Jott Market & Distribution v Client Care, Web Commerce Communications

WIPO Case No. D2024-0988

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Jott Market & Distribution v. Client Care, Web Commerce Communications
Limited

Case No. D2024-0988

1. The Parties

Complainant is Jott Market & Distribution, France, represented by Fidal, France.

Respondent is Client Care, Web Commerce Communications Limited, Malaysia.

2. The Domain Names and Registrar

The disputed domain names <jottbrasil.com>, <jottchile.com>, <jott-israel.com>, <jottjp.com>,
<jottluxembourg.com>, and <jottsverige.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 March 6, 2024.
On March 6, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain names. On March 7, 2024, 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 (Unknown) and contact information in the Complaint. The
Center sent an email communication to Complainant on March 14, 2024, providing the registrant and contact
information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint.

Complainant filed an amendment to the Complaint on March 18, 2024.

The Center verified that the Complaint together with the amendment to the 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 Respondent of the Complaint, and the proceedings commenced on March 19, 2024. In accordance with the Rules, paragraph 5, the due date for Response was April 8, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 12, 2024.

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The Center appointed Timothy D. Casey as the sole panelist in this matter on April 29, 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

Complainant is a French clothing company, selling ready-to-wear clothing for men, women and children, specializing in the design of clothing and particularly down jackets.

Complainant has registrations for numerous trademarks around the world for “JOTT” and JOTT designs (the

“JOTT Marks”), including the following:

Mark	Jurisdiction	Class(es)	Registration No.	Registration Date
JOTT	International Registration	18, 25, 35	1712870	October 10, 2022
JOTT Design	International Registration	18, 25, 35	1712869	October 10, 2022
JOTT Design	International Registration	18, 25, 35	1488003	March 22, 2019

Complainant is the owner of numerous domains, including <jott.com> and additional domains that combine JOTT with country names. The disputed domain names were all registered on August 10, 2023. At the time of filing the Complaint, the disputed domain names resolved to websites appearing to offer Complainant’s branded products for sale and replicating the trademarks, images, text and look and feel of Complainant’s website.

5. Parties’ Contentions

A. Complainant

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

Notably, Complainant contends it has rights in the JOTT Marks as evidenced by the facts above and as
articulated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition,
(“WIPO Overview 3.0”), section 1.2.1. Complainant contends, ignoring the generic top-level domain, the
disputed domain names are confusingly similar to the JOTT Marks in that they each reproduce the JOTT
Marks at the beginning of each domain name followed by a generic term referring to a country.

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names. To Complainant’s knowledge, Respondent is not commonly known under any of the disputed domain names nor offering a bona fide offer of goods or services. Complainant has not authorized, licensed, permitted or otherwise consented to Respondent’s use of JOTT Marks. Complainant contends that Respondent’s usage of the disputed domain names uses Complainant’s identity, reproduces the JOTT Marks, takes ownership of Complainant’s activities, and seeks to confuse Internet users into thinking they are on Complainant’s website or an affiliated one where they may buy Complainant’s products.

Complainant contends the disputed domain names were registered and have been used in bad faith by Respondent. Respondent’s websites reproduce the trademarks, images, text and look and feel of Complainant’s website. Complainant contends Respondent’s websites offer counterfeit goods. Given the global reach of Complainant’s goods associated with the JOTT Marks and Complainant’s established rights in the JOTT Marks years prior to registration of the disputed domain names indicate that Respondent only registered the disputed domain names to attract Internet users for potential gain based on their confusion. Respondent’s use of the disputed domain names in association with the noted websites seeks to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion, is further evidence of bad faith.

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B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

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

Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

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.

The entirety of the mark is reproduced within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms - here, terms representing countries, 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.

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 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.

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

Panels have held that the use of a domain name for illegal activity - here, claimed sale of counterfeit goods
and impersonation/passing off, can never confer rights or legitimate interests on a respondent.

WIPO Overview 3.0, section 2.13.1.

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

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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.

In the present case, the Panel notes that Respondent’s registration of very similar domain names on the same day, each primarily featuring the JOTT Marks and generic representations of countries, many of which Complainant operates within, is evidence of the bad faith registration. The Panel also notes that Respondent’s use of the disputed domain names on websites that replicate Complainant’s website indicates that Respondent is disrupting the business of a competitor and intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s marks.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have held that the use of a domain name for illegal activity – here, claimed sale of counterfeit goods and impersonation/passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds Respondent’s registration and use of the disputed domain names constitutes bad

faith under the Policy.

The Panel finds that Complainant has established the third element 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 names <jottbrasil.com>, <jottchile.com>, <jott-israel.com>, <jottjp.com>,

<jottluxembourg.com>, and <jottsverige.com> be transferred to Complainant.

/Timothy D. Casey/
Timothy D. Casey
Sole Panelist
Date: May 16, 2024