The Complainant is Jacquemus SAS, France, represented by DBK Société d’avocats, France.
The Respondent is Peng Li, China.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2021. On October 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 7, 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.
Further to a settlement, on November 25, 2021, the Center partially dismissed the proceeding concerning the domain name
The Center sent an email communication to the Complainant on November 25, 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 November 26, 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 December 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2021.
The Center appointed Nicholas Weston as the sole panelist in this matter on January 7, 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.
4. Factual BackgroundThe Complainant is a company incorporated in France founded in 2013 that operates a fashion business in more than 50 countries. The Complainant holds registrations for the trademark JAQUEMUS in numerous countries including, for example, International registration No. 1211398 designating China and the United States of America (“United States”) registered since February 5, 2014.
The Complainant owns the domain name
The Disputed Domain Name
The Complainant cites its trademark registrations for JACQUEMUS in various countries as prima facie evidence of ownership.
The Complainant submits that the trademark JACQUEMUS is well-known and that its rights in that trademark predate the Respondent’s registration of the Disputed Domain Names
The Complainant contends that the Respondent has no authorized rights or legitimate interests in respect of the Disputed Domain Name and that “the Respondent is using the Complainant’s Trademarks but also other elements referring to Complainant’s identity, including photographs of the Complainant’s models and original pictures from the Complainant’s official website without any authorization from the Complainant whatsoever” such that “the Respondent’s use does not qualify as bona fide offer of goods and services”.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Names were, and currently are, in bad faith, contrary to the Policy and the Rules. It submits that “The Trademarks have acquired extensive and worldwide reputation and should thus be considered as well-known”, citing Jacquemus SAS v. Contact Privacy Inc. Customer 1245862480 / Jacob Inch,WIPO Case No. D2019-3144; JACQUEMUS SAS v. Contact Privacy Inc. Customer 0155835558 / Rimk Le Boss Binks, Jacquemus Ventes Privees,WIPO Case No. D2019-2765; Jacquemus SAS v. wenben zhou,WIPO Case No. D2020-2073 and Jacquemus SAS v. Perklis Georgopoulos, The Project Garments,WIPO Case No. DEU2020-0024. On use, it submits that “offering for sale counterfeit products of the Complainant and uses/used pictures from the Complainant’s official website as well as pictures of the Complainant’s models” is use of the Disputed Domain Names in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) that the Disputed Domain Names have been registered and are being used in bad faith.
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark JACQUEMUS. The mark JACQUEMUS was registered as a trademark in France on December 24, 2013 (No. 4057016). The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1).
Turning to whether the Disputed Domain Names are identical or confusingly similar to the JACQUEMUS trademark, the Panel observes that the Disputed Domain Names comprise:
- in the case of the Disputed Domain Name
- in the case of the Disputed Domain Name
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Hoffmann-La Roche Inc. v. Andrew Miller,WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of each Disputed Domain Name, specifically: “jacquemusbagshop” and “jacquesmusbagstore”, respectively.
It is also well-established that in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the Disputed Domain Names, the Disputed Domain Names will normally be considered confusingly similar to that mark for purposes of UDRP standing (see WIPO Overview 3.0, section 1.7).
This Panel accepts that the addition of the terms “bagshop” and “bagstore” do not preclude a finding of confusing similarity to the Complainant’s trademark (see: Coach, Inc. v. li feng mei, Guo LingJian,WIPO Case No. D2010-1998; and Jeanne Lanvin Company v. lin tao,WIPO Case No. D2013-0952).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Names. The Policy also places the burden of proof on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Names. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see WIPO Overview 3.0, section 2.1)
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because it has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark or to sell its products and for those reasons, the Respondent is not making a bona fide offering of goods or services. The Complainant submits that “the Respondent’s websites did not accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that it is not an authorized dealer nor has any particular connection with the Complainant”.
This Panel accepts that the Respondent is not an authorized reseller with a legitimate interest in a domain name incorporating a Complainant’s mark, and there is no disclaimer on the website the Disputed Domain Names resolve to, therefore it cannot meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by either of the Disputed Domain Names.
The composition of the Disputed Domain Names consists of the Complainant’s trademark and terms connoting some kind of affiliation with the Complainant’s retail business. In this Panel’s view, the conduct carries a “risk of implied affiliation” that other UDRP panels have not considered fair use as it “effectively impersonates or suggests sponsorship or endorsement by the trademark owner” (see WIPO Overview 3.0, section 2.5.1).
This Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because it is engaging in an illegitimate commercial use of the Disputed Domain Names by suggesting some association with the Complainant and misleading consumers who are seeking out the Complainant’s mark JACQUEMUS to opportunistically divert Internet traffic to its web page.
The Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad FaithThe third element of the Policy that a complainant must also demonstrate is that each disputed domain name in question has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
The evidence that the Respondent has registered and used the Disputed Domain Names in bad faith is overwhelming. This Panel finds it most unlikely that the Respondent might have registered the Disputed Domain Names without knowing of the trademark (see Jacquemus SAS v. Contact Privacy Inc. Customer 1245862480 / Jacob Inch, supra (“the Complainant’s trade mark is successful and enjoys a growing reputation, particularly in the fashion industry”); and JACQUEMUS SAS v. Contact Privacy Inc. Customer 0155835558 / Rimk Le Boss Binks, Jacquemus Ventes Privees, supra (“Complainant is known worldwide in the fashion industry”). This Panel finds that the Respondent is, or should have been, aware of the Complainant’s reputation and trademark (see WIPO Overview 3.0, section 3.2.2).
Further, a gap of several years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Names (containing the trademark) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007‑1415). In this case, the Complainant’s rights in its trademark predate any rights that could possibly flow from the Respondent’s registration by 8 years.
On the issue of use, the uncontradicted evidence of record is that the Disputed Domain Names were used to resolve to a website bearing images, products and artwork from the Complainant’s genuine online store, and offering fake JACQUEMUS handbags for sale. In line with prior UDRP panel decisions, the Panel finds that this misconduct is an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website (see WIPO Overview 3.0, section 3.1.4).
This Panel finds that the Respondent has taken the Complainant’s trademark JACQUEMUS and incorporated it in the Disputed Domain Names without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users for commercial gain contrary to paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names,
Nicholas Weston
Sole Panelist
Date: January 13, 2022
1 According to WhoIs Domaintools, accessed January 9, 2022, at the following URL: https://whois.domaintools.com/jacquemus.com