Westmore · UDRP DecisionOnlinesaleisabelmarant.com
The Panel ordered transfer of <onlinesaleisabelmarant.com>. It found the Domain Name confusingly similar to the Complainant’s registered ISABEL MARANT mark because it incorporated the mark in full and the additional terms “online” and “sale” did not avoid confusing similarity. The Complainant established a prima facie case that the Respondent lacked rights or legitimate interests, which the non-responding Respondent did not rebut. Bad faith was found from the Respondent’s knowledge of the earlier mark and use of the Domain Name for a retail website offering ISABEL MARANT footwear, including the unrefuted allegation that the goods were counterfeit. The Panel added that even if the goods were authentic, the absence of an accurate and prominent disclosure of the parties’ relationship would also support bad faith.
The timeline behind onlinesaleisabelmarant.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind onlinesaleisabelmarant.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The case illustrates two related bad-faith routes for trademark-targeting retail domains: an unrefuted allegation that the domain facilitates counterfeit sales and, alternatively, a commercial website’s failure to disclose accurately its lack of relationship with the trademark owner. It also shows that adding retail-oriented terms such as “online” and “sale” to an entire trademark does not avoid confusing similarity.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION IM Production v. Tao Wang Case No. D2015-0143 1. The Parties The Complainant is IM Production of Paris, France, represented by Cabinet Vittoz, France. The Respondent is Tao Wang of Guang Zhou, China. 2. The Domain Name and Registrar The disputed domain name <onlinesaleisabelmarant.com> (the “Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2015. On January 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 3, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 24, 2015. The Center appointed Olga Zalomiy as the sole panelist in this matter on March 5, 2015. 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 that uses the ISABEL MARANT trademark for shoes, clothing and jewelry. The Complainant owns several trademark registrations in the ISABEL MARANT trademark, including the international trademark registration No. 717113 dated June 17, 1999, and the Chinese trademark registration No. 200002034AA dated June 25, 1998. The Respondent appears to be an individual based in China. The Respondent registered the Domain Name on November 15, 2014. The Domain Name directs visitors to an online retail store that features footwear under the ISABEL MARANT trademark. 5. Parties’ Contentions A. Complainant The Complainant asserts that it is a French fashion company that uses the ISABEL MARANT trademark for shoes, clothing and jewelry. According to the Complainant, the ISABEL MARANT label was founded in 1991 and it has used it for clothing and fashion accessories ever since. The Complainant claims that it has several trademark registrations in the ISABEL MARANT trademark. The Complainant asserts that it owns a lot of domain names that include the ISABEL MARANT trademark. The Complainant argues that the Domain Name is confusingly similar to its trademark because it incorporates the distinctive ISABEL MARANT trademark in its entirety and the addition of the generic words “online” and “sale” does not detract from confusing similarity. The Complainant also asserts that it never authorized the Respondent to register a domain name comprising its ISABEL MARANT trademark, nor did it ever license the trademark to the Respondent. The Complainant claims that the Respondent is not commonly known by the Domain Name, nor is he associated with the Complainant. The Complainant argues that the Respondent is not using the Domain Name for legitimate noncommercial or fair use. The Complainant claims that the Respondent is using the Domain Name to attract customers to the Respondent’s website associated with the Domain Name to derive commercial gain from such use. The Complainant claims that the Respondent is using the website associated with the Domain Name to sell counterfeit goods under the ISABEL MARANT trademark. The Complainant argues that the Domain Name directs to a website that offers counterfeit ISABEL MARANT products at a price that is significantly lower than the price of authentic ISABEL MARANT products. According to the Complainant, the Respondent is using the Domain Name to attract, for commercial gain, Internet users to his “www.onlinesaleisabelmarant.com” website, by creating a likelihood of confusion with the Complainant’s mark as to the source of the ISABEL MARANT products. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In this UDRP proceeding, the Complainant must prove, by a preponderance of the evidence 1 each of the following UDRP elements 2 : (i) the Domain Name registered by the Respondent 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 To satisfy the first UDRP element, a domain name must be “identical or confusingly similar” to a trademark, in which a complainant has rights. The record confirms that the Complainant owns the registered trademark ISABEL MARANT in France, China, Switzerland and many other countries. The Panel finds that the Domain Name is confusingly similar to the Complainant’s ISABEL MARANT trademark because it fully incorporates the ISABEL MARANT trademark. Adding common, dictionary or descriptive terms 3 , like “online”, “sale” or the generic Top-Level Domain cannot prevent threshold Internet user confusion. 4 Therefore, the Panel finds that the Complainant has satisfied the first UDRP element by proving that the Domain Name is confusingly similar to the ISABEL MARANT trademark in which the Complainant has rights. B. Rights or Legitimate Interests To satisfy the second UDRP element, the Complainant is “required to make out a prima facie case that the respondent lacks rights or legitimate interests” 5 in the Domain Name. 6 The Respondent has no rights or legitimate interests in the Domain Name because he is not commonly known by the name “Isabel Marant”. It is undisputed that he is neither a licensee of the Complainant, nor did the Complainant authorize him to register the Domain Name comprising the Complainant’s trademark. The Complainant argues that the Respondent is not using the Domain Name for legitimate noncommercial or fair use, nor is he using the Domain Name in connection with bona fide offering of goods or services because the Respondent is using the Domain Name for sale of counterfeit ISABEL MARANT goods. The Panel, therefore, finds that the Complainant has made out a prima facie case showing that the Respondent has no rights or legitimate interests in the Domain Name. Because the Respondent failed to offer allegations or evidence demonstrating rights or legitimate interests in the Domain Name, the Complainant has satisfied paragraph 4(a)(ii) of the UDRP. 7 Therefore, the Panel finds that the Complainant satisfied the second UDRP element. C. Registered and Used in Bad Faith To satisfy the third UDRP element, the Complainant must prove that the Domain Name was registered and is being used in bad faith. 8 Based on the evidence submitted by the Complainant, the Panel finds that the Respondent registered and is using the Domain Name in bad faith. The Respondent knew about the Complainant’s trademark when he registered the Domain Name because he registered the Domain Name at least sixteen years after the Complainant registered its ISABEL MARANT trademark and because the Respondent is selling purportedly authentic ISABEL MARANT footwear on the website associated with the Domain Name. Further, the Complainant claims, and the Respondent has not denied, that the Respondent is using the Domain Name to sell counterfeit products under the ISABEL MARANT trademark via the website associated with the Domain Name. Using the Domain Name to facilitate the sale of counterfeit goods amounts to bad faith registration and use under paragraph 4(b)(iv) of the UDRP. 9 Prada S.A. v. Domains For Life , WIPO Case No. D2004-1019 . The Panel, therefore, finds that the Complainant has established the third element of paragraph 4(a) of the UDRP. 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 Domain Name, <onlinesaleisabelmarant.com>, be transferred to the Complainant. Olga Zalomiy Sole Panelist Date: March 18, 2015 1 Paragraph 4.7 , WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). 2 Paragraph 4(a) of the UDRP. 3 Paragraph 1.2 , WIPO Overview 2.0. 4 Id . 5 Paragraph 2.1 , WIPO Overview 2.0. 6 Paragraph 4(a)(ii) of the UDRP. 7 Id . 8 Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd , WIPO Case No. D2010-0470 . 9 In any event, even if the goods on offer at the website are authentic, the website does not contain an accurate and prominent disclosure of the Respondent’s relationship (or lack thereof) with the Complainant, falsely suggesting that the website is the Complainant’s. The Panel finds this would also amount to bad faith registration and use of the Domain Name.
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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