Peter Millar LLC v Client Care, Web Commerce Communications Limited

WIPO Case No. D2024-0648

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Peter Millar LLC v. Client Care, Web Commerce Communications Limited

Case No. D2024-0648

1. The Parties

The Complainant is Peter Millar LLC, United States of America (“United States”), represented by Corsearch,

Inc., United States.

The Respondent is Client Care, Web Commerce Communications Limited, Malaysia.

2. The Domain Names and Registrar

The disputed domain names <g-foreaustralia.com>, <g-forecanada.com>, <g-forechile.com>,
<g-foredeutschland.com>, <g-forefrance.com>, <gforegolfnz.net>, <g-foregolfshoes.com>,
<gforegolfshoes-nz.com>, <gforegolfshorts.com>, <g-forejapan.com>, <g-foremexico.com>,
<g-forenederland.com>, <gforenederlandoutlet.com>, <g-forenz.com>, <gforeoutletireland.com>,
<gforeoutletusa.com>, <g-forephilippines.com>, <g-foresingapore.com>, <g-foresmexico.com>,
<g-foresverige.com>, <g-foreuk.com>, and <gfseonline.com> are registered with Alibaba.com Singapore E-

Commerce Private Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2024. On February 13, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 19, 2024, 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 (N/A) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 20, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed the first amended Complaint on February 25, 2024.

On February 25, 2024, the Complainant requested that the disputed domain name <gforenederlandoutlet.com> be added to the proceeding. On February 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <gforenederlandoutlet.com>. On February 27, 2024, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to the Complainant on February 28, 2024, providing the

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registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an

amendment to the Complaint. The Complainant filed the second amended Complaint on March 4, 2024.

The Center verified that the Complaint together with the amended Complaints 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 5, 2024. In accordance with the Rules, paragraph 5,
the due date for Response was March 25, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 26, 2024.

The Center appointed Angelica Lodigiani as the sole panelist in this matter on April 16, 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 by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is an American company founded in 2001; since 2012, the Complainant is part of the Richemont SA group operating in the luxury field. In 2018, the Complainant acquired a golf inspired sportswear and accessories brand for men and women named G/FORE. Its collection includes premium golf gloves and has expanded to include golf shoes, accessories, and apparel. Founded in 2011, G/FORE has become a leader and innovator in golf fashion with a wide range of premium footwear, apparel, and accessories for men and women. The G/FORE brand has gained the attention of golf enthusiasts across the globe as well as well known golf players.

The Complainant sells its products online and at specialty retailers and top golf pro shops in more than 35 countries. The Complainant is also active in the main social media and promotes its G FORE and G/FORE branded products on Facebook, Instagram, and YouTube.

The Complainant owns a portfolio of trademark registrations for G FORE and G/FORE in various jurisdictions around the world, among which the following:

- G FORE, United States registration No. 4035425, claiming protection for goods in class 28, registered on

October 4, 2011, and claiming a first use in commerce since January 15, 2011;

- G FORE, European Union registration No. 011699618, claiming protection for goods in classes 25 and 28,

registered on August 9, 2013; and

- G/FORE, International registration No. 1526743, claiming protection for goods in classes 25 and 28,
registered on March 9, 2020, and designating various jurisdictions worldwide.

The Complainant is also the owner of a device mark consisting of a circle around 4 stylized “G” (the “GGGG Design” mark). The GGGG Design mark has been registered in various jurisdictions worldwide, in the same classes of goods in which the G FORE and G/FORE trademarks are protected since 2011.

The Complainant is the owner of and operates the domain names <gfore.com>, registered on March 31,

2009; and <gfore.co.uk>, registered on August 5, 2011, which resolve to its main websites.

The disputed domain names have been registered between October 7, 2023 and February 19, 2024. At the
time of the filing of the Complaint, the disputed domain names, with the sole exception of
<g-foresverige.com>, resolved to websites purportedly selling the Complainant’s branded goods at

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discounted prices, and prominently displaying the Complainant’s G FORE, G/FORE, and GGGG Design marks, as well as the Complainant’s copyrighted materials. At the time of the filing of the Complaint, the disputed domain name <g-foresverige.com> resolved to a website disclosing the message “Internal Server

Error”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

Notably, the Complainant contends that the disputed domain names are confusingly similar to the Complainant’s G FORE and/or G/FORE trademarks. All the disputed domain names, with the sole exception of <gfseonline.com>, consist of the Complainant’s mark, written either as “gfore” or as “g-fore”, followed by a geographical indication or generic words. Where the relevant mark is recognizable within a domain name, the addition of other terms does not prevent a finding of confusing similarity between the domain name and the complainant’s mark.

The disputed domain name <gfseonline.com> does not contain the Complainant’s trademark in its entirety but the letters “g” and “f” along with the abbreviation “se” and the term “online”. The Complainant’s contents of the website to which the disputed domain name resolves should serve to affirm a finding of confusing similarity.

The Complainant further maintains that the Respondent lacks rights or legitimate interests in the disputed domain names. The Complainant is not affiliated with the Respondent. The Complainant has not licensed its marks to the Respondent, and the Complainant has not granted the Respondent any right, authorization, or permission to use the Complainant’s marks in a domain name or in any other capacity. Moreover, according to the data present on the WhoIs of the disputed domain names, the Respondent does not appear to be commonly known by the disputed domain names. The disputed domain names, with the exception of <g-foresverige.com>, resolve to websites offering men and women’s golf apparel and accessories and displaying the Complainant’s G/FORE, G-FORE, and GGGG Design marks and copyrighted images of the Complainant. By using the disputed domain names in such a manner, the Respondent is defrauding customers into believing that the goods being sold on the Respondent’s websites are authentic by creating a strong impression of affiliation with the Complainant. The Respondent’s sale of products bearing the Complainant’s marks without the consent of the Complainant is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain names.

The Respondent is not using the disputed domain name <g-foresverige.com> for a bona fide offering of goods or services, or a legitimate noncommercial or fair use as the resolving website lacks substantive content and displays the message “Internal Server Error”. The lack of use of the disputed domain name

<g-foresverige.com> cannot confer any rights or legitimate interests to the Respondent.

Lastly, the Complainant contends that the disputed domain names have been registered and used in bad faith.

Given the world-wide fame of the Complainant and its marks, and the fact that the disputed domain names incorporate the G FORE mark verbatim and the websites display the GFORE, G/FORE, and GGGG marks and copyrighted images, it is obvious that the Respondent had actual knowledge of the Complainant and its marks when registering the disputed domain names.

The Respondent is diverting Internet customers from the Complainant’s website to its active websites
through the confusion caused by the similarity of the disputed domain names with the Complainant’s marks.
As such, the Respondent is disrupting the Complainant’s business, which is evidence of bad faith registration

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and use of the disputed domain names. The Respondent is commercially gaining through the sales of use of the disputed domain names.
clothing and accessories being sold on the websites that resolve from the active disputed domain names.
Because the Respondent has no license or other right to sell products bearing the Complainant’s marks, the

In relation to the disputed domain name <g-foresverige.com>, the Complainant affirms that using a disputed domain name to host an inactive website is evidence of bad faith use and registration.

Lastly, the Complainant points out that the Respondent has been involved in previous UDRP decisions, which may be evidence of a pattern of bad faith under the Policy.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain names. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The entirety of the G FORE and/or G/FORE marks is reproduced within the disputed domain names
<g-foreaustralia.com>, <g-forecanada.com>, <g-forechile.com>, <g-foredeutschland.com>,
<g-forefrance.com>, <gforegolfnz.net>, <g-foregolfshoes.com>, <gforegolfshoes-nz.com>,
<gforegolfshorts.com>, <g-forejapan.com>, <g-foremexico.com>, <g-forenederland.com>,
<gforenederlandoutlet.com>, <g-forenz.com>, <gforeoutletireland.com>, <gforeoutletusa.com>,
<g-forephilippines.com>, <g-foresingapore.com>, <g-foresmexico.com>, <g-foresverige.com>, and
<g-foreuk.com>. Accordingly, the disputed domain names are confusingly similar to the Complainant’s
marks for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The addition of a hyphen between
the letter “g” and the suffix “fore” of the Complainant’s G FORE mark in some of the disputed domain names

does not prevent a finding of confusing similarity. WIPO Overview 3.0, section 1.8.

The Panel finds that the G FORE and/or G/FORE marks are recognizable within the disputed domain names
<g-foreaustralia.com>, <g-forecanada.com>, <g-forechile.com>, <g-foredeutschland.com>,
<g-forefrance.com>, <gforegolfnz.net>, <g-foregolfshoes.com>, <gforegolfshoes-nz.com>,
<gforegolfshorts.com>, <g-forejapan.com>, <g-foremexico.com>, <g-forenederland.com>,
<gforenederlandoutlet.com>, <g-forenz.com>, <gforeoutletireland.com>, <gforeoutletusa.com>,
<g-forephilippines.com>, <g-foresingapore.com>, <g-foresmexico.com>, <g-foresverige.com>, and
<g-foreuk.com>. Accordingly, they are confusingly similar to the Complainant’s G FORE and/or G/FORE
marks for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, various geographical indications and/or descriptive terms such as “golfshoes” and “outlet” may bear on assessment of the second and third elements, the Panel that finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names

and the Complainant’s marks for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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As far as the disputed domain name <gfseonline.com> is concerned, the Panel notes that it does not include the Complainant’s mark but consists in the letters “gfse” followed by the term “online”. The Panel notes that against this disputed domain name the evaluation of a possible confusing similarity should not be limited to a side-by-side comparison of the disputed domain name and the textual components of the G FORE and/or

G/FORE marks but should also take into account the overall facts and circumstances of this case. WIPO
Overview 3.0, section 1.7. In this context, the Panel notes that the Respondent has registered 21 disputed
domain names incorporating the Complainant’s G FORE and/or G/FORE marks, either written as a single
word or separated by a hyphen. In the vast majority of cases, the Complainant’s marks are associated with
a geographical indication, which is either in the form of a country name, or an abbreviation, such as in the
case of the disputed domain name <g-forenz.com>, where the final letters “nz” stand for “New Zealand”.
Although the disputed domain name <gfseonline.com> does not incorporate the Complainant’s marks, it
consists of the letters “gfse”, where “gf” coincide with the first two letters of the G FORE and/or G/FORE
marks and could be intended as its abbreviation, and “se” is the common abbreviation of the country name
“Sweden”. Moreover, the disputed domain name <gfseonline.com> resolves to a website offering for sale
alleged G FORE, G/FORE, and GGGG Design branded clothing and accessories. Although the content of
the website associated with a domain name is usually disregarded when assessing confusing similarity
under the first element, in some instances, panels have taken note of the content of the website associated
with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks
to target a trademark through the disputed domain name. WIPO Overview 3.0, section 1.15. In the case at
issue, considering the large number of disputed domain names incorporating the Complainant’s marks and
the use of these disputed domain names, it prima facie appears to the Panel that the Respondent is indeed
seeking to target the Complainant’s marks through the disputed domain names, including through the
disputed domain name <gfseonline.com>. In light of this, the Panel finds that also the disputed domain

name <gfseonline.com> is confusingly similar to the Complainant’s G FORE and/or G/FORE marks.

The Panel finds the first element of 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.

Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available 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 such as those enumerated in the Policy or otherwise.

In particular, the Complainant did not license its trademarks G FORE and/or G/FORE to the Respondent, nor authorized the Respondent to make use of its trademarks in any manner, including in the disputed domain names. In addition, the Respondent is not affiliated with the Respondent and there is no other type of relationship that link the Respondent to the Complainant. The Respondent does not even appear to be commonly known by the disputed domain names.

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The disputed domain name <g-foresverige.com>, resolves to a webpage displaying an “Internal Server fair use given the confusing similarity with the Complainant’s marks and all other circumstances of this case.

The other disputed domain names resolve to websites displaying the Complainant’s trademarks prominently and purportedly offering for sale various products bearing the Complainant’s G FORE, G/FORE, and GGGG Design marks at reduced prices. These websites do not contain a disclaimer clarifying the lack of

association with the Respondent but a copyright notice including the relevant disputed domain name and the
year 2024, and copyrighted images from the Complainant. These disputed domain names along with the
corresponding websites are highly misleading as the Internet users looking for the Complainant’s goods
could think that they have reached the local official websites of the Complainant, or the online outlet of the
Complainant in a given country. Through the disputed domain names and the corresponding websites, the
Respondent is therefore impersonating the Complainant and targeting its marks to unduly profit from the
Complainant’s goodwill and reputation for its own commercial gain.

Panels have held that the use of a domain name for illegal activity such as the one described above can never confer rights or legitimate interests on a respondent. In the Panel’s view the impersonation of the Complainant can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section

2.13.1. Moreover, the Complainant has engaged in a pattern of registering domain names corresponding to

the Complainant’s marks, which is inconsistent with a bona fide activity.

In light of the foregoing, the Panel finds the second element of the Policy has been established.

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.

In the present case, the Panel notes that the Respondent registered 21 disputed domain names Accordingly, the Panel has no doubts that the Respondent was aware of the Complainant’s marks at the time of the registration of the disputed domain names. The registration of multiple domain names confusingly similar to the Complainant’s marks without rights or legitimate interests amounts to registration in bad faith.
incorporating the Complainant’s G FORE and/or G/FORE marks and one disputed domain name consisting
of the initials of the G FORE and/or G/FORE marks followed by the abbreviation of the country name
Sweden (“se”). According to the evidence submitted, the G FORE mark is ranked first in Google searches.
Anyone conducting a search for G FORE using the Google search engine will be provided first with links to
the Complainant’s website. All the disputed domain names, with the sole exception of
<g-foresverige.com>, which is inactive, resolve to webpages displaying the Complainant’s trademarks in a
prominent way, and purportedly offering the Complainant’s branded products for sale at discounted prices,
promoting such sales through copyrighted photographs of the Complainant. Furthermore, these websites

display a 2024 copyright notice reproducing the relevant disputed domain names, and therefore the

With respect to use in bad faith, in addition to the circumstances highlighted above, the Respondent appears considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or use of

to have engaged in a pattern of bad faith conduct, by registering 21 disputed domain names to intentionally
attempt to attract, for commercial gain, Internet users to the Respondent’s websites, by creating a likelihood
of confusion with the Complainant’s marks. Moreover, panels have found that the non-use of a domain
name (including an “Internal Server Error” page) would not prevent a finding of bad faith under the doctrine of
passive holding. Having reviewed the available record, the Panel finds the non-use of the disputed domain
name <g-foresverige.com> does not prevent a finding of bad faith in the circumstances of this proceeding.

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false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness of the Complainant’s trademarks, the composition of the disputed domain name <g-foresverige.com>, and the pattern of bad faith conduct of the Respondent, and finds that in the circumstances of this case the passive holding of the disputed domain

name <g-foresverige.com> does not prevent a finding of bad faith under the Policy.

In addition, the Panel notes that the Respondent has already been a respondent in other UDRP proceedings, and that in all these instances, the respondent was found to have acted in bad faith.

For all the reasons mentioned above, the Panel finds that the Complainant has established the third element of the Policy.

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 <g-foreaustralia.com>, <g-forecanada.com>, <g-forechile.com>,
<g-foredeutschland.com>, <g-forefrance.com>, <gforegolfnz.net>, <g-foregolfshoes.com>,
<gforegolfshoes-nz.com>, <gforegolfshorts.com>, <g-forejapan.com>, <g-foremexico.com>,
<g-forenederland.com>, <gforenederlandoutlet.com>, <g-forenz.com>, <gforeoutletireland.com>,
<gforeoutletusa.com>, <g-forephilippines.com>, <g-foresingapore.com>, <g-foresmexico.com>,

<g-foresverige.com>, <g-foreuk.com>, and <gfseonline.com> be transferred to the Complainant.

/Angelica Lodigiani/
Angelica Lodigiani
Sole Panelist
Date: April 30, 2024.