Jacquemus SAS v Privacy Service Provided by Withheld for Privacy ehf /

WIPO Case No. D2022-1396

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Jacquemus SAS v. Privacy Service Provided by Withheld for Privacy ehf /
Name Redacted

Case No. D2022-1396

1. The Parties

The Complainant is Jacquemus SAS, France, represented by DBK - Société d’avocats, France.

The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Name Redacted[1].

[1] The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential

2. The Domain Name and Registrar

The disputed domain name <jacquemuss.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2022. On April 20, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 2022, 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 April 25, 2022 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 May 2, 2022.

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”).

page 2

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 4, 2022. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2022.

The Center appointed Nayiri Boghossian as the sole panelist in this matter on May 31, 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 Background

The Complainant is a fashion company which sells its products under the trademark JACQUEMUS. The

Complainant owns trademark registrations for JACQUEMUS such as:

- French registration No. 4057016 registered on December 24, 2013;
- International registration No. 1211398 registered on February 5, 2014; and
- International registration No. 1513829 registered on November 19, 2019

The Complainant has registered in 2010 the domain name <jacquemus.com>, which is its official website for selling its products.

The disputed domain name was registered on January 25, 2022. An email address is created linked to the disputed domain name which according to the Complainant is used for phishing purposes as fake invoices have been sent to the clients of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. The trademark of the Complainant is well known in the fashion industry. The disputed domain incorporates the Complainant’s trademark adding to it the letter “s”. This is an act of typosquatting. The generic Top-Level-Domain (“gTLD”) “.com” should typically be ignored.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant did not authorize the Respondent to use its trademark in the disputed domain name. There is no legitimate noncommercial or fair use as the disputed domain name is a case of typosquatting and leads to an inactive website.

The Complainant contends that the disputed domain name is registered and is being used in bad faith. The
registration of the Complainant’s trademark predates the registration of the disputed domain name and the
trademark of the Complainant is well known. The Respondent must have been aware of the Complainant’s
trademark. Therefore, the registration of the disputed domain name has been done in order to generate a
likelihood of confusion with the Complainant’s trademark. It has been held by prior UDRP panels that
passive registration is bad faith use in certain circumstances, which apply to the current case such as the
strong reputation of the trademark, the absence of evidence of any actual or contemplated good faith use,
the masking of the registrant and typosquatting. Bad faith use is demonstrated by the MX activation which
allows creating an email address and fake invoices were sent to customers of the Complainant. This proves
that the disputed domain name is registered for phishing or other fraudulent purposes. A further evidence on
bad faith is the use of privacy services.

page 3

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns trademark registrations for JACQUEMUS. The Panel is satisfied that the
Complainant has established its ownership of the trademark JACQUEMUS.

The disputed domain name incorporates the Complainant’s trademark JACQUEMUS in its entirety adding to standard registration requirement.
it the letter “s”. This is a typical case of typosquatting, which is designed to confuse users (Redbox
Automated Retail, LLC d/b/a Redbox v. Milen Radumilo, WIPO Case No. D2019-1600). The generic Top-

Consequently, the Panel finds that the disputed domain name is identical or confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent. In the instant case, the Complainant asserts that the Respondent is not authorized by the Complainant to use its trademark. Therefore, the Complainant has established a prima facie case and the burden of production shifts to the Respondent to show that it has rights or legitimate interests.

The Respondent has not provided any evidence to show that it has any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent must have been aware of the Complainant’s trademark as it is a well-known trademark.
This is further confirmed by the fact that the email address used by the Respondent according to the
Complainant includes the word “comptabilite”. The word “comptabilite” is in French and means accounting.
This suggests that the Respondent is in fact aware that the Complainant is a French company.

As per the Complainant, an email server is attached to the disputed domain name, which indicates that the Respondent might have plans for phishing or for scams. The Complainant claims that the disputed domain name has been used for phishing purposes as fake invoices have been sent to the clients of the

Complainant. While the Panel would have expected further evidence on such submissions, the Panel has no reason to doubt the allegation made by the Complainant, particularly as the said allegation was reflected in an email sent by the representative of the Complainant on April 14, 2022.

In any case, it is the Panel’s view that there is sufficient evidence to demonstrate bad faith registration and
use;
1. The disputed domain name represents a case of typosquatting, which may be an indication of bad faith
(ESPN, Inc v. XC2, WIPO Case No. D2005-0444).
2. The Respondent was aware of the Complainant’s trademark as it is a well-known trademark.
3. A cease and desist letter was sent by the Complainant to which no response was received.
4. The use of a privacy shield service is under the circumstances a further indication of bad faith.
5. The Respondent has impersonated the identity of one of Complainant’s employees to register the

page 4

disputed domain name.
6. The Respondent has added only one letter to the Complainant’s trademark in order to confuse Internet

users and to benefit from typos.

Accordingly, the Panel finds that the Complainant has satisfied 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 <jacquemuss.com> be transferred to the Complainant.

/Nayiri Boghossian/
Nayiri Boghossian
Sole Panelist
Date: June 14, 2022

identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this
decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent.
The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated
Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST
12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.