WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ID GROUP v. WhoisGuard Protected/WhoisGuard, Inc. / Trent Nimitz

Case No. D2021-0660

1. The Parties

The Complainant is ID GROUP, France, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is WhoisGuard Protected/WhoisGuard, Inc., Panama / Trent Nimitz, United States of America (“United States”).

2. The Domain Names and Registrar

The Disputed Domain Names <jacashop.online>, and <jacavente.shop> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2021. On March 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 4, 2021, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on March 5, 2021, 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 March 9, 2021.

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 March 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 1, 2021.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on April 12, 2021. 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, headquartered in Roubaix, France, sells ready-to-wear clothes and accessories for children as well as games and toys. The Complainant has 1,264 stores throughout the world and employs 6,000 employees in 70 countries.

The Complainant owns several trademarks registration throughout the world for the term JACADI, among others:

- JACADI United States trademark Registration No.1349513, registered on July 16, 1985;
- JACADI International trademark Registration No. 484895, registered on April 26, 1984;
- JACADI France trademark Registration No. 1642676, registered on February 7, 1991, and
- JACADI United Kingdom trademark Registration No. 1366628, registered in March 8, 1991.

In addition, the Complainant maintains Internet and retail presence for its JACADI brand through its primary website “www.jacadi.com”, as well as at <jacadi.fr> and <jacadi.us>.

The Respondent registered the Disputed Domain Names on December 29, 2020. Both Disputed Domain Names are currently inactive. However, the Complainant submitted evidence that the Dispute Domain Name <jacashop.online> resolved to a website displaying the Complainant’s logo, and using the same color scheme (baby blue and white) of the Complainant websites.

5. Parties’ Contentions

A. Complainant

The Complainant contentions can be summarized as follows:

Identical or confusingly similar

The Complainant contends that the Disputed Domains Names have contracted the Complainant’s JACADI trademark to JACA, by omitting the last two letters “d” and “i”, and then added descriptive words such as “shop” and “vente” (French word for “sale”), making the Disputed Domain Names confusingly similar to the Complainant’s JACADI trademark.

Moreover, the Complainant alleges that the Disputed Domain Name <jacashop.online> displays the Complainant’s logo.

The Complainant further alleges that the additional words “shop” and “vente” are closely linked and associated with the Complainant’s brand and trademark, which only serves to underscore and increase the confusing similarity between the Disputed Domain Names and the Complainant’s trademark.

Finally, the Complainant states that the Respondent registered the Disputed Domain Names precisely because it believed that they were confusingly similar to the Complainant’s trademark as is made obvious by the fact that one of the domain names points to a fully branded JACADI website, impersonating the Complainant.

Rights or legitimate interests

The Complainant contends that the Respondent is not sponsored by or affiliated with the Complainant in any way. Furthermore, the Complainant has not given the Respondent license, authorization or permission to use the Complainant’s JACADI trademark in any manner, including in domain names.

Moreover, the Respondent is not commonly known by the Disputed Domain Names, which evidences a lack of rights or legitimate interests. In addition, at the time of filing the Complaint, the Respondent was using a privacy WhoIs service, which evidences the lack of legitimate interests.

The Complainant further contends that JACADI is a famous trademark worldwide, and it is highly unlikely that the Respondent did not know of the Complainant’s rights in the JACADI name at the time of the registration of the Disputed Domain Names. The Respondent registered the Disputed Domain Names on December 29, 2020, which is significantly after the Complainant registered its JACADI trademark, and significantly after the first use in commerce of the JACADI trademark in 1976.

On one hand, the Disputed Domain Name <jacashop.online> directs Internet users to a website that copies and attempts to duplicate the Complainant’s official website by copying the design, color scheme and pictures found on Complainant’s website as well as the Complainant’s logo. Thus, the Disputed Domain Name is used in connection with a commercial website offering the Complainant’s products at discounted prices.

On the other hand, the Respondent is using the Disputed Domain Name <jacavente.shop> to direct Internet users to a website that resolves to a blank page and lacks content. Thus, the Complainant states that the Respondent has failed to make use of this Disputed Domain Name’s website and has not demonstrated any attempt to make legitimate use of the disputed domain name and website, which evidences a lack of rights or legitimate interests in the Disputed Domain Name.

Registration and use in bad faith

The Complainant contends that the JACADI trademarks are known internationally, with trademark registrations, across numerous countries. The Complainant has marketed and sold its goods and services using the JACADI trademark well before the Respondent’s registrations of the Disputed Domain Names.

The Complainant alleges that the Respondent has created domain names that are confusingly similar to the Complainant’s trademark, as well as its <jacadi.com> domain name. Thus, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s trademark and business.

The Complainant further states that by copying the Complainant’s official website and logo, in the Disputed Domain Name <jacashop.online>, the Respondent creates a likelihood of confusion with the Complainant and its trademark by replicating the Complainant’s official website and using the Complainant’s logo.

With respect to the Disputed Domain Name <jacavente.shop> it currently resolves to an inactive site and is not being used.

In addition, both Disputed Domain Name were registered on the same date. Thus, there is no plausible good-faith reason or logic for the Respondent to have registered the Disputed Domain Name <jacavente.shop> other than to use it in the same infringing manner as the Disputed Domain Name <jacashop.online>.

Finally, the Complainant alleges that at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which is further evidence of bad faith registration and use.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Names in this case:

(i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in the which the Complainant has rights;

(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.

A. Identical or Confusingly Similar

Based on the evidence submitted, this Panel finds that the Disputed Domain Names <jacashop.online>, and <jacavente.shop> are confusingly similar to the Complainant’s trademark JACADI. The Disputed Domain Name wholly incorporates the Complainant’s trademark.

The Panel deems that both Disputed Domain Names are confusingly similar to the JACADI trademark. The Disputed Domain Names contracted the JACADI trademark omitting the letters “d” and “i”.

Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). The addition, of the terms “shop” and “vente” does not prevent a finding of confusing similarity with the Complainant’s trademark. The fact that the Disputed Domain Name <jacashop.online> has been used for a website displaying the Complainant’s logo confirms the confusing similarity. While only one of the Disputed Domain Names has been used for such a purpose (and the other remains inactive), the Panel notes the similarities in the composition of both Disputed Domain Names (reproducing the contracted JACADI trademark) that were registered on the same date. The Panel considers that the Respondent seeks to target the Complainant’s trademark JACADI through the Disputed Domain Names, which affirms the confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7, and 1.15.

Moreover, the addition of the generic Top-Level Domain (“gTLD”) “.online” and “.shop” does not change this finding, since the gTLD is generally disregarded in such an assessment of confusingly similarity.

Therefore, this Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Names:

“(i) before any notice to you of the dispute, your use of, demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.”

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the JACADI trademark.

The Respondent has failed to show that it has acquired any rights with respect to the term “jaca” or that the Disputed Domain Names are used in connection with a bona fide offering of goods and services.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions, remaining the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests unrebutted.

As such, this Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

Both Disputed Domain Names were registered on December 29, 2020, while the Complainant’s International trademark Registration No. 484895, was registered on April 26, 1984. This is to say that the Respondent registered the Disputed Domain Names thirty-six years after the Complainant registered the JACADI trademark.

In addition, the Complainant’s submitted evidence that the Disputed Domain Name <jacashop.online>, resolved to a website, which created a likelihood of confusion with the Complainant and its trademark by replicating the Complainant’s official website and using its logo. This clearly shows that the Respondent was well aware of the Complainant’s JACADI trademark at the time of registering the Disputed Domain Names and it proceeded with the registration of the Disputed Domain Name.

The Respondent did not reply to the Complainant’s assertions. The Panel is of the view that the Respondent knew of the Complainant’s trademark and prior rights.

Paragraph 4(b)(iv) of the Policy states: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.

In the case at hand, the Respondent’s registration of a domain name confusingly similar to the Complainant’s JACADI trademark, used for selling the Complainant’s products, the absence of any documented rights or legitimate interests of the Respondent in the Disputed Domain Name and its failure to respond to the Complaint, constitutes bad faith.

Due to this conduct, it is obvious that the Respondent intentionally created a likelihood confusion with the Complainant’s trademark and websites in order to attract Internets users for its own commercial gain, as required by paragraph 4(b)(iv) of the Policy.

While the Disputed Domain Names are currently inactive, these change in the use of the Disputed Domain Name <jacashop.online> does not alter the Panel’s findings.

Finally, the Respondent has taken active steps to conceal its true identity through a privacy service. This particular conduct in the circumstances of this case is a further evidence supporting a finding of the Respondent’s bad faith.

Therefore, taking all circumstances into account and for all the above reasons, the Panel concludes that there is bad faith in the registration and use of the Disputed Domain Name.

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, <jacashop.online> and <jacavente.shop> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: April 26, 2021