The Complainant is Maje S.A.S., France, represented by ELLALAN, Hong Kong, China.
The Respondent is Contact Privacy Inc., Canada / Hortense Coulon, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2021. On June 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 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 June 10, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 15, 2021. 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 June 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2021. The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on August 12, 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 MAJE S.A.S. is a subsidiary of SMCP S.A, which together with its subsidiaries and affiliates forms the SMCP group and operates some notable fashion brands worldwide. The SMCP Group designs, markets and sells its products under its four brands, namely Sandro, Maje, Claudie Pierlot and De Fursac. It has built a strong presence across key international fashion cities. It has extended outside France to countries in the APAC region and EMEA (Europe, Middle East and Africa), which have 419 and 546 points of sale respectively. It is present in more than 41 countries and over 1,677 points of sale, including but not limited to Honk Kong, Mainland China, Republic of Korea, Dubai, the United Kingdom, France, Italy, Spain, the United States of America, Canada and Australia. The growth of the SMCP Group and the success of its brands have gathered a significant media attention and resulted in a high public profile for the SMCP Group and its brands globally. Press articles about SMCP Group are published in highly respected and well-read magazines, including but not limited to Elle, Vogue and Business Of Fashion. It generated 1.13 billion Euros and 873 million Euros in sales in 2019 and 2020 respectively. Maje is SMCP Group’s second largest brand in terms of sales, with 596 points of sale worldwide as of December 31, 2021, of which 134 were located in France and 462 were international. The brand reported sales of 336.8 million Euros in 2020. The first store of Maje was opened in Paris in 2003. It is a leading brand in the ready-to-wear market and has been widely reported in popular newspapers and magazines. As at the date of the Complaint, Maje has accumulated over 1 million followers or subscribers on major social platforms. It has 290,000 followers on Facebook, over 7,300,000 monthly viewers on Pinterest, over 1,072,000 followers on Instagram and over 190,000 fans on Weibo. The Complainant and/or its affiliates have registered numerous trademarks comprising of or incorporating the “MAJE” trademark on which this Complaint is based. The Complainant provided a non-exhaustive list of the Complainant’s “MAJE” trademarks in the major jurisdictions, including but not limited to registrations in Australia, the European Union, France, Hong Kong, Japan, Mainland China, the Philippines, Singapore, Thailand and the United States. It also provided copies of the trademark registration certificates for the MAJE trademarks, such as: - The Hong Kong trademark MAJE PARIS, No. 305324328, registered on July 06, 2020, in class 35; The Complainant’s business has always been operated, provided, promoted and marketed continuously and substantially under and/ or by reference to the MAJE trademarks. The MAJE trademarks have acquired distinctiveness and strong reputation and goodwill through extensive use by the Complainant in commerce. The MAJE trademarks are immediately recognizable to consumers as being associated with the Complainant and its businesses. The Complainant contends that it has registered and now maintains various domain names relating to Maje, such as: - The disputed domain name The postal address and telephone number of the Respondent that were disclosed by the registrar following up the notification of the Complaint are 20 Rue Soufflot, Paris 75005, France and +33 1 42 03 26 53 respectively. These contact details are the Complainant’s physical stores situated on 20 Rue Soufflot, Paris. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain dame is identical and/or confusingly similar to their registered trademarks in which the Complainant has rights or interests, as it fully incorporates the Complainant’s “MAJE PARIS” trademark. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It argues that the fame of the “MAJE” trademarks, coupled with the fact that the Complainant has not licensed, consented to or otherwise authorized the Respondent’s use of any of their “MAJE” Trademarks for the disputed domain name has the practical effect of shifting to the Respondent the burden of proof in establishing that it has rights and/or legitimate interests in the disputed domain name. It adds that the Respondent, Hortense Coulon, is not commonly known by the disputed domain name, and that there is no justification or apparent need for the Respondent to use the MAJE Trademarks in the disputed domain name. The Complainant contends that the disputed domain name has been registered and is being used by the Respondent in bad faith. It argues that the absence of rights or legitimate interests in the disputed domain name, the use of the MAJE PARIS trademarks by the Respondent, which clearly has full knowledge of the Complainant’s prior rights in the MAJE trademarks, without obtaining the Complainant’s permission or consent and the confusing similarity between the disputed domain name and the MAJE Trademarks are an evidence of bad faith. It adds that the passive holding of the disputed domain name has been ruled to amount to bad faith registration and use according toWIPO Case No. D2000-0003. It asserts that the postal address and telephone number of the Respondent provided upon the registration of the disputed domain name are the contact details of one of the Complainant’s physical stores, which clearly is an evidence of bad faith registration and use. The Complainant requests the Administrative Panel that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Panel relies on the MAJE trademarks filed in the name of the French company MAJE S.A.S., incorporated under No 382 544 310. Therefore, and according to the available information, it relies on the French trademark MAJE, No. 174369682, and on the US trademark MAJE, No. 5742058. The Complainant has submitted evidence of these prior registered MAJE trademarks. The disputed domain name entirely incorporates the Complainant’s MAJE trademark, to which the geographical name Paris is added to dedicate this disputed domain name to Paris were the Complainant is domiciled and has started its business in 2003. The Complainant has, to the satisfaction of the Panel, shown that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the 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) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the 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 Respondent did not respond to the Complaint to rebut the Complainant’s prima facie case. Consequently, it did not provide any evidence or allege any circumstance to establish that it has rights or legitimate interests in the disputed domain name. It has not been licensed or authorized to use the well-known MAJE trademark or to register the disputed domain name. There is no indication that the Respondent is known under the disputed domain name. The Panel further finds that the Respondent is neither making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as the disputed domain name is not resolving to an active website. The evidence put forward by the Complainant consists of a screen shot of the website associated with the disputed domain name that displays the message “This site can’t be reached”. In the circumstances of this case, the Panel finds that the Complainant has established a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, which the Respondent has not rebutted. The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy). C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to: (i) circumstances indicating that the Respondent has registered or the Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the 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 the Respondent has engaged in a pattern of such conduct; or (iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. Registration in bad faith The Respondent is a lady pretending to be domiciled at an address in Paris, which is the address of one of the Complainant’s shops in Paris. Given the Complainant’s long established and widespread use of its well-known MAJE trademark in several countries of the world, its worldwide reputation as a leading brand in the ready-to-wear market, it being widely reported in popular newspapers and magazines, its 596 points of sale worldwide in 2021, its brand reported sales of 336.8 million Euros in 2020, its 1 million followers or subscribers on major social platforms, its 290,000 followers on Facebook, its 7,300,000 monthly viewers on Pinterest, its 1,072,000 followers on Instagram and its 190,000 fans on Weibo, the Panel finds that the Respondent was perfectly aware of the Complainant’s rights in the MAJE PARIS trademarks, and that it targeted the Complainant, when it registered the disputed domain name. Used in bad faith The disputed domain name does not resolve to a website. Previous UDRP panels have consistently found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive-holding: “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the Respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” These criteria are met, since the MAJE trademark is distinctive and has a reputation (i), the Respondent did not either answer to the complaint or provided any evidence of any actual or contemplated good-faith use (ii), the Respondent provided false contact details when it registered the disputed domain name (iii). Given the reputation of the MAJE trademark, any good faith use is implausible (iv). The Panel therefore finds that the disputed domain name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy. 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, Marie-Emmanuelle Haas
- The Singapore trademark MAJE PARIS, No. 40202014248U, registered on July 09, 2020, in class 35;
- The French trademark MAJE, No. 174369682, registered on June 19, 2017, in classes 3, 9, 14, 18 and 25;
- The US trademark MAJE, No. 5742058, registered on May 07, 2019, in classes 9, 14, 18 and 25.
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Sole Panelist
Date: August 25, 2021
Full & Egal Universal Law Academy