Peter Millar LLC v dfdsf ddsf fdsd, Rémy Brunault, Bodo Held, ying ma
WIPO Case No. D2025-0184
•25-02-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Peter Millar LLC v. dfdsf ddsf fdsd, Rémy Brunault, Bodo Held, ying ma
Case No. D2025-0184
1. The Parties
The Complainant is Peter Millar LLC, United States of America (“United States”), represented by Demys
Limited, United Kingdom.
The Respondents are dfdsf ddsf fdsd, China; Rémy Brunault, France; Bodo Held, Germany; and ying ma,
China.
2. The Domain Names and Registrar
The disputed domain names <gforeclothes.com>, <gforegermany.com>, <gforepoland.com>,
<gforeschuhe.com> and <gforeshoes.com> are registered with Hongkong Kouming International Limited (the
“Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2025. On January 17, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 18, 2025, 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 January 21, 2025 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the Complainant to either file separate complaint(s) 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 an amended Complaint in English on January 22, 2025.
On January 21, 2025, the Center informed the parties in Chinese and English, that the language of the registration agreement for the disputed domain names is Chinese. On January 21, 2025, the Complainant confirmed its request that English be the language of the proceeding. The Respondents did not submit any comment on the Complainant’s submission.
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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 Respondents in English and Chinese of the Complaint, and the proceedings commenced on January 28, 2025. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2025. The Respondents did not
submit any response. Accordingly, the Center notified the Respondents’ default on February 18, 2025.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on February 20, 2025. 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 United States company founded in 2001 in Raleigh, North Carolina, United States worn on and off course.
and is an international luxury apparel business. The Complainant operates over 40 stores and boutiques in
the United States, as well as Internet shops from the URLs “ for the United States
market, and “ for the United Kingdom and other international markets. G/FORE is a
golf-inspired sportswear and accessories brand which the Complainant acquired in 2018. With its roots in
The Complainant owns an international trademark portfolio for the G FORE marks (and variations thereon), including, but not limited to G FORE, United States word mark registered under No. 4035425 on October 4, 2011, in class 28; G/FORE, United States word mark registered under No. 4117878 on March 27, 2012, in class 28; G/FORE, International word mark registered under No. 1526743 on March 9, 2020, in classes 25 and 28; and the GGGG logo mark, United States figurative mark registered under No. 4799904 on August 25, 2015, in class 25 (collectively referred as “G FORE” mark). The Complainant is the owner of several
domain names including <gfore.com> and <gfore.co.uk> and also has a strong online presence, including
via its presence on social media platforms.
The disputed domain names were all registered between November 5, 2024, and November 25, 2024, and are therefore of later dates than the Complainant’s abovementioned registered trademarks. The Complainant provides evidence that the disputed domain names all direct to active online stores purportedly selling G FORE branded products at allegedly discounted prices.
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 it is the owner of a number of registered trademarks consisting of G FORE and that it has a strong reputation for the products under these trademarks. The Complainant asserts that the disputed domain names are confusingly similar to the abovementioned trademarks since they each
incorporate such trademarks with the mere addition of generic terms (e.g. “clothes”, “germany”, etc.) and
that the Respondents used the disputed domain names by offering counterfeit products (or at least parallel
import or grey market goods) through online shops, thereby prominently using the Complainant’s marks and
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product images and offering such alleged counterfeit products at discounted prices for commercial gain. The Complainant argues that this should be considered an intent on behalf of the Respondents to, for commercial gain, mislead Internet users into believing that the websites linked to the disputed domain names are
somehow connected with the Complainant, and to divert Internet users looking for the Complainant’s
products to the Respondents’ websites. The Complainant essentially alleges that in these circumstances,
the Respondents have no rights or legitimate interests in the disputed domain names, which, it argues, were
registered and are used in bad faith.
The Complainant requests the transfer of the disputed domain names.
B. Respondents
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
I. Preliminary Issues
A. First Preliminary Issue: Consolidation: Multiple Respondents
The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules.
The disputed domain name registrants did not comment on the Complainant’s request.
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 all disputed domain names have been registered within a relatively short period of time, namely between November 5, 2024, and November 25, 2024; all disputed domain names have been registered with the same Registrar; all disputed domain names were pointing to identical or substantially similar websites in different languages aiming to sell products allegedly being counterfeits of the Complainant's G FORE-branded products; all disputed domain names as well as their related websites were targeting the Complainant’s well-known G FORE trademark; and all disputed domain names were registered in a similar naming structure, i.e. the mark G FORE combined with a descriptive term or geographical location which refers to the Complainant’s products and/or targeted geographic locations, thereby exposing a clear pattern. On the basis of these elements, the Panel accepts that the disputed domain names are under common control.
As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.
Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding.
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B. Second Preliminary Issue: Language of the Proceeding
The language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
The Complaint and amended Complaint were filed in English and the Complainant requests that the
language of the proceeding be English for several reasons, including, notably, the fact that the disputed
domain names incorporate the Complainant’s English-language marks G FORE, and that four out of five
disputed domain names feature English-language elements, namely “poland”, “clothes”, “germany” and
“shoes”; the fact that the disputed domain name <gforeshoes.com> resolves to an English-language website
and that the other disputed domain names resolve to websites in Polish, Dutch, and German, featuring
product descriptions in English, and that none of the disputed domain names resolve to a website in
Chinese.
The Respondent did not make any submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview 3.0, section 4.5.1).
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
II. Substantive Matters
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 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 Panel finds the mark is recognizable within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
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
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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.
Moreover, upon review of the facts and evidence, the Panel notes that the Respondent has not provided any evidence of the use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. Instead, the Panel notes that the disputed domain names direct to active websites prominently displaying the Complainant’s trademarks and even its own product images, and that these websites are offering for sale products which are purported to be the Complainant’s products.
This means that the Respondent is misleading consumers into believing that it is at least licensed by, or otherwise affiliated with or connected to the Complainant and/or its trademarks. The websites also do not display any accurate and prominent disclaimers regarding the lack of relationship between the Complainant and the Respondent. It is clear to the Panel from the foregoing elements that the Respondent cannot be considered a good faith provider of goods or services under the disputed domain names, see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Given the abovementioned elements, the Panel concludes that the Respondent’s use does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain names.
The Panel also takes into consideration that panels applying the Policy have consistently held that the use of
a domain name for illegal activity, here, claimed sale of suspected counterfeit goods and
impersonation/passing, off can never confer rights or legitimate interests on a respondent.
WIPO Overview 3.0, section 2.13.1.
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.
| subsequent registration of the disputed domain names, which are confusingly similar to such marks, clearly | Given the intensive use and prior registration of the Complainant’s trademarks, the Panel finds that the business and its prior trademarks. In the Panel’s view, the foregoing elements clearly indicate bad faith on the part of the Respondent, and the Panel therefore finds that it has been demonstrated that the Respondent registered the disputed domain names in bad faith. |
| As to use of the disputed domain names in bad faith, the Complainant provides evidence that the disputed domain names direct to active websites which show a clear intent on the part of the Respondent to create a likelihood confusion with the Complainant for commercial gain, and purportedly offering the Complainant’s |
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products for sale. The Panel concludes from these facts that the Respondent is intentionally attracting associated with the disputed domain names and the Complainant’s trademarks. This constitutes direct evidence of the Respondent’s bad faith under paragraph 4(b)(iv) of the Policy. The Panel therefore finds that it has been demonstrated that the Respondent has used and is using the disputed domain names in bad faith.
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 name <gforeclothes.com>, <gforegermany.com>, <gforepoland.com>,
<gforeschuhe.com>, and <gforeshoes.com> be transferred to the Complainant.
/Deanna Wong Wai Man/
Deanna Wong Wai Man
Sole Panelist
Date: February 25, 2025
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