Dousset Holdings, LLC v Manh Tuyen Do, Vietnam

WIPO Case No. D2024-3753

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Dousset Holdings, LLC v. Manh Tuyen Do, Vietnam

Case No. D2024-3753

1. The Parties

The Complainant is Dousset Holdings, LLC, United States of America (“United States”), represented by

Stubbs Alderton & Markiles, LLP, United States.

The Respondent is Manh Tuyen Do, Vietnam, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <juliadouset.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2024. On September 16, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 2024, 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 (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 17, 2024, 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 September 21, 2024.

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 paragraph 5, the due date for Response was October 17, 2024. The Respondent did not submit any reply. Accordingly, the Center notified the Respondent’s default on October 18, 2024. Due to an apparent issue with the notification, on October 25, 2024, the Center granted the Respondent through October 30, 2024 to indicate whether it wished to participate to this proceeding. No communication was received from the Respondent.

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The Center appointed Iris Quadrio as the sole panelist in this matter on November 6, 2024. 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 company founded by the renowned jeweler Jean Dousset, whose legacy is rooted in craftsmanship and innovation. Jean Dousset developed his skills through collaborations with iconic French jewelry houses such as Chaumet, Alain Boucheron, and Van Cleef & Arpels, bringing a unique blend of old- world artistry and modern aesthetics to the brand.

Based in Los Angeles, the Complainant is recognized for its bespoke fine jewelry collection, celebrated for custom creations, innovative designs, and meticulous attention to detail. The Complainant has also redefined luxury by introducing the first high-end lab-grown diamond collection, positioning itself as both a preserver and innovator of jewelry traditions in the industry.

The Complainant is the owner of United States Patent and Trademark Office (USPTO) Reg. No. 3450224 for the mark JEAN DOUSSET registered since June 17, 2008, in class 14. Additionally, the Complainant is the owner of other USPTO registrations including the terms Jean Dousset, such as Reg. No. 5869494 for the

mark OUI BY JEAN DOUSSET registered since September 24, 2019, and Reg. No. 6023603 for the mark

OUI BY JEAN DOUSSET (& Design) registered since March 31, 2020, both in class 14.

The Complainant also owns the domain name <jeandousset.com> as its primary website since April 16,
2005.

Lastly, the disputed domain name was registered on September 15, 2023, and it initially resolved to a website that mimicked the Complainant’s official webpage and displayed the Complainant’s trademarks (as per Annex 8 of the Complaint) with copyright notice “©2022 Jean Dousset”. The disputed domain name currently resolves to an inactive site.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

The Complainant states that the disputed domain name is confusingly similar to its trademark JEAN
DOUSSET, and its official domain name.

The Complainant contends that the Respondent has no rights or legitimate interest in respect of the disputed domain names, nor is he related in any way to the Complainant. Neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark JEAN DOUSSET or apply for

registration of the disputed domain names.

More specifically, the Complainant alleges that the Respondent has not used and/or has no demonstrable intention to use the disputed domain name except to create a likelihood of confusion with the Complainant's trademark. In fact, the Complainant claims that the Respondent has selected the disputed domain name only to intentionally lead internet users to believe they are accessing the Complainant’s website.

Finally, the Complainant has requested the Panel to issue a decision ordering the transfer of the disputed domain name to the Complainant.

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B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:

(i)        the disputed domain name is identical or confusingly similar with a trademark or service mark in which the Complainant has rights; and

(ii)       the Respondent has no rights or legitimate interest in respect of the disputed domain name; and

(iii)      the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

WIPO Overview 3.0, section 1.7.

The disputed domain name is composed of “julia” and “douset” (a misspelling of “Dousset” in the dominant feature of the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy.

Moreover, the evidence on record shows that the disputed domain name initially resolved to a webpage
imitating the Complainant’s official website and displaying Complainant’s trademarks and a copyright notice
“©2022 Jean Dousset” referring to the Complainant. In this regard, panels have taken note of the content of
the website associated with a domain name to confirm confusing similarity whereby it appears prima facie
that the respondent seeks to target a trademark through the disputed domain name. WIPO Overview 3.0.,

section 1.15.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

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Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Complainant has claimed not to have authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the trademark JEAN DOUSSET nor is there any other evidence in the file suggesting that the Respondent has or could have rights or legitimate interests in the disputed domain name.

Likewise, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name. On the contrary, the Respondent’s previous use of the disputed domain name was merely intended to benefit from Complainant’s reputation by confusing Internet users and leading them to believe that the site to which the disputed domain name relates is an official site of the Complainant. Hence, as established in section 2.5 of the WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner.” The use of the disputed domain name also does not constitute a bona fide of offering of goods or services in this case.

Given these circumstances, the Panel finds that the Complainant has made out a prima facie case and therefore, the burden of production then shifted to Respondent to refute Complainant's assertion or to demonstrate bona fide use of the disputed domain name. The Respondent has not submitted any reply to the Complaint, and the Panel is unable to consider any reasonable basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name.

The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and considers that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy contains a non-exhaustive list of factors evidencing registration and use in bad faith. Among others, it states that it is sufficient to support a finding of bad faith the fact that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 website or location or of a product or service on the website or location.

In such connection, the Complainant has submitted evidence to support that the trademark JEAN DOUSSET is widely known and was registered and used many years before the Respondent registered the disputed domain name. When registering the disputed domain name, the Respondent targeted the Complainant’s trademark JEAN DOUSSET to generate confusion among Internet users and benefit from the Complainant´s reputation.

Therefore, the Panel is satisfied that the Respondent must have been aware of the Complainant and the Complainant’s trademark JEAN DOUSSET when it registered the disputed domain name. This has been reinforced by the fact that the Complainant’s trademarks were used on the website at the disputed domain name with a copyright notice “©2022 Jean Dousset” referring to the Complainant.

In addition, as per Annex 8 to the Complaint, the disputed domain name resolved to a website also imitating the Complainant’s official website. The Panel finds that the Respondent’s use of the disputed domain name was intended to attract and mislead Internet users when searching for the Complainant’s website and to

redirect them to a website from which the Respondent derives commercial revenue by creating a likelihood
of confusion with the Complainant’s trademark.

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Additionally, the Panel has made some limited investigation on the disputed domain name and currently the disputed domain name resolves to an inactive website. As per Section 3.3 of the WIPO Overview 3.0, the fact that the disputed domain name does not resolve to an active website does not prevent a finding of bad faith under the doctrine of passive holding considering the circumstances of this case. (See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

In view of the above given reasons, the Panel finds that the Respondent has registered and used 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, <juliadouset.com>, be transferred to the Complainant.

/Iris Quadrio/ Iris Quadrio Sole Panelist Date: November 20, 2024