WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jacquemus SAS v. Contact Privacy Inc. Customer 1245862480 / Jacob Inch

Case No. D2019-3144

1. The Parties

The Complainant is Jacquemus SAS, France, represented by DBK – Law Firm, France.

The Respondent is Contact Privacy Inc. Customer 1245862480, Canada / Jacob Inch, France.

2. The Domain Name and Registrar

The disputed domain name <jacquemusjewelry.com> is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2019. On December 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2019, 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 27, 2019, 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 30, 2019.

The Center sent an email communication in English and Italian to the parties on December 27, 2019 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the Registration Agreement for the disputed domain name is Italian. The Complainant submitted a request for English to be the language of the proceeding on January 7, 2020. The Respondent did not comment on the language of the proceeding. The Center confirmed that the proceeding has been conducted in dual languages on February 12, 2020.

The Center verified that the Complaint together with 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 January 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2020.

The Center appointed Benjamin Fontaine as the sole panelist in this matter on February 12, 2020. 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 Jacquemus SAS, a French company with a domicile in Paris. The company was founded by a young fashion designer, Simon Porte Jacquemus.

Since 2013, the Complainant uses the trade mark JACQUEMUS to identify its collections of high-end clothing and fashion accessories (headgear, bags, sunglasses). The evidence filed with the Complaint indicates that Simon Porte Jacquemus has a growing reputation in the fashion sector. He is the subject of a number of articles in well-known fashion magazines such as Vogue or Elle. His creations, which bear the trade mark JACQUEMUS, are used by relevant celebrities, such as Beyonce, Penelope Cruz, Adriana Grande, etc., as well as by relevant influencers. His creations also appear regularly in numerous fashion magazines worldwide.

For the purpose of the Complaint, the Complainant relies in particular on the following trade mark registrations:

- International trade mark JACQUEMUS (word) No. 1211398 of February 5, 2014, with effect in particular in the European Union, in classes 9, 18, 25;

- European Union trade mark JACQUEMUS (word) No. 018160194 of October 18, 2017 in class 14;

- European Union trade mark JACQUEMUS (word) No. 018080381 of October 18, 2019 in classes 14, 24, 28.

The Complainant also owns the domain name <jacquemus.com>, which hosts its website.

The disputed domain name <jacquemusjewelry.com> was registered by the Respondent on November 12, 2019, through a privacy shield service. After the Complaint was filed, the Registrar notified to the Center that the disputed domain name was actually held by an individual with an alleged address in Paris, France.

The disputed domain name is not active.

5. Parties’ Contentions

A. Complainant

The arguments of the Complainant on the three elements of the Policy can be summarized as follows:

First, the Complainant claims that the trade mark JACQUEMUS is well-known throughout the world, notably in the fashion industry. This trade mark is wholly incorporated in the disputed domain name, with the mere addition of the descriptive term “jewelry”. On that basis, the Complainant indicates that the disputed domain name is confusingly similar to its trade mark JACQUEMUS.

Second, the Complainant asserts that it has never authorized the Respondent to register and/or use any domain name incorporating the trade mark JACQUEMUS. Besides, it has not granted any license, nor any authorization to use these trade marks. It also adds that the disputed domain name is not active, and therefore no bona fide legitimate use can be inferred.

Third, on the issue of bad faith, the Complainant has developed separate arguments on the registration and use of the disputed domain name <jacquemusjewelry.com>. On the bad faith registration, it claims that the Respondent knew of the Complainant and its trade mark rights when he registered the disputed domain name. It adds that “the choice of the Litigious Domain Name does not seem to be a mere coincidence, but on the contrary seems to have been done on purpose to generate a likelihood of confusion with the Domain Name and the Trade marks”. On the bad faith use, the Complainant relies on the Telstra doctrine of bad faith passive holding (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). It argues in particular that the trade marks JACQUEMUS have a strong reputation, that there is no evidence of any actual or contemplated good faith use of the disputed domain name, and that “the true identity of the registrant” was not provided.

B. Respondent

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

6. Language of the Proceeding

In accordance with paragraph 11(a) of the Rules, “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. In this matter the default language of the proceeding should be Italian, as the language of the Registration Agreement is in that language. The Complainant, however, filed its Complaint in English and asked for English to be the language of the proceeding. The Panel confirms that this request should be granted, in view of the following circumstances: first, the disputed domain name <jacquemusjewelry.com> contains the English term, “jewelry”, which suggests that the Respondent is familiar with this language. Second, the Respondent received communications and notifications in both English and Italian from the Center at all stages of the proceeding, and failed to react in any way. He could have objected to the use of English as the language of the proceeding, but chose not to. Finally, requiring a translation of the Complaint and its annexes is a real burden for the Complainant and will cause unwarranted delay in this case. In light of the above, the Panel shall proceed to render its Decision in English.

7. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:

(i) the disputed domain name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain name is confusingly similar to a trade mark or a service mark in which it has rights.

The Complainant owns several trade mark rights over the sign JACQUEMUS. These trade marks are fully reproduced in the disputed domain name <jacquemusjewelry.com>. The addition of the element “jewelry” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview3.0”).

Therefore, the first element of the Policy is satisfied.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

In this case, the Complainant has sufficiently argued that the Respondent is not commonly known by the disputed domain name, and has not been authorized by the Complainant to register and use the disputed domain name.

Besides, to date the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services.

Accordingly and absent specific allegations of the Respondent, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In order to prevail under the third element of paragraph 4(a) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:

(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or

(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, [the 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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.

Regarding, first, the registration of the disputed domain name in bad faith: the Panel has no doubt that the Respondent had specifically in mind the Complainant’s trade mark JACQUEMUS when it registered the disputed domain name. It is apparent from the evidence in the file that the business initiated by the young fashion designer Simon Porte Jacquemus is successful and is developing well. Therefore, the Panel finds that the Complainant’s trade mark JACQUEMUS enjoys a growing reputation, which concerns more specifically the public interested in the fashion sector. Also, the Respondent is domiciled in Paris, which is one of the capitals of fashion and where the Complainant has its domicile and main place of activity. Finally, the addition of the word “jewelry” confirms that the Respondent specifically targeted the Complainant when registering the disputed domain name <jacquemusjewelry.com>. While there is no evidence on record showing use of the trade mark JAQUEMUS for jewelry, it is of course standard practice to include such products as accessories for fashion brands. The public would expect any high-end fashion brand to include jewelry in its offers. The Panel keyed-in the words “jacquemus jewelry” in a popular search engine, and obtained many results and offers directly linked to the Complainant and its trade mark JACQUEMUS. Therefore, the Panel, finds that the Respondent targeted the Complainant’s trade mark JACQUEMUS, with the objective of creating a likelihood of confusion.

Regarding, second, the use of the disputed domain name in bad faith: as indicated in section 3.3 of the WIPO Overview 3.0, the lack of active use of the domain name does not as such prevent a finding of bad faith under the doctrine of passive holding. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include the complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa.

The circumstances foreseen above are met here: first, and as explained above, the Complainant’s trade mark is successful and enjoys a growing reputation, particularly in the fashion industry. Second, the Respondent has failed to file a Response to the Complaint. Third, the Respondent has taken active steps to conceal his identity: first by using a privacy shield service, and second by providing an incomplete postal address. Therefore, the disputed domain name has been used in bad faith.

Finally, the Panel does not conceive any possible use in good faith of the disputed domain name. Much to the contrary, the Respondent specifically targeted the Complainant’s business, by associating its trade mark JACQUEMUS to a word which describes one of its fields of activities.

Accordingly, the third criteria element set out in paragraph 4(a) of the Policy is also satisfied.

8. 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 <jacquemusjewelry.com> be transferred to the Complainant.

Benjamin Fontaine
Sole Panelist
Date: February 26, 2020