Nudie Jeans Co AB v Web Commerce Communications Limited, Client Care,; Duran Jacqueline, Nil

WIPO Case No. D2024-0837

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Nudie Jeans Co AB v. Web Commerce Communications Limited, Client Care,
Duran Jacqueline, NIL

Case No. D2024-0837

1. The Parties

The Complainant is Nudie Jeans Co AB, Sweden, represented by CSC Digital Brand Services Group AB,

Sweden.

The Respondent is Web Commerce Communications Limited, Client Care, Malaysia, and Duran Jacqueline,

NIL, United States of America (“Unites States”).

2. The Domain Names and Registrars

The disputed domain names <nudiejeansamsterdam.com>, <nudiejeansaustraliasale.com>,
<nudiejeansbelgie.com>, <nudiejeans-canada.com>, <nudiejeans-danmark.com>,
<nudiejeans-deutschland.com>, <nudiejeanshelsinki.com>, <nudiejeans-india.com>,
<nudiejeans-ireland.com>, <nudiejeans-israel.com>, <nudiejeans-italia.com>, <nudiejeans-japan.com>,
<nudiejeansmadrid.com>, <nudiejeans-malaysia.com>, <nudiejeans-mexico.com>, <nudiejeans-nz.com>,
<nudiejeans-oslo.com>, <nudiejeansparis.com>, <nudiejeans-philippines.com>, <nudiejeans-polska.com>,
<nudiejeans-singapore.com>, <nudiejeans-southafrica.com>, <nudiejeanssverigeo.com>,
<nudiejeans-turkiye.com>, <nudiejeans-uae.com>, <nudiejeans-uk.com>, <nudiejeans-usa.com>,
<nudiejeanswien.com>, <nudiejeanszurich.com>, <nudiejeansae.com>, <nudiejeansdk.com>,
<nudiejeansgrimtimno.com>, <nudiejeansie.com>, <nudiejeansleandeannl.com>,
<nudiejeansmalaysiaprice.com>, <nudiejeanspricein.com>, <nudiejeanspricephilippines.com>,
<nudiejeanssaleaustralia.com>, <nudiejeanssalede.com>, <nudiejeanssaleus.com>,
<nudiejeanssaleza.com>, <nudiejeansturkey.com>, <nudiejeansuksale.com>, <nudiejeansil.com>,
<nudiejeans-suomi.com>, <nudiejeans-belgie.com>, <nudiejeansjapanstore.com>,
<nudiejeanssalecanada.com> are registered with Alibaba.com Singapore E-Commerce Private Limited. The

disputed domain name <nudiejeansusa.com> is registered with Gname.com Pte. Ltd. (the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23,
2024. On February 26, 2024, the Center transmitted by email to the Registrars a request for registrar
verification in connection with the disputed domain names. On February 27, 2024, the Registrars 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 (Kuala Lumpur and Redacted for Privacy) and
contact information in the Complaint.

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The Complainant filed an amended Complaint on on February 28, 2024, requesting the addition of the disputed domain names <nudiejeansil.com>, <nudiejeans-suomi.com>, <nudiejeans-belgie.com>, <nudiejeansjapanstore.com>, <nudiejeanssalecanada.com>. On February 29, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the additional disputed domain names. On March 1, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the additional disputed domain names.

The Center sent an email communication to the Complainant on March 4, 2024, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainant to either file separate complaints for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed a second amended Complaint on March 7, 2024.

The Center verified that the Complaint together with the amended Complaint and the second 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 8, 2024. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2024. The Respondent sent “automatic reply” email communications to the Center on March 4, 8, and April 2, 2024.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on April 4, 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 to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant produces denim products in an environmental-friendly way. It specializes in jeans, jackets, dresses, and accessories. The Complainant has 29 shops in 24 cities around the world, eight repair partners, and produces their clothing and accessories across eight countries. In 2022, sales amounted to SEK 493.1 million, and the Complainant employed 241 people. The Complainant is present in more than 50 markets.

The Complainant is the owner of trademark registrations for NUDIE and NUDIE JEANS across various
jurisdictions, such as European Union trademark number 002256998 for NUDIE, registered on December
18, 2002. The Complainant also owns numerous domain names, including <nudiejeans.com>. The
Complainant is also active on social media.

The disputed domain names have been registered between December 26, 2023, and February 26, 2024. At the time of filing the Complaint, and at the time of drafting the Decision, the disputed domain names that did resolve, resolved to websites that prominently featured Complainant’s official logo and copyrighted images, and offered for sale NUDIE JEANS branded products, as well as inviting visitors to register for accounts by providing contact details.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain names are under common control. All 49 disputed domain names follow the same composition and were registered within a two-months period. Most disputed

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domain names use the same name server, except for five disputed domain names that use another name server. One of the registrants, Client Care, Web Commerce Communications Limited, has been named in numerous UDRP decisions involving multiple respondents. The WhoIs records for the other registrant,

Duran Jacqueline, NIL, contains false information. There are numerous similarities between the disputed domain names and the websites to which they resolve. Many of the disputed domain names resolve to geo- restricted websites that are only accessible from the country indicated in each disputed domain name.

The Complainant provides evidence of trademark registrations and points out that the disputed domain names capture in its entirety the Complainant’s trademark and simply add generic and/or geographic terms, sometimes with a hyphen, sometimes without. It is in the view of the Complainant not sufficient to prevent a finding of confusing similarity.

The Complainant argues that the Respondents have no rights or legitimate interests in respect of the disputed domain names. The Complainant has not authorized the Respondents to use its trademarks in any way. The Respondents are not commonly known by the disputed domain names. The Respondents have not made any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.

The Complainant argues that the disputed domain names were registered and are being used in bad faith as the Respondents must have had knowledge of the Complainant’s prior rights when the Respondents registered the disputed domain names. The composition of the disputed domain names carries a risk of implied affiliation to the Complainant. The use of the disputed domain names – to pass off as the Complainant, sell what appears to be counterfeit goods and/or phishing – is clear evidence of bad faith. When it comes to the disputed domain name <nudiejeanssalede.com>, it currently resolves to an inactive site. This non-use does not prevent bad faith under the doctrine of passive holding. Finally, the pattern of conduct in registering the 49 domain names, and use of a privacy service, are further indications of bad faith.

B. Respondent

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

6. Discussion and Findings

6.1. Procedural matters - Consolidation of Multiple Registrants

The amended Complaint was filed in relation to nominally different domain name registrants. The registrants pursuant to paragraph 10(e) of the Rules.

Complainant argues that the domain name registrants are the same entity or under common control. The

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.

As regards common control, the Panel notes that the disputed domain names are registered in the same period, composed the same way, with the same two name servers and Registrars. Importantly, one of the registrants has been named in numerous UDRP decisions involving multiple respondents. The WhoIs records for the other registrant contains, apparently, false information. There are similarities between the disputed domain names and the websites to which they resolve.

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As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. The registrants have been granted to right to comment but opted not to.

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to as “the Respondent”) in a single proceeding.

6.2. Substantive Issues

A. Identical or Confusingly Similar

WIPO Overview 3.0, section 1.8. For the purpose of assessing under paragraph4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”) as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1.

The test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant has established that it has rights in the trademarks NUDIE and NUDIE JEANS. Each disputed domain name incorporates the Complainant’s trademark in its entirety and thus, the Complainant’s trademarks are recognizable within the disputed domain names.. The additions of other terms as well as the inclusion of hyphens in some of the disputed domain names do not prevent a finding of confusing similarity. See

Based on the available record, the Panel finds the disputed domain names are confusingly similar to the trademark in which the Complainant has rights. The first element of paragraph 4(a) the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the respondent may demonstrate rights or legitimate interests in a disputed domain name. While 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 often-impossible 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. If the respondent fails to come forward with such relevant evidence, the
complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1.

Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence

demonstrating rights or legitimate interests in the disputed domain names. There is no evidence of the corresponding to the disputed domain names in connection with a bona fide offering of goods or services.

The composition of the disputed domain names carries a risk of implied affiliation as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.

The Panel further notes that most of the disputed domain names resolve, or used to resolve, to websites impersonating the Complainant with the use of the Complainant’s logo and copyrighted images. In this regard, Panels have held that the use of a domain name for illegal activity, such as impersonation, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

Based on the available record, 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.

The composition and use of the disputed domain names proves that the Respondent was aware of the Complainant and its prior rights when the Respondent registered the disputed domain names. The Respondent has failed to provide any evidence of actual or contemplated good faith use of the disputed domain names. The non-use of some of the disputed domain names does not prevent a finding of bad faith under the doctrine of passive holding. The Panel cannot see the Respondent be able to make any good faith use of the disputed domain names. The Respondent’s use of the disputed domain names appears to be passing off as the Complainant to, potentially, either sell counterfeit goods, or, alternatively, use the disputed domain names for phishing purposes. The Panel further notes the Respondent’s pattern of bad faith towards the Complainant, as the Respondent has previously been a party in a prior UDRP dispute involving 36 domain names, all of which reproduced the Complainant’s trademark rights (Nudie Jeans Co AB v. Client Care, Web Commerce Communications Limited, Ceaau Aaufmann, Milene Rafia Faridi, WIPO Case No. D2023-4365). The use of a privacy service to conceal the Respondent’s identity also points to bad faith.

For the reasons set out above, the Panel concludes that the disputed domain names were registered and are
being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy. The third element of the

Policy has been established.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel
orders the disputed domain names <nudiejeansae.com> , <nudiejeansamsterdam.com> ,
<nudiejeansaustraliasale.com> , <nudiejeans-belgie.com> , <nudiejeansbelgie.com> ,
<nudiejeans-canada.com> , <nudiejeans-danmark.com> , <nudiejeans-deutschland.com> ,
<nudiejeansdk.com> , <nudiejeansgrimtimno.com> , <nudiejeanshelsinki.com> , <nudiejeansie.com>,
<nudiejeansil.com> , <nudiejeans-india.com> , <nudiejeans-ireland.com> , <nudiejeans-israel.com>,
<nudiejeans-italia.com> , <nudiejeans-japan.com> , <nudiejeansjapanstore.com> ,
<nudiejeansleandeannl.com> , <nudiejeansmadrid.com> , <nudiejeans-malaysia.com> ,
<nudiejeansmalaysiaprice.com> , <nudiejeans-mexico.com> , <nudiejeans-nz.com> ,
<nudiejeans-oslo.com> , <nudiejeansparis.com> , <nudiejeans-philippines.com> , <nudiejeans-polska.com>
, <nudiejeanspricein.com> , <nudiejeanspricephilippines.com> , <nudiejeanssaleaustralia.com> ,
<nudiejeanssalecanada.com> , <nudiejeanssalede.com> , <nudiejeanssaleus.com> ,
<nudiejeanssaleza.com> , >nudiejeans-singapore.com> , <nudiejeans-southafrica.com> ,
<nudiejeans-suomi.com> , <nudiejeanssverigeo.com> , <nudiejeansturkey.com> , <nudiejeans-turkiye.com>
, <nudiejeans-uae.com> , <nudiejeans-uk.com> , <nudiejeansuksale.com> , <nudiejeans-usa.com> ,
<nudiejeansusa.com> , <nudiejeanswien.com> , and <nudiejeanszurich.com> be transferred to the

Complainant.

/Mathias Lilleengen/
Mathias Lilleengen
Sole Panelist
Date: April 9, 2024