WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Maje v. Whois Privacy Protection Service by onamae.com / Shinichi Taniyama, Taniyama Shinichi

Case No. D2020-0371

1. The Parties

The Complainant is Maje, France, represented by Nameshield, France.

The Respondent is Whois Privacy Protection Service by onamae.com, Japan / Shinichi Taniyama, Taniyama Shinichi, Japan.

2. The Domain Name and Registrar

The disputed domain name <majeoutlet.com> is registered with GMO Internet, Inc. d/b/a
Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2020. On February 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 19, 2020, 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 February 19, 2020 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 in English on February 20, 2020.

On February 19, 2020, the Center sent a communication to the Parties, in English and Japanese, regarding the language of the proceeding. On February 20, 2020, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 February 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2020.

The Center appointed Keiji Kondo as the sole panelist in this matter on April 1, 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 was established in 1998, and is a company specialized in ready-to-wear collections and accessories for women.

The Complainant is the owner of several International trademark registrations for MAJE, such as:

- International Trademark No. 801247, Classes 9, 14, 18, and 25, registered on November 28, 2002;

- International Trademark No. 998746, Class 3, registered on February 6, 2009;

- International Trademark No. 1370546, Classes 3, 9, 14, 18, and 25, registered on July 20, 2017.

The disputed domain name <majeoutlet.com> was registered on August 29, 2019. It resolves to a website written in Japanese and promoting branded ASUOIL hair care products.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s trademark MAJE.

The disputed domain name <majeoutlet.com> includes the Complainant’s trademark in its entirety. The addition of the term “outlet” is insufficient to distinguish between the disputed domain name and the trademark MAJE.

It is well-established that “a domain name that wholly incorporates a Complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP”.

Furthermore, the addition of the generic Top-Level Domain (“gTLD”) suffix “.com” is not sufficient to escape the finding that the disputed domain name is confusingly similar to the Complainant’s trademark MAJE, and does not change the overall impression of the designation as being connected to the trademark of the Complainant.

Past UDRP panels have held that the gTLD suffix of disputed domain names is merely a technical requirement for the operation of domain names, and as such, it is not considered on the issue of confusing similarity.

The Respondent is not known as the disputed domain name. Past UDRP panels have held that a respondent was not commonly known by a disputed domain name if the WhoIs information was not similar to the disputed domain name. Thus, the Respondent is not known as the disputed domain name.

The Respondent has no rights or legitimate interests in respect of the disputed domain name <majeoutlet.com> and he is not related in any way with the Complainant. The Complainant does not carry out any activity for, nor has any business with the Respondent.

The Complainant has granted neither license nor authorization to the Respondent to make any use of the Complainant’s trademarks, or to apply for registration of the disputed domain.

Furthermore, the disputed domain name redirects to a website written in Japanese and promoting branded ASUOIL hair care products.

The Respondent used the dispute domain name in a way that fails to confer rights and legitimate interests, as it is used to promote unrelated services.

The Respondent has no right or legitimate interest in respect of the disputed domain name <majeoutlet.com>.

The disputed domain name <majeoutlet.com> is confusingly similar to the Complainant’s trademark MAJE, and a Google search for the term “maje” results in the multiple search results linked to the Complainant.

Furthermore, the choice to add the term “outlet” to the trademark MAJE is even likely to increase the likelihood of confusion with the Complainant’s trademark, since it suggests that the disputed domain name leads to the online shop of the Complainant, selling outlet products.

The trademark MAJE has the status of a reputed trademark with a substantial and widespread reputation throughout the world.

On those facts, given the distinctiveness of the Complainant’s trademarks and reputation, it is reasonable to infer that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademarks.

Finally, the Respondent is using the disputed domain name to direct Internet users to a website promoting branded ASUOIL hair care products. The Respondent attempts to attract Internet users by creating a likelihood of confusion with the Complainant’s trademark. The Respondent is obtaining commercial gain from its use of the disputed domain name and the resolving website.

Thus, the Respondent has registered the disputed domain name <majeoutlet.com> and is using it in bad faith.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

The Complainant admits that the language of the registration agreement is Japanese, but the Complaint has been submitted in English.

On February 19, 2020, the Center sent a communication to the Parties, in English and Japanese, regarding the language of the proceeding. On February 20, 2020, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

Considering the following circumstances, the Panel, exercising its authority to determine the language of the proceeding under paragraph 11(a) of the Rules, has decided English as the language of the proceeding:

- The Complaint was filed in English;

- The Complainant is a French entity, and represented by a French firm;

- The Respondent’s address is in Japan;

- The Respondent did not comment on the language of the proceeding;

- The Respondent did not reply to the Complainant’s contentions in any way;

- The disputed domain name comprises an English term, and is formed by words in Roman characters (ASCII) and not in Japanese script; and

- Ordering the translation of the Complaint would only result in extra delay and cost for the Complainant.

6.2 Substantive Issues

A. Identical or Confusingly Similar

The disputed domain name <majeoutlet.com> includes the Complainant’s trademark in its entirety. The addition of the term “outlet” does not avoid a finding of confusing similarity between the disputed domain name and the trademark MAJE, because the English word “outlet” is usually recognized by an average person as an English noun meaning “shop” or similar business entity supplying goods and the trademark MAJE remains clearly recognizable in the disputed domain name. In addition, for an average person, the term “maje” does not have any specific meaning either in English, French, or Japanese.

It is well established that addition of the gTLD suffix “.com” should be disregarded in finding that a disputed domain name is confusingly similar to the complainant’s trademark when the complainant’s trademark is included in its entirety in the disputed domain name.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark MAJE.

B. Rights or Legitimate Interests

The Respondent’s name is “Shinichi Tateyama”, and it is in no way similar to “maje”. There is no indication that the Respondent is known by the disputed domain name.

The website directed by the disputed domain name offers hair care products under the brand name ASUOIL. Therefore, the Respondent does not make a legitimate noncommercial or fair use of the disputed domain name.

The Complainant offers ready-to-wear collections and accessories for women, and the website of the Respondent offers hair care products. Therefore, it is not unlikely that the target of the Respondent’s website is women. Indeed, the screenshot of the Respondent’s website shows a woman with long hair.

Among the Complainant’s trademark registrations, International Trademark Nos. 998746 and 1370546 include Japan as a designated country. Both of the registrations have earlier registration dates than the disputed domain name. Therefore, it is likely that the Respondent knew the Complainant trademark MAJE before registration of the disputed domain name.

Under these circumstances, the Respondent did not reply to the Complainant’s contentions, which the Panel interprets as the Respondent’s admission that the Respondent does not use the disputed domain name in connection with bona fide offering of goods or services.

In addition, the nature of the disputed domain name creates a risk of implied affiliation. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

As mentioned above, the Respondent uses the disputed domain name to direct Internet users to a website offering hair care products. On the other hand, the Complainant has an online shop selling outlet products. Because both of the Complainant and the Respondent offer products targeted to women, the disputed domain name would likely cause confusion.

Therefore, the Panel finds that the Respondent uses the disputed domain name to attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’ website.

Further, since the registration date of the disputed domain name is more than 10 years later than International Trademark No. 998746, which is the earlier of the two trademark registrations mentioned above having Japan as a designated country, the Panel finds that the Respondent registered the disputed domain name with knowledge of the Complainant’s trademark.

Accordingly, the Panel concludes that the disputed domain name was registered and has been used in bad faith.

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 <majeoutlet.com> be transferred to the Complainant.

Keiji Kondo
Sole Panelist
Date: April 15, 2020