Peter Millar LLC v Jie Chen, 3000000

WIPO Case No. D2025-1861

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Peter Millar LLC v. Jie Chen, 3000000

Case No. D2025-1861

1. The Parties

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

Demys Limited, United Kingdom (“UK”).

The Respondent is Jie Chen, 3000000, China.

2. The Domain Name and Registrar

The disputed domain name <gforekr.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2025. On May 12, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12, 2025, 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 (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 15, 2025, 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 May 19, 2025.

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 May 23, 2025. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2025.

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The Center appointed Keiji Kondo as the sole panelist in this matter on June 23, 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 was founded in 2001 in the US. The Complainant operates over 40 stores and boutiques in
the US, as well as Internet shops from the website “ for the US market, and
“ for the UK and other international markets. In 2022, the Complainant became the
Official Outfitter of the United States Golf Association and supporting partner of the U.S. Open

Championship.

The Complainant operates its business under the brand G/FORE. The Complainant operates Internet shops
for its G/FORE brand from the website “ which serves the US market and from which
Internet users are redirected to their local regional websites, e.g., “ for the market in the
Republic of Korea.

The Complainant owns trademark registrations for G FORE in the US, European Union and the UK. The specifics of the Complainant’s US trademark registration are as follows:

Trademark: G FORE
Registration No.: 4035425
Registration Date: October 4, 2011
Application Date: May 29, 2009

International Class: 28 (Goods: Golf gloves)

The disputed domain name is <gforekr.com>. The disputed domain name was registered on March 4, 2025. including the Complainant’s brand G/FORE.

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 name.

Notably, the Complainant contends that:

The disputed domain name is confusingly similar to the trademark in which the Complainant has rights
(Policy, paragraph 4(a)(i)).

The disputed domain name incorporates the Complainant’s trademark G FORE, omitting the space between “g” and “fore”. The addition of the adornment “kr” is, in this context, likely to represent the two-letter country code for the Republic of Korea. The part “gfore” in the disputed domain name is the first, most recognizable and prominent element, and the adornment does nothing to distinguish the disputed domain name from the Complainant’s trademark. The generic Top-Level Domain (“gTLD”) “.com” is required only for technical

reasons and, as in common in proceedings under the UDRP, can be disregarded for the purposes of
comparison of the disputed domain name to the Complainant’s mark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).

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The Complainant has found no evidence that the Respondent has been commonly known as “G Fore”, “G/Fore”, or “Gfore Kr” prior to or after the registration of the disputed domain name. Furthermore, the Respondent is not a licensee of the Complainant and has not received any permission, consent or

acquiescence from the Complainant to use the mark “G/FORE” in association with the registration of the
disputed domain name or, indeed, any domain name, service or product.

The Complainant observes that the Respondent has made prominent, misleading and unauthorized use of the Complainant’s copyright material on its website, including the Complainant’s photographs and marketing images. The Complainant contends that in all these circumstances the Respondent cannot claim to be a genuine reseller of the Complainant’s products, and that the Respondent cannot claim nominative fair use as a reseller or distributor of the Complainant’s products.

Furthermore, even if the Respondent were a genuine reseller of the Complainant’s products (which is, in any
event, denied), the Respondent could not claim nominative fair use as reseller or distributor. Section 2.8 of
the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview
3.0”) poses the question, “How do panels assess claims of nominative (fair) use by resellers or distributors?”
and provides an answer in section 2.8.1:

Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i)        the respondent must actually be offering the goods or services at issue;

(ii)       the respondent must use the site to sell only the trademarked goods or services;

(iii)      the site must accurately and prominently disclose the registrant’s relationship with the trademark

holder; and

(iv)      the respondent must not try to “corner the market” in domain names that reflect the trademark.

The Complainant further refers to section 2.8.2 of the WIPO Overview 3.0 which says:

Cases applying the Oki Data test usually involve a domain name comprising a trademark plus a descriptive term (e.g., “parts”, “repairs”, or “location”), whether at the second-level or the top-level. The Complainant observes that in the current case the disputed domain name comprises of the Complainant’s trademark combined with adornment “kr”, which in this context is likely to relate to the two-letter country code for the Republic of Korea. Applying the Oki Data test to the Respondent’s website, the Complainant observes:

(i) The Respondent is not part of the Complainant’s distribution network, and as such the Complainant’s goods on offer are likely to be either counterfeit, parallel import or grey market goods.

(ii) The Respondent’s website offers other third-party goods alongside the Complainant’s G/FORE goods which are unlikely to be genuine.

(iii)      The Respondent’s website does not contain any disclaimer that would accurately disclose its

relationship (or, more accurately, non-relationship) with the Complainant.

Consequently, the Complainant contends that the Respondent’s website fails the Oki Data test on at least
grounds (i), (ii), and (iii), and the Respondent cannot claim that it is making nominative fair use of the

Complainant’s marks, even if the Respondent were a genuine reseller of the Complainant’s products.

The disputed domain name was registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith for the following reasons.

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The Complainant contends that it is well-established under the Policy that in most circumstances where a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark, this is sufficient to find that the disputed domain name was registered and is being used in bad faith.

The Complainant avers that the confusion is not dispelled when Internet users arrive at the website
associated with the disputed domain name. On the contrary, the Complainant contends that the potential for
confusion is exacerbated. Firstly, the Complainant observes that the Respondent’s website features the
Complainant’s copyrighted material, including the Complainant’s product photographs and marketing
images. Secondly, the Complainant observes that the Respondent’s website lacks any disclaimer that would

dispel Internet users’ confusion when they arrive at the website associated with the disputed domain name.

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 name. WIPO Overview 3.0, section 1.7.

The Complainant owns trademark registrations for its trademark G FORE, and it is easily recognizable in the disputed domain name. Omission of a space between “g” and “fore”, and the addition of “kr” following “gfore” would not reduce the recognizability of the Complainant’s trademark in the disputed domain name, and such addition does not prevent a finding of confusing similarity under the first element. WIPO Overview 3.0,

section 1.8. It is well-established that the gTLD “.com” can be disregarded for the purposes of comparison of

the disputed domain name to the Complainant’s trademark.

The Panel finds that 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.

The Respondent’s name is in no way identical or similar to the disputed domain name. Therefore, it is inconceivable that the Respondent has been commonly known by the disputed domain name.

In the present case, the Respondent uses the disputed domain name for its website offering for sale golf- related goods of various brands including the Complainant’s brand. Therefore, the Respondent’s use of the disputed domain name does not fall into the category of legitimate noncommercial or fair use.

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In such circumstances, it is appropriate to apply the Oki Data test to determine whether the Respondent uses the disputed domain name in connection with a bona fide offering of goods or services. Applying the Oki Data test, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name noting there is no prominent and accurate disclaimer on the website regarding the relationship between the Complainant and the Respondent, and there are third party products offered for sale on the website. WIPO Overview 3.0, section 2.8.1. The Panel finds that the Respondent’s use does not satisfy the requirements of the Oki Data test, and therefore, the Respondent has not used the disputed domain name for a bona fide offering of goods or services.

The Panel finds that 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 uses the disputed domain name to direct Internet users to its website where the Respondent displays branded goods including those that appear to be the products of the Complainant and third party products. For the following reasons, the Panel finds that the Respondent registered, and has been using, the disputed domain name in bad faith.

The registration date of the Complainant’s US trademark is October 4, 2011, which is more than 13 years prior to the registration date of the disputed domain name. The Respondent’s website shows a picture which appears to present an image of a shop of the Complainant. The brand list of the Respondent’s website specifically refers to the Complainant’s brand G/FORE. These facts should support the finding that the Respondent was aware of the Complainant’s business and its reputation when the Respondent adopted the disputed domain name for registration, and the Respondent registered the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, or the products offered for sale by the Respondent, which constitutes bad faith under paragraph 4(b)(iv) of the Policy.

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 <gforekr.com> be transferred to the Complainant.

/Keiji Kondo/ Keiji Kondo Sole Panelist Date: July 7, 2025