Im Production v Jianping Liu

WIPO Case No. D2022-2009

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Im Production v. Jianping Liu

Case No. D2022-2009

1. The Parties

Complainant is Im Production, France, represented by Nameshield, France.

Respondent is Jianping Liu, China.

2. The Domain Name and Registrar

The disputed domain name <isabelmarantfr.xyz> (“Domain Name”) is registered with 1API GmbH (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2022. On

June 3, 2022, the Center transmitted by email to the Registrar a request for registrar verification in

connection with the Domain Name. On June 3, 2022, the Registrar transmitted by email to the Center its

verification response disclosing registrant and contact information for the Domain Name which differed from

the named Respondent and contact information in the Complaint. The Center sent an email communication

to Complainant on June 9, 2022 providing the registrant and contact information disclosed by the Registrar,

and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended

Complaint on June 9, 2022.

The Center verified that the Complaint together with the amended 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 Respondent of the Complaint,

and the proceedings commenced on June 17, 2022. In accordance with the Rules, paragraph 5, the due

date for Response was July 7, 2022. Respondent did not submit any response. Accordingly, the Center

notified Respondent’s default on July 12, 2022.

The Center appointed Marina Perraki as the sole panelist in this matter on July 25, 2022. 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.

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4. Factual Background

Complainant is a French company specializing in the manufacture and marketing of ready-to-wear, shoes,

handbags and jewelry. Complainant markets these products under the brand ISABEL MARANT, and now

has stores around the world.

Complainant owns a large portfolio of trademarks consisting in the words ISABEL MARANT in several

countries, such as the international trademark registration number 1284453, ISABEL MARANT (word),

registered on November 16, 2015 with priority from October 27, 2015, for goods in international classes 4, 8,

11, 16, 20, 27 and 28 and the European Union trademark registration number 001035534, ISABEL MARANT

(word), filed on December 23, 1998 with priority from June 25, 1998 and registered on May 3, 2000 for

goods in international classes 3, 14 and 25.

Furthermore, Complainant owns several domain names consisting in the words “Isabel Marant”, such as

<isabelmarant.com> registered on April 20, 2002.

The Domain Name was registered on May 31, 2022 and redirected at the time of filing of the Complaint to a

website purporting to be an online store selling Complainant’s ISABEL MARANT products at discounted

prices (the Website). Currently it leads to an inactive page.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for

a transfer of the Domain Name.

B. Respondent

The Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the

Domain Name:

(i)        the Domain Name is identical or confusingly similar to a trademark or service mark in which

Complainant has rights; and

(ii)       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

The Domain Name incorporates Complainant’s ISABEL MARANT trademark in its entirety. This is sufficient

to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO

Case No. D2000-1525).

The addition of the letters “fr” (short for France) does not prevent a finding of confusing similarity as the

ISABEL MARANT trademark remains clearly recognizable (WIPO Overview of WIPO Panel Views on

Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).

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The generic Top-Level Domain (“gTLD”) “.xyz” is disregarded, as gTLDs typically do not form part of the

comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v.

Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik,

WIPO Case No. D2002-0122).

The Panel finds that the Domain Name is confusingly similar to Complainant’s ISABEL MARANT trademark.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the

Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to

use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering

of goods or services; or

(ii) Respondent (as an individual, business, or other organization) have been commonly known by the

Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for

commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with

respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain

Name.

Respondent has not demonstrated any preparations to use, or has not used the Domain Name or a

trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, as Complainant demonstrated, the Domain Name was used to host the Website to

impersonate Complainant and attempt to mislead consumers into thinking that the goods purportedly offered

for sale on the Website originate from Complainant. Such use demonstrates neither a bona fide offering of

goods nor a legitimate interest of Respondent (Arkema France v. Aaron Blaine, WIPO Case No.

D2015-0502).

A distributor or reseller can be making a bona fide offering of goods and thus have a legitimate interest in a

domain name only if the following cumulative requirements are met (Oki Data Americas, Inc. v. ASD, Inc.,

WIPO Case No. D2001-0903; WIPO Overview 3.0, section 2.8.1: (i) respondent must actually be offering

the goods at issue; (ii) respondent must use the site to sell only the trademarked goods; (iii) the site must

accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv)

respondent must not try to “corner the market” in domain names that reflect the trademark.)

These requirements are not cumulatively fulfilled in the present case. The Domain Name falsely suggests

that the Website is an official site of Complainant or of an entity affiliated to or endorsed by Complainant.

The Website extensively reproduces, without authorization by Complainant, Complainant’s trademark,

without any disclaimer of association (or lack thereof) with Complainant.

In addition, the nature of the Domain Name, comprising Complainant’s trademark in its entirety in

combination with the geographical term “fr”, carries a risk of implied affiliation (See WIPO Overview 3.0,

section 2.5.1.).

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The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in

respect of the Domain Name.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,”

are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for

the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is

the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration

in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or

service mark from reflecting the mark in a corresponding domain name, provided that Respondent has

engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of

a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain,

Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with

Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or

location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith.

Because the ISABEL MARANT mark had been widely used and registered by Complainant before the

Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant’s mark

in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No.

09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case

No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No.

D2000-0226).

Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable

through a simple browser search and also due to Complainant’s nature of business, provided also online,

namely online sales (see Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v.

Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).

Furthermore, the content of the Website gave the impression that it originated from Complainant,

prominently displaying ISABEL MARANT signs on the Website, thereby giving the false impression that the

Website emanated from Complainant. This further supports registration in bad faith reinforcing the likelihood

of confusion, as Internet users are likely to consider the Domain Name as in some way endorsed by or

connected with Complainant (WIPO Overview 3.0, section 3.1.4).

The above further indicates that Respondent knew of Complainant and chose the Domain Name with

knowledge of Complainant and its industry (Safepay Malta Limited v. ICS Inc., WIPO Case No.

D2015-0403).

Furthermore, Respondent could have conducted a trademark search and should have found Complainant’s

prior registrations in respect of ISABEL MARANT (Citrix Online LLC v. Ramalinga Reddy Sanikommu

Venkata, WIPO Case No. D2012-1338).

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As regards bad faith use, Complainant demonstrated that the Domain Name was employed to host a

Website which appeared falsely to be that of Complainant.

Furthermore, the Domain Name has been operated by intentionally creating a likelihood of confusion with

Complainant’s trademark and business. This further supports the finding of bad faith use (Arkema France v.

Aaron Blaine, supra; Aktiebolaget Electrolux v. Priscilla Quaiotti Passos, WIPO Case No. D2011-0388 and

WIPO Overview 3.0, sections 3.1.4 and 3.2.1).

The Domain Name currently leads to an inactive website. The non-use of a domain name would not prevent

a finding of bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.

D2000-0003; and WIPO Overview 3.0, section 3.3).

Under these circumstances and on this record, the Panel finds that Respondent registered and used the

Domain Name in bad faith.

Complainant has established Policy, paragraph 4(a)(iii).

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 <isabelmarantfr.xyz> be transferred to Complainant.

/Marina Perraki/

Marina Perraki

Sole Panelist

Date: August 8, 2022