The Complainant is Jacquemus SAS, France, represented by DBK Société d’avocats, France.
The Respondent is Michael Pe, Australia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2020. On August 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2020, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2020. The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on September 10, 2020. 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 Jacquemus, a French company acting in the clothing and fashion accessories since 2013, under the mark JACQUEMUS. This mark is the name of the founder of the Complainant, Mr. Simon Porte Jacquemus. Mr Jacquemus started in the fashion business at the age of 19 and received several international awards since then. Details on the history and presence worldwide of the Complainant are displayed in Annex 4 of the Complaint. The Complainant owns a considerable number of registrations for the JACQUEMUS trademark throughout the world, among which an international registration granted in 2014 including Australia, and a community trademark registered in 2019. A sample proof of these registrations is attached to the Complaint as Annex 5. The Complainant also holds the domain name The Complainant has established rights over the mark JACQUEMUS internationally, and its fame and renown is inevitably linked to the Complainant. The disputed domain name was registered on January 6, 2020. The disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant is the owner of registrations worldwide for the mark JACQUEMUS, which has been in use worldwide for over 10 years. The mark JACQUEMUS is the family name of the founder of the Complainant, Simon Porte Jacquemus, who started this brand at the age of 19, in 2009. Trademark JACQUEMUS is known worldwide in the fashion industry, and is present in over 50 countries. The Respondent registered the disputed domain name, which incorporates the trademark JACQUEMUS, registered by the Complainant. The disputed domain name bears the trademark JACQUEMUS together with the termination “.online”, which cannot be considered as a distinctive element. As stated by the documents presented, the registration and use of the trademark JACQUEMUS predates the registration of the disputed domain name. The disputed domain name does not direct to an active website, but to an image informing it be “under construction”, as states Annex 7. The Complainant alleges that such proceeding is clearly calculated to mislead consumers and tarnish the Complainant’s trademark. Further, the Complainant alleges that there is no coincidence in the adoption of the disputed domain name, being the choice a pretext for commercial advantage. The Complainant tried to contact the Respondent by addressing a cease-and-desist letter by email, but no response was ever received to this correspondence (Annex 8 of the Complaint). B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Policy, in its paragraph 4(a), determines that three elements must be presented and duly proven by a complainant to obtain relief. These elements are: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The disputed domain name The Complainant has presented consistent evidence of ownership of the trademark JACQUEMUS in jurisdictions throughout the world, by presenting international registrations for it, as well as comprehensive evidence of the use of the trademark. The use of the trademark with the addition of the word “online” in the disputed domain name does not differentiate it from the trademark. Even though more relevant under the third element of the Policy1, the Panel notes here that on the contrary, the mark JACQUEMUS is reproduced in its entirety, which may lead the public to consider the disputed domain name to lead to a site related to the Complainant. Further, the exhibition of the information of a site “under construction” is a fact of which squatters normally take profit from, preparing a page that might give the user the impression it is the real one that was searched. Given the above, the Panel concludes that the disputed domain name is confusingly similar to the registered trademark of the Complainant. B. Rights or Legitimate Interests There are clear evidence that the trademark JACQUEMUS is registered in the Complainant’s name and is widely known as identifying the Complainant’s activities, and that the Complainant has not licensed this to the Respondent. Furthermore, the Respondent does not appear to be commonly known by the disputed domain name. It has also been shown that the Respondent is not making any direct use of the disputed domain name, noting the disputed domain name does not resolve to an active website, but to one “under construction”. The Respondent is not making a noncommercial or fair use of the disputed domain name, nor a bona fide offering of goods or services. The Panel finds that the Complainant has established prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In the absence of a Response, the Respondent has not rebutted such prima facie case. The Panel, thus, finds for the Complainant under the second element of the Policy. C. Registered and Used in Bad Faith The Complainant’s trademark is recognized as being well known in the fashion market, and is clearly linked to the founder of the Complainant, Mr Jacquemus. In this Panel’s view, the Respondent was aware of the Complainant’s rights in the JACQUEMUS mark at the time the disputed domain name was registered. These facts indicate that such registration was made in bad faith. The disputed domain name was registered to clearly mislead Internet consumers – hence the intentional addition of the word “online” to the mark JACQUEMUS in the disputed domain name. The Respondent intended to give an overall impression that the disputed domain name is associated with the Complainant, indicating that the site was under construction. It may lead the public to consider that the disputed domain name directs to a site related to the Complainant. The current passive holding of the disputed domain name is also evidence of bad faith from the Respondent. Previous UDRP panels have found that the apparent lack of so-called active use of the domain name without any active attempt to sell or to contact the trademark holder does not prevent a finding of bad faith. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Here, the Panel notes the distinctive and well known nature of the Complainant’s trademark JACQUEMUS, the failure of the Respondent to submit a Response, and the implausibility of any good faith use to which the disputed domain name may be put support a finding of bad faith. The Panel finds that the Respondent registered and is using the disputed domain name with the intention of improperly obtaining benefits and harming the Complainant’s reputation in the market. In the totality of the circumstances, the Panel finds the Respondent has registered and is using the disputed domain name 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, Alvaro Loureiro Oliveira 1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 : “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”
Sole Panelist
Date: September 24, 2020
Full & Egal Universal Law Academy