The Complainant is Juliette has a Gun, France, represented by Inlex IP Expertise, France.
The Respondent is FG Consulting, United States of America (“United States”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2021. On December 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 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 December 3, 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 December 7, 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 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2022.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on January 14, 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 based in Paris, France and was founded on September 14, 2005. It is a fragrance house specialized in perfume creation, design, and production.
It is the owner of the domain name
- French trademark registration No. 3411781 for JULIETTE HAS A GUN and device, registered on February 22, 2006, in classes 3, 14, and 25; and
- International trademark registration No. 898178 for JULIETTE HAS A GUN, registered on August 21, 2006, in classes 3, 14, and 25.
The disputed domain name was registered on November 12, 2021. Presently, no active webpage resolves from the disputed domain name.
5. Parties’ Contentions A. ComplainantThe Complainant asserts to have been created by Romano Ricci, great grandson of Nina Ricci, presently being one of the leading independent niche perfume brands, distributed in 42 countries through a network of more than 2,000 retailers and beauty chains worldwide and thus having achieved well-known status.
Under the Complainant’s view the disputed domain name incorporates the Complainant’s JULIETTE HAS A GUN trademark in its entirety, with the addition of another letter “l” in “juliette”, characterizing an example of a typosquatting case, as per past UDRP decisions.
Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that:
(i) it has not authorized or licensed the Respondent to use its trademark in any way;
(ii) the Respondent is not commonly known by the disputed domain name, not holding and rights or trademarks over JULLIETTE HAS A GUN or similar sign; and
(iii) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services given that the disputed domain name has been used in connection with a parked webpage displaying links redirecting Internet users to webpages spreading malware .
As to the registration and use of the disputed domain name in bad faith the Complainant states that:
(i) the Complainant’s trademark is well-known and enjoys a great reputation, so that the Respondent was not able to ignore it when registering the disputed domain name and thus it being obvious that the Respondent is intentionally attempting to take advantage of the well-known character of the Complainant’s JULIETTE HAS A GUN trademark in order to try to attract Internet users to the disputed domain name;
(ii) the lack of response to the cease-and-desist letter sent by the Complainant to the Respondent prior to bringing the Complaint is a further indication of the Respondent’s bad faith;
(iii) the Respondent, by registering the disputed domain name has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website, pursuant to paragraph 4(b)(iv) of the Policy; and
(iv) email servers have been configured in relation to the disputed domain name (Annex 14 to the Amended Complaint), which indicates that the disputed domain name may be used to send fraudulent emails impersonating the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly SimilarThe Complainant has established rights over the JULIETTE HAS A GUN trademark.
The disputed domain name reproduces the Complainant’s JULIETTE HAS A GUN trademark in its entirety, the addition of another letter “l” in the disputed domain name does not prevent a finding of confusing similarity under the Policy which, as recognized by past UDRP panels, involves a “comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”, as the Complainant’s trademark remains sufficiently recognizable in the disputed domain name (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.9).
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element.
In that sense, and according to the evidence submitted, the Complainant has made a prime facie case against the Respondent that the Respondent has not been commonly known by the disputed domain name, and there is no connection or affiliation between the Complainant and the Respondent. Also, the Complainant indeed states that it has not authorized or licensed the Respondent to use its trademark in any way.
Also according to the evidence submitted by the Complainant, the use made of the disputed domain name, in connection with a parked webpage displaying links redirecting Internet users to webpages spreading malware or the present inactive use of the disputed domain name does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name in these circumstances.
Also, the absence of any indication that the Respondent has rights in a term corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
The second element of the Policy has therefore been established.
C. Registered and Used in Bad FaithThe Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a 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 a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
The Panel notes that the disputed domain name is currently inactive. Past UDRP panels have already dealt with the question of whether the “passive holding” of a domain name could constitute bad faith. Section 3.3 of the already quoted WIPO Overview 3.0 states that “[f]rom the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding. While UDRP 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”.
In the present case, the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith, given that the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name. In addition to that, and as decided in past cases under the Policy, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
Two additional factors further reinforce the indication of the Respondent’s bad faith in the broader context of this case:
a) the lack of reply to the cease-and-desist letter sent by the Complainant prior to this procedure; and
b) the configuration of email servers in connection with the disputed domain name.
Finally, the use of the disputed domain name to distribute malware constitutes clear evidence of bad faith (WIPO Overview 3.0, section 3.4).
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name.
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 name
Wilson Pinheiro Jabur
Sole Panelist
Date: January 24, 2022