Jacquemus SAS v Client Care, Web Commerce Communications Limited
WIPO Case No. D2023-4727
•29-01-2024
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Jacquemus SAS v. Client Care, Web Commerce Communications Limited
Case No. D2023-4727
1. The Parties
The Complainant is Jacquemus SAS, France, represented by DBK Law Firm, France.
The Respondent is Client Care, Web Commerce Communications Limited, Malaysia.
2. The Domain Names and Registrar
The disputed domain names <jacquemus-argentina.com>, <jacquemus-australia.com>,
<jacquemusaustria.com>, <jacquemusbeige.com>, <jacquemus-brasil.com>, <jacquemus-canada.com>,
<jacquemus-chile.com>, <jacquemus-colombia.com>, <jacquemus-danmark.com>, <jacquemusdubai.com>,
<jacquemusespana.com>, <jacquemus-greece.com>, <jacquemus-hrvatska.com>,
<jacquemus-hungary.com>, <jacquemusindia.com>, <jacquemusindonesia.com>,
<jacquemus-ireland.com>, <jacquemus-italia.com>, <jacquemus-japan.com>, <jacquemusmalaysia.com>,
<jacquemus-mexico.com>,<jacquemus-nederland.com>, <jacquemus-norge.com>, <jacquemus-nz.com>,
<jacquemus-paris.com>,<jacquemus-peru.com>, <jacquemusphilippines.com>, <jacquemus-polska.com>,
<jacquemus-portugal.com>, <jacquemus-romania.com>, <jacquemussaudiarabia.com>,
<jacquemus-schweiz.com>, <jacquemussingapore.com>, <jacquemus-slovenija.com>,
<jacquemus-srbija.com>, <jacquemus-suomi.com>, <jacquemusturkiye.com>, <jacquemus-uae.com>,
<jacquemus-uk.com>, and <jacquemususa.com> are registered with Alibaba.com Singapore E-Commerce
Private Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2023. On November 16, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 17, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Registrant not identified) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 20, 2023, 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 23, 2023.
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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 November 30, 2023. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2023.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on January 18, 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 French company that manufactures and markets clothing ang fashion accessories
under the JACQUEMUS trademark since 2013, coined after the name of the designer Simon Porte
JACQUEMUS.
The Complainant is the owner of the following, amongst other, trademark registrations:
- French Trademark Registration No. 4057016 for the word mark JACQUEMUS, registered on April 18, 2014,
in classes 9, 18, and 25;
- International Trademark Registration No. 1211398 for the word mark JACQUEMUS, registered on February
5, 2014, in classes 9, 18, and 25;
- European Union Trademark Registration No. 018080381 for the word mark JACQUEMUS, registered on
October 18, 2019, in classes 14, 24, and 28; and
- International Trademark Registration No. 1513829 for the word mark JACQUEMUS, registered on
November 19, 2019, in classes 14, 24, and 28.
The disputed domain names were registered on and are presently used as follows:
Registration
Disputed Domain Name Date Present Use September 6, <jacquemus-argentina.com> 2023 Website blocked due to fraud risk. September 6, <jacquemus-australia.com> 2023 Website blocked due to fraud risk. September 6, <jacquemusaustria.com> 2023 Website blocked due to fraud risk. September 6, <jacquemusbeige.com> 2023 Website blocked due to fraud risk. <jacquemus-brasil.com> September 6, Online shop purportedly offering the 2023 Complainant's products at discounted
prices.September 6, <jacquemus-canada.com> 2023 Website blocked due to fraud risk. September 6, <jacquemus-chile.com> 2023 Website blocked due to fraud risk.
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September 6,
<jacquemus-colombia.com> 2023 Website blocked due to fraud risk. September 6, <jacquemus-danmark.com> 2023 Website blocked due to fraud risk. September 6, <jacquemusdubai.com> 2023 Website blocked due to fraud risk. September 6, <jacquemusespana.com> 2023 Website blocked due to fraud risk. September 6, <jacquemus-greece.com> 2023 Website blocked due to fraud risk. September 6, <jacquemus-hrvatska.com> 2023 Website blocked due to fraud risk. September 6, <jacquemus-hungary.com> 2023 Website blocked due to fraud risk. September 6, <jacquemusindia.com> 2023 Website blocked due to fraud risk. September 6, <jacquemusindonesia.com> 2023 Website blocked due to fraud risk. September 6, <jacquemus-ireland.com> 2023 Website blocked due to fraud risk. September 6, <jacquemus-italia.com> 2023 Website blocked due to fraud risk. September 6, <jacquemus-japan.com> 2023 Website blocked due to fraud risk. September 6, <jacquemusmalaysia.com> 2023 Website blocked due to fraud risk. September 6, <jacquemus-mexico.com> 2023 Website blocked due to fraud risk. September 6, <jacquemus-nederland.com> 2023 Website blocked due to fraud risk. September 6, <jacquemus-norge.com> 2023 Website blocked due to fraud risk. September 6, <jacquemus-nz.com> 2023 Website blocked due to fraud risk. September 6, <jacquemus-paris.com> 2023 Website blocked due to fraud risk. September 6, <jacquemus-peru.com> 2023 Website blocked due to fraud risk. September 6, <jacquemusphilippines.com> 2023 Website blocked due to fraud risk. September 6, <jacquemus-polska.com> 2023 Website blocked due to fraud risk. September 6, <jacquemus-portugal.com> 2023 Website blocked due to fraud risk. September 6, <jacquemus-romania.com> 2023 Website blocked due to fraud risk. September 6, <jacquemussaudiarabia.com> 2023 Website blocked due to fraud risk. September 6, <jacquemus-schweiz.com> 2023 Website blocked due to fraud risk. September 6, <jacquemussingapore.com> 2023 Website blocked due to fraud risk. September 6, <jacquemus-slovenija.com> 2023 Website blocked due to fraud risk.
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September 6,
<jacquemus-srbija.com> 2023 Website blocked due to fraud risk. September 6, <jacquemus-suomi.com> 2023 Website blocked due to fraud risk. September 6, <jacquemusturkiye.com> 2023 Website blocked due to fraud risk. September 6, <jacquemus-uae.com> 2023 Website blocked due to fraud risk. September 6, <jacquemus-uk.com> 2023 Website blocked due to fraud risk. September 6, <jacquemususa.com> 2023 Website blocked due to fraud risk.
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 names.
Notably, the Complainant asserts to be known worldwide in the fashion industry, especially due to the quality and originality of its creations, being its designer one of the most important designers in the fashion industry and its products sold in 50 different countries around the world.
According to the Complainant, all of the disputed domain names incorporate the Complainants’ well-known trademark in its entirety; the addition of geographical terms not preventing a finding of confusing similarity thereof. Past UDRP panels have already found the Complainant’s trademark well-known (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; Jacquemus SAS
v. Perklis Georgopoulos, The Project Garments, WIPO Case No. DEU2020-0024; and Jacquemus SAS v.
Peng Li, WIPO Case No. D2021-3296).
As to the absence of rights or legitimate interests, the Complainant argues that it has never authorized the Respondent to register and/or use any disputed domain name incorporating the JACQUEMUS trademark, not having the Complainant granted any license or authorization to use its trademark, including in domain names; also not having the Respondent made a legitimate noncommercial or a fair use of the disputed
domain names.
In what it relates to the bad faith registration and use of the disputed domain names, the Complainant asserts to have acquired such extensive and worldwide reputation that the registration of the disputed domain names per se should be considered in bad faith, what is further corroborated by the use made of the
disputed domain names in connection with the purported offer of the Complainant's products at discounted
prices.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which the Complainant must meet in order for the Panel to order the transfer of the disputed domain names:
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(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the
Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain names.
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 3.0, section 1.7.
Based on the available record, the Panel finds the Complainants have shown rights in respect of a trademark
or service mark for the purposes of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP
Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
The Panel finds the entirety of the mark is reproduced within the disputed domain names. Accordingly, the
disputed domain names are identical or confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.
While the addition of hyphens and other terms (“argentina”, “australia”, “austria”, “begie”, “brasil”, “canada”,
“chile”, “colombia”, “danmark”, “dubai”, “espana”, “greece”, “hrvatska”, “hungary”, “india”, “indonesia”,
“ireland”, “italia”, “japan”, “malaysia”, “mexico”, “nederland”, “norge”, “nz”, “paris”, “peru”, “philippines”,
“polska”, “portugal”, “romania”, “saudiarabia”, “schweiz”, “singapore”, “slovenija”, “srbija”, “suomi”, “turkiye”,
“uae”, “uk”, and “usa”) may bear on assessment of the second and third elements, the Panel finds the
addition of such terms does not prevent a finding of confusing similarity between the disputed domain names
and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.
Based on the available record, 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 a respondent may demonstrate rights or legitimate interests in a disputed domain name.
While 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 often impossible 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. 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.
Paragraph 4(c) of the Policy provides a nonexclusive list of circumstances that may indicate the
Respondent’s rights to or legitimate interests in the disputed domain names. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the
disputed domain names or a name corresponding to the disputed domain names in connection with a bona
fide offering of goods or services; or
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(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the
disputed domain names, 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 names, without
intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at
issue.
The Respondent, in not formally 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 to or legitimate interests in the disputed domain names. This entitles the Panel to draw any such 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 a prima facie case against the Respondent.
In that sense, the Panel notes that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, indeed stating that the Respondent is in no way affiliated with the Complainant and has never authorized the Respondent to register and/or use any disputed domain name incorporating the JACQUEMUS trademark, not having the Complainant granted any license or authorization to use its trademark, including in disputed domain names.
Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain names or the absence of any trademarks registered by the Respondent corresponding to the disputed domain names, corroborates the indication of an absence of rights or legitimate interests in the disputed domain names.
The present use of the disputed domain names in connection with what appear to be fraudulent websites as well as purportedly offering the Complainant’s products at discounted prices cannot characterize under this Panel’s view a bona fide offering of goods or services.
Therefore, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names. The second element of the Policy has also been met.
C. Registered and Used in Bad Faith
The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
The registration and use of the disputed domain names in bad faith can be found in the present case in view of the following circumstances:
(i) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain names, not having submitted a response;
(ii) the well-known status of the Complainant’s trademark;
(iii) the nature of the disputed domain names (reproducing the entirety of the Complainant’s trademark), and the Respondent’s likely intention to unduly profit from the value of the Complainant’s trademark, suggest rather a clear indication of the Respondent’s registration and holding of the disputed domain names in
bad faith, with the implausibility of any good faith use to which the disputed domain names may be put;
The Panel finds that the Complainant has established the third element of the Policy.
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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 names <jacquemus-argentina.com>, <jacquemus-australia.com>,
<jacquemusaustria.com>, <jacquemusbeige.com>, <jacquemus-brasil.com>, <jacquemus-canada.com>,
<jacquemus-chile.com>, <jacquemus-colombia.com>, <jacquemus-danmark.com>, <jacquemusdubai.com>,
<jacquemusespana.com>, <jacquemus-greece.com>, <jacquemus-hrvatska.com>,
<jacquemus-hungary.com>, <jacquemusindia.com>, <jacquemusindonesia.com>,
<jacquemus-ireland.com>, <jacquemus-italia.com>, <jacquemus-japan.com>, <jacquemusmalaysia.com>,
<jacquemus-mexico.com>, <jacquemus-nederland.com>, <jacquemus-norge.com>, <jacquemus-nz.com>,
<jacquemus-paris.com>,<jacquemus-peru.com>, <jacquemusphilippines.com>, <jacquemus-polska.com>,
<jacquemus-portugal.com>, <jacquemus-romania.com>, <jacquemussaudiarabia.com>,
<jacquemus-schweiz.com>, <jacquemussingapore.com>, <jacquemus-slovenija.com>,
<jacquemus-srbija.com>, <jacquemus-suomi.com>, <jacquemusturkiye.com>, <jacquemus-uae.com>,
<jacquemus-uk.com>, and <jacquemususa.com> be transferred to the Complainant.
/Wilson Pinheiro Jabur/
Wilson Pinheiro Jabur
Sole Panelist
Date: January 29, 2024
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