i) <fr-isabelmarantbox.com> and <uk-isabelmarantbox.com> on December 12, 2014;
(ii) <fr-isabelmarantclub.com>, <fr-isabelmarantshop.com> and <uk-isabelmarantclub.com>, on January 11, 2015; and
(iii) <isabelmarantcancer.com>, <isabelmarantvirgo.com>, <isabelmarantleo.com>, <isabelmarantgemini.com> and <isabelmaranttaurus.com>, on December 15, 2016.
4.5 Each of the Domain Names is currently registered in the name of “Wen Dong Wang”. All of the Domain Names are registered at the same address in Shanghai. In the case of the two Domain Names registered on December 12, 2014, and at the time the Complaint was filed, the WhoIs details for these domain names gave the registration address “c/o GoDaddy Redemption Services”. However, by the time the Registrar responded to the Center’s verification response, the address for each of those Domain Names had changed to the same address as the others.
4.6 Since registration each of the Domain Names, have been used for a website, or to redirect Internet users to a website, that purports to sell the products of the Complainant. As at the date of this decision the Domain Names continue to be used in this fashion. The websites display the text “Copyright © 2012 isabel marant” but do not identify any person or corporate entity other than the Complainant that might be responsible for, or might be the operator of each website.
5. Parties’ Contentions
5.1 The Complainant contends that notwithstanding the different addresses recorded for two of the Domain Names at the time the Complaint was filed, all of the Domain Names are under common control and that therefore all can be dealt with in a single set of proceedings.
5.2 The Complainant asserts that each of the Domain Names combine its ISABEL MARANT trade mark with “generic terms”. It claims that as each of the Domain Names incorporates the Complainant’s mark, they are all confusingly similar to that trade mark.
5.3 The Complainant alleges that the Respondent was not authorised to register any of the Domain Names and that the Respondent has been granted no rights to use the Complainant’s websites. It further contends that each of the Domain Names have been used for a website “selling copies” of the Complainant’s products or for redirecting Internet users to such a site. It claims that in these circumstances, the Respondent has no rights or legitimate interests in any of the Domain Names.
5.4 So far as bad faith registration and use are concerned the Complainant contends that the products sold on the websites operating from the Domain Names, or to which the Internet users are redirected by these Domain Names, are counterfeit goods. In this respect, the Complainant claims that the products are being offered for sale at a price which is significantly below that which would be the price of these products if they were they genuine. The Complainant also further contends that these websites have been designed to “encourage consumers to believe” that they are connected to the official website of the Complainant, when they are not.
5.5 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Names are 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 Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 (b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
6.4 Before addressing these substantive questions under the Policy, the Panel confirms that it accepts the Complainant’s contention that the Domain Names are all controlled by a single person and can all be considered together in a single set of proceedings. The Domain Names are all registered in the same name, the same address, and through the same registrar and all have been used for very similar if not identical websites.
6.5 Indeed, the Panel believes that the Complainant only raised this as an issue because two of the Domain Names recorded the address “c/o GoDaddy Redemption Services” in the WhoIS register at the time the Complaint was filed. However, the words used and the fact that at that time each of these Domain Names also had recorded expiry dates of January 11, 2017, suggests that what had happened is that the Domain Names had passed their expiry dates and had entered their redemption period. It also seems that subsequently these Domain Names were renewed by the Respondent. In any event, regardless of who had renewed them, by the time that the proceedings had formally commenced, this matter had been resolved.
A. Identical or Confusingly Similar
6.6 The Panel accepts that each of the Domain Names is confusingly similar to the Complainant’s registered trade marks. The Complainant is the owner of a number of word marks for the term “Isabel Marant”. Each of the Domain Names can only be sensibly understood as incorporating the entirety of that term in combination with other words such as “box”, “club” or “shop” or words for signs of the zodiac and/or the letters “uk” of “fr” and the “.com” top level domain. The Panel suspect that the letters “uk” and “fr” in some of the Domain Names would be most likely understood as the country codes of the United Kingdom and France. However, whether or not that is the case, none of these additions so distract from or change the natural reading of the mark ISABEL MARANT in each of the Domain Names so as to prevent a finding of confusing similarity for the purposes of the Policy (as to which see Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227)
6.7 In the circumstances the Complaint has satisfied the requirements of paragraph 4(a)(i) of the Policy
B. Rights or Legitimate Interests and Bad Faith Registration and Use
6.8 It is normal for panels under the Policy to consider the issues of rights or legitimate interests and registration and use in bad faith in turn. However, in a case such as this it is more convenient to consider those issues together.
6.9 The Panel accepts that each of the Domain Names has been, used without the Complainant’s consent for websites that purport to be operated by or associated with the Complainant when they are not. There is nothing on the websites that suggests to the Internet user that they are operated by any other entity and the copyright notice displayed on each website suggests that these are genuine websites of the Complainant when they are not. Therefore, this is a case of false impersonation of the Complainant.
6.10 Further, the Panel also accepts, that in the absence of any argument or evidence to the contrary, the Domain Names have been registered and used with that impersonation in mind and in order to promote the sale of counterfeit products.
6.11 There is no right or legitimate interest in holding a domain name for such a purpose and the registration and use of a domain name in this manner involves registration and use in bad faith (see for example, Vestey Group Limited v. George Collins, WIPO Case No. D2008-1308).
6.12 In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <fr-isabelmarantbox.com>, <fr-isabelmarantclub.com>, <fr-isabelmarantshop.com>, <isabelmarantcancer.com>, <isabelmarantgemini.com>, <isabelmarantleo.com>, <isabelmaranttaurus.com>, <isabelmarantvirgo.com>, <uk-isabelmarantbox.com> and <uk-isabelmarantclub.com>, be transferred to the Complainant.
Matthew S. Harris
Date: March 16, 2017