WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

IM Production v. Gerald Smith

Case No. D2014-1574

1. The Parties

Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France.

Respondent is Gerald Smith of Ripley, Mississippi, United States of America.

2. The Domain Name and Registrar

The disputed domain name <isabelmarant2014.net> is registered with Network Solutions, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 12, 2014. On September 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 15, 2014, 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 13, 2014.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on October 23, 2014. 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 has been in business since at least as early as 1991 and trades under the name ISABEL MARANT. Complainant sells garments and fashion accessories under the ISABEL MARANT trademark and was founded by an individual of the same name, specifically Ms. Isabel Marant, a French citizen.

Complainant maintains multiple retail locations which sell products under the ISABEL MARANT trademark including stores in France, the United States of America, and China.

Complainant owns multiple trademark registrations for ISABEL MARANT in Australia, China, Republic of Korea, Canada, the United States of America, and other jurisdictions. These registrations cover, amongst other goods, clothing items and accessories.

At the time of filing the Complaint, the disputed domain name resolved to a website selling ISABEL MARANT products that Complainant identified as counterfeits.

The disputed domain name was created on June 18, 2014.

5. Parties' Contentions

A. Complainant

In its Complaint, Complainant contends the following:

Complainant is the owner of the trademark ISABEL MARANT, registered in China, Republic of Korea, Hong Kong, United States of America, Canada and the European Union (including notably France) and Australia.

Complainant is the owner of several domain names including <isabelmarant.com> and <isabelmarant.fr>.

The disputed domain name combine the "isabel marant" expression, strictly identical to Complainant's prior registered trademark ISABEL MARANT and Ms. Isabel Marant's name, with the number "2014", which will be associated with the 2014 creations of Complainant. Therefore, the disputed domain name is confusingly similar to Complainant's trademark.

Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent was never authorized by Complainant to file in its name a domain name comprising the trademark and patronymic ISABEL MARANT. Respondent is not commonly known by the disputed domain name. To Complainant's knowledge, Respondent has never conducted any legitimate offline business under the name "isabelmarant2014".

Respondent has been granted no license or other rights to use Complainant's trademarks as part of any domain name or for any other purpose. Complainant is in no way associated or affiliated with Respondent. Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The only use of the disputed domain name is to misleadingly use it to attract customers to Respondent's website for its own commercial gain, selling copies of ISABEL MARANT products, which is evidence of Respondent's intent to mislead. Regarding the above, Respondent has obviously no rights or legitimate interests in registering the disputed domain name.

The disputed domain name was registered and is being used in bad faith.

Complainant states that at the time of filing the Complaint, the disputed domain name resolved to a website selling ISABEL MARANT products that Complainant has identified as counterfeit, at a very low price, whereas Complainant and/or its distributors sell the legitimate products at a much higher retail price.

According to Complainant, this demonstrates that the products offered on the website at the disputed domain name are not genuine. Thus, Respondent registered and is using the disputed domain name to attract Internet users to its website for financial gain, by creating a likelihood of confusion with Complainant's trademark while it is not an authorized retailer and has no relationship with Complainant.

Complainant requests the transfer of the disputed domain name.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

Under Policy, paragraph 4(a), a complainant must make out its case that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has shown that it owns trademark rights in the ISABEL MARANT mark registered in the United States of America and in several other jurisdictions.

The disputed domain name <isabelmarant2014.net> incorporates the ISABEL MARANT trademark in its entirety, adding only the number "2014" and the generic Top-Level Domain (gTLD) ".net". It is well established that the addition in a domain name of generic terms or of gTLDs to a mark is generally inapt to distinguish the domain name from the trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.9.

The Panel concludes that the disputed domain name is confusingly similar to Complainant's ISABEL MARANT trademark. The first element of the Policy, paragraph 4(a) is thus met.

B. Rights or Legitimate Interests

Complainant contends that Complainant did not authorize Respondent to register any domain name comprising the trademark and patronymic ISABEL MARANT.

Complainant adds that Respondent is not commonly known by the disputed domain name, and never conducted any legitimate offline business under the name "isabelmarant2014.net".

Also, Complainant did not grant Respondent any license or other rights to use Complainant's trademarks as part of any domain name or for any other purpose.

Complainant is in no way associated or affiliated with Respondent. Complainant says that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name because the only use of the disputed domain name is to misleadingly attract customers to Respondent's website for its own commercial gain, selling counterfeit Isabel Marant products. Given the above, Complainant contends that Respondent also has obviously no rights or legitimate interests in the disputed domain name.

Considered together, these contentions of Complainant are apt to constitute a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. It is well established that once a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests in a domain name, it is then up to the respondent to come forward with arguments and evidence that it does have some rights or legitimate interests in the domain name.

In the present case, Respondent failed to present any argument in its own favor. Moreover, the only use of the disputed domain name is a website where Respondent is offering Complainant's purportedly counterfeit products.

The Panel believes that this conduct cannot be a legitimate use of the disputed domain name. See Cartier International, N.V., Cartier International, B.V. v. David Lee, WIPO Case No. D2009-1758 ("The Respondent is using the disputed domain name to offer for sale counterfeit imitations of the Complainant's branded products. This is not a legitimate use of the domain name."); see also Guccio Gucci S.p.A. v. Edardy Ou, WIPO Case No. D2011-1028 ("Use of a trademark to sell what appears to be counterfeit goods using the Complainant's Gucci brand and other well-known brands is clearly not a bona fide use in relation to goods or fair use and is not non-commercial.")

Since Respondent has failed to come forward with any elements in its own favor, the Panel finds that it lacks rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the second element of the Policy is also met.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of Respondent:

"By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's trademark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

At the time of rendering this decision, the disputed domain name resolves to a website offering ISABEL MARANT products. The website at the disputed domain name contains the term "factory outlet" under the trademark ISABEL MARANT and displays several photos of ISABEL MARANT footwear (e.g. shoes, sneakers and boots).

Complainant asserts that the disputed domain name has been used to offer for sale counterfeit products under its trademark via the disputed domain name. Using the disputed domain name to facilitate the sale of counterfeit goods is strong evidence of bad faith (Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019).

Even if the goods on the website are not counterfeit, the Panel finds Respondent's conduct in registering the disputed domain name and setting up the website using the trademark and images of Complainant's goods, and offering for sale footwear under the trademark, all without the express authorization, approval of license of Complainant, is sufficient evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy, irrespective of whether the goods offered for sale on the website are indeed counterfeits.

The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.

For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Decision

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 <isabelmarant2014.net> be transferred to Complainant.

Pablo A. Palazzi
Sole Panelist
Date: October 27, 2014