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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

IM Production v. yansheng zhang, GNAME.COM PTE. LTD

Case No. D2021-1502

1. The Parties

The Complainant is IM Production, France, represented by Nameshield, France.

The Respondent is yansheng zhang, GNAME.COM PTE. LTD, Singapore .

2. The Domain Name and Registrar

The disputed domain name <isabelmarantsneakersclassic.com> is registered with Key-Systems GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2021. On May 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent, and contact information in the Complaint. The Center sent an email communication to the Complainant on May 19, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

On May 20, 2021, the amended Complaint filed by the Complainant was received by the Center.

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 the Respondent of the Complaint, and the proceedings commenced on May 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2021.

The Center appointed 陈长杰 Jacob (Changjie) Chen as the sole panelist in this matter on July 15, 2021. 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 company specializing in the manufacture and marketing of ready-to-wear, shoes, handbags, and jewelry. The Complainant markets products under the brand Isabel Marant around the world.

The Complainant owns numerous registrations of ISABEL MARANT trademark, including the International Trademark No. 1284453 registered on November 16, 2015, and the European Union Trademark No. 001035534 registered on May 3, 2000. The Complainant owns domain names incorporating its ISABEL MARANT trademark, including <isabelmarant.com> registered on April 20, 2002.

According to the information disclosed by the Registrar, the Respondent is yansheng zhang, GNAME.COM PTE. LTD, Singapore.

The disputed domain name is <isabelmarantsneakersclassic.com>, registered on May 7, 2021, and resolves to a website offering for sale of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its ISABEL MARANT trademark. The addition of two generic words “sneakers” and “classic” is insufficient to differentiate the similarity between the disputed domain name and the Complainant’s ISABEL MARANT trademark.

The Complainant further contends that there is no evidence showing that the Respondent has been commonly known by the disputed domain name. Besides, the Complainant has never authorized the Respondent to use its ISABEL MARANT trademark or to register any domain name incorporating the ISABEL MARANT trademark. Moreover, the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services because the Respondent is offering the disputed domain name for sale.

The Complainant finally contends that the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns rights upon numerous registrations of ISABEL MARANT trademark worldwide, which far predate the registration date of the disputed domain name (May 7, 2021). The Complainant has successfully established its rights upon ISABEL MARANT trademark.

It is well established that the generic Top-Level Domain (“gTLD”) suffix “.com” as a standard registration requirement is disregarded in the assessment of the confusing similarity between the disputed domain name and the Complainant’s ISABEL MARANT trademark.

The disputed domain name incorporates the Complainant’s ISABEL MARANT trademark in its entirety. The addition of “sneakers” and “classic” does not prevent a finding of confusing similarity between the ISABEL MARANT trademark and the disputed domain name.

Thus, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s ISABEL MARANT trademark.

B. Rights or Legitimate Interests

The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. The burden of production on this element hence shifts to the Respondent to rebut the Complainant’s contentions. In this case, given the Respondent’s failure to submit a response to rebut the Complainant’s prima facie case, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See Construction Skills Certification Scheme Limited v. Mara Figueira, WIPO Case No. D2010-0947.

According to the Complainant’s evidence, the Respondent directs the disputed domain name to a website offering for sale of the disputed domain name. The Panel views that the Respondent’s use of the disputed domain name cannot be considered as a legitimate noncommercial or fair use nor is the Respondent using the disputed domain name in connection with a bona fide offering of goods or services. Further, there is no evidence on record showing that the Respondent has been commonly known by the disputed domain name.

Further, the Panel finds that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant (see WIPO Overview 3.0, section 2.5.1).

Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Panel notes that the disputed domain name was registered on May 7, 2021, far later than the registration date of the Complainant’s ISABEL MARANT trademark. Given the reputation of the Complainant and its ISABEL MARANT trademark, the Panel holds that the Respondent should have awareness of the Complainant’s trademark and/or its business at the time of registering the disputed domain name, because a simple Internet search with key word “Isabel Marant” shows all top search results connecting to the Complainant. Thus, without any rights or legitimate interests, the Respondent’s registration of the disputed domain name is indicative of bad faith.

Moreover, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see WIPO Overview 3.0, section 3.1.4).

Further, the Panel observes that the disputed domain name resolves to a website showing the disputed domain name is on sale. The Panel views that with the clear understanding of the Complainant’s ISABEL MARANT trademark and the disputed domain name’s value to the Complainant, the Respondent has intention to profit from selling it. Therefore, the Panel holds that the Respondent’s purpose of registering and using the disputed domain name is to gain commercial profit from the sale of the disputed domain name.

For the reasons above, the Panel concludes that the disputed domain name was registered and is being used in bad faith.

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 <isabelmarantsneakersclassic.com> be transferred to the Complainant.

陈长杰 Jacob (Changjie) Chen
Sole Panelist
Date: August 3, 2021

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