WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
JACQUEMUS SAS v. Contact Privacy Inc. Customer 0155835558 / Rimk Le Boss Binks, Jacquemus Ventes Privees
Case No. D2019-2765
1. The Parties
Complainant is Jacquemus SAS, France, represented by DBK Law Firm, France.
Respondent is Contact Privacy Inc. Customer 0155835558, Canada / Rimk Le Boss Binks, Jacquemus Ventes Privees, France.
2. The Domain Name and Registrar
The disputed domain name <jacquemusventesprivees.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2019. On November 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 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 Complainant on November 19, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 22, 2019.
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 Respondent of the Complaint, and the proceedings commenced on November 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 16, 2019.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on December 23, 2019. 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 Jacquemus SAS, a company registered in France, created by French fashion designer Simon Porte Jacquemus, which manufactures and sells since 2013 clothing and fashion accessories under the trademark JACQUEMUS. The JACQUEMUS products are sold around the world, including in Canada.
Complainant is the owner of numerous trademark registrations around the world, such as:
- the International trademark JACQUEMUS n°1211398, protected, inter alia, in the European Union, registered on February 5, 2014, and covering goods in classes 9, 18 and 25;
- the Canadian trademark JACQUEMUS n°911208, registered on August 14, 2015 and covering goods in classes 9, 18 and 25; and
- the European Union trademark JACQUEMUS n°018080381 registered on October 18, 2019 covering goods in classes 14, 24 and 28.
Respondent registered the disputed domain name <jacquemusventesprivees.com> with Tucows, Inc. on September 30, 2019.
The disputed domain name first pointed to a website which featured photographs taken from JACQUEMUS’ official website.
Complainant sent, on October 5, 2019, a cease and desist letter to the registrant of the disputed domain name at the email address appearing in the WhoIs, and requested the registrant of the disputed domain name <jacquemusventesprivees.com> to cease all use of the disputed domain name, to transfer it to Complainant’s representative, and to cease all use of JACQUEMUS’ protected works, including the photographs of JACQUEMUS’ models which were featured on the website.
Complainant did not receive an answer to this letter, but noticed, after the letter had been sent, that the disputed domain name no longer pointed to the website towards which it originally pointed, but pointed toward a Shopify page explaining that a final step needed to be taken to set up an online store. The disputed domain name pointed after that toward an inactive website, and then again to the same Shopify page.
5. Parties’ Contentions
Complainant claims that the disputed domain name <jacquemusventesprivees.com> wholly incorporates Complainant’s JACQUEMUS trademarks and that the addition of the descriptive term “ventes privées”, which means “private sale” in French, does not prevent confusing similarity with the JACQUEMUS trademarks, but, to the contrary, enhances it, as the use of a French term directly refers to JACQUEMUS’ French origin.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name and that the disputed domain name was registered to attract the public to the website to which it pointed, which sold JACQUEMUS products, and that the public would believe that the website had been created by Complainant to sell its products at cheaper prices than the ones offered on Complainant’s main website at <jacquemus.com>. The site offered for sale Complainant’s “Chiquito” bag at a 40% discount price, even though Complainant has never offered this product at such a steep discount, which casts serious doubts on the origin and authenticity of the products offered on sale on this website.
Complainant notes that it is a common practice for a fashion designer to have a website offering for sale products at lower prices than its retail prices, often offering products from previous collections, and that the addition of the French words “ventes privées” further increases likelihood of confusion as the public would think that the disputed domain name belongs to Complainant. Therefore, the disputed domain name was registered and has been used in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name, Complainant must prove that each of the following three elements are present:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraphs 10(b) and 10(d) also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
Furthermore, paragraph 14(b) provides that “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.
Respondent did not reply to Complainant’s contentions. Respondent’s failure to respond, however, does not automatically result in a decision in favor of Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Taking the foregoing provisions into consideration the Panel finds as follows:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to consider in the first place, whether Complainant has established relevant trademark rights. The Panel is also required to examine under paragraph 4(a)(i) of the Policy whether the disputed domain name is identical or confusingly similar to Complainant’s trademarks. This test involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. See section 1.7 of the WIPO Overview 3.0.
The Panel finds that Complainant has duly shown trademark rights in the JACQUEMUS sign.
The disputed domain name <jacquemusventesprivees.com> entirely incorporates the trademark JACQUEMUS, in which Complainant has rights.
The addition of the French terms “ventes privées”, which means “private sale”, is descriptive of Complainant’s activity, since it manufactures and markets clothing and fashion accessories. The term “ventes privées” refers to a common practice in the fashion industry where manufacturers or retailers offer to selected members of the public the opportunity to buy goods at a discounted price during a “private sale”.
The Panel accepts Complainant’s contention that the use of the terms “ventes privées” does not prevent the disputed domain from being confusingly similar to the Complainant’s JACQUEMUS mark and finds that the addition of the French terms “ventes privées” to JACQUEMUS, Complainant’s registered trademark, does not avoid the confusing similarity.
Furthermore, the addition of the generic Top-Level Domain (“gTLD”) is perceived as a technical element of the domain name and is not to be taken into consideration in the evaluation of the confusing similarity. See Alabama One Call, Louisiana One Call System, Tennessee One-Call System, Inc. v. Windward Marketing Group, Inc., WIPO Case No. D2009-1243: “the addition of the gTLD “.com”, which addition is not considered in evaluating identity or confusing similarity”.
Therefore the Panel finds that the disputed domain name is confusingly similar to the JACQUEMUS trademark.
Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that a respondent has no rights or legitimate interests in the disputed domain name.
Complainant is required to establish a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If, however, Respondent fails to come forward with such relevant evidence, a Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
Complainant has made a prima facie case showing that Respondent lacks rights or legitimate interests in respect of the disputed domain name. Respondent did not answer the Complaint, and thus failed to demonstrate rights or legitimate interests.
Respondent has no rights or legitimate interests in the disputed domain name.
First, Complainant did not give any authorization or license to Respondent to make use of its trademark, including for setting up a website selling Complainant’s products. Furthermore, Respondent used the JACQUEMUS trademark and other elements referring to Complainant’s identity, including photographs of Complainant’s models without any authorization from Complainant whatsoever.
Complainant did not authorize Respondent to sell its products, and thus these goods may be counterfeit. However, even if these goods would be genuine JACQUEMUS products, it would not prevent a finding that Respondent lacks rights or legitimate interests in the disputed domain name.
Indeed, Respondent’s website did not accurately or prominently disclose Respondent’s relationship with Complainant, in particular that it is not an authorized dealer nor has any particular connection with Complainant. Previous cases under the Policy considered that the “prominent display of [Complainant’s] mark and similar content to the Complainant’s website gives the impression that the Respondent’s Website is the official website of the Complainant. Members of the public who are interested in [Complainant’s] products may visitthe Respondent’s website on the assumption that the Respondent is the Complainant itself or an authorized dealer or reseller of [Complainant’s] products. This is not the case. In the event that the Respondent is reselling genuine [Complainant] products, its use in its present form does not grant it rights or legitimate interests in the Domain Name.” See Nobis Inc. v. Darren Smile, WIPO Case No. D2014-0069.
Also, previous cases considered that “If the respondent fails to [demonstrate its rights or legitimate interests], the complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy”. See MONOPRIX v. Domain Administrator, See PrivacyGuardian.org / Ashok Chand, WIPO Case No. D2018-2635.
As Respondent did not respond to Complainant’s contentions, he did not prove his rights nor his legitimate interests in the disputed domain name.
Therefore, the Panel considers that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that the disputed domain name was registered and is being used in bad faith.
Complainant is known worldwide in the fashion industry, and its designer Simon Porte Jacquemus, has won several accolades, including being named Finalist of the 2014, LVMH Prize and winning the 2015 Special Jury LVMH Prize and the 2017 Fashion Director’s Choice Award at the Elle Style Awards.
The disputed domain name was registered after Complainant’s trademarks had been registered.
Respondent was aware of Complainant’s products when he registered the disputed domain name on September 30, 2019. This is evidenced by the fact that the website to which the disputed domain name originally pointed was selling Complainant’s bag “Chiquito” at a discounted price, without Complainant’s authorization, used the JACQUEMUS trademark, and reproduced without authorization photographs which had been published on Complainant’s official website.
Respondent therefore knew Complainant, and had registered the disputed domain name, which entirely reproduces the JACQUEMUS trademark, to create a likelihood of confusion with Complainant’s trademarks and thus as to the source of the website.
Therefore, it appears evident that Respondent knew about Complainant’s existence when he registered the disputed domain name and that he precisely registered the disputed domain name in order to benefit from Complainant’s reputation. As such, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s JACQUEMUS mark and thus as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product on Respondent’s website. See section 3.1 of the WIPO Overview 3.0.
The Panel finds that Respondent registered the disputed domain name in bad faith.
Respondent has registered the disputed domain name in bad faith to benefit from Complainant’s notoriety by selling Complainant’s goods at a discounted price without authorization, which cannot be a use in good faith, taking into account all the circumstances of the case.
Respondent has done nothing to identify himself as independent from Complainant, but to the contrary, as shown by Complainant, used photographs of Complainant’s fashion shows on its website, along with a photograph and biography of the designer Simon Porte Jacquemus, which, in the view of the Panel, was made to indicate a strong and close association with Complainant. This constitutes bad faith use under the Policy. See Netwizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (“registration and continued use of the contested domain name for re-directing Internet users, i.e. particularly customers and potential customers of the Complainant, from the Complainant’s website to the website of […] a company which directly competes with the Complainant, constitutes bad faith registration and use”).
The disputed domain name started pointing to an inactive page after Complainant sent a cease and desist letter to Respondent, and now points towards a Shopify page stating “Only one step left! To finish setting up your new web address, go to your domain settings, click “Connect existing domain”, and enter: jacquemusventesprivees.com”, which further supports a finding of bad faith. See section 3.2.1 of WIPO Overview 3.0.
The current passive holding of the disputed domain name would not change the Panel’s findings above. Passive holding can, in certain circumstances, constitute a domain name being used in bad faith. Passive holding of a domain name may constitute bad faith if the respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name. See Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Such is the case here, as Respondent has registered the disputed domain name anonymously. Use of privacy and proxy registration services can be legitimate, but “the circumstances in which such services are used, including whether the respondent is operating a commercial and trademark-abusive website, can however impact a panel’s assessment of bad faith”. See section 3.6 of the WIPO Overview 3.0.
The Panel finds that Respondent is using the disputed domain name in bad faith and is not making a legitimate non-commercial or fair use of the disputed domain name.
Complainant has therefore satisfied paragraph 4(a)(iii) of the Policy.
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 <jacquemusventesprivees.com> be transferred to Complainant.
Date: January 6, 2020