ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION PJ Hungary Szolgáltató Korlátolt Felelösségü Társaság v. Web Commerce Communications Limited, Client Care Case No. D2022-1345 1. The Parties The Complainant is PJ Hungary Szolgáltató Korlátolt Felelösségü Társaság, Hungary, represented by CSC Digital Brand Services Group AB, Sweden. The Respondent is Web Commerce Communications Limited, Client Care, Malaysia. 2. The Domain Names and Registrar The disputed domain names
, , , and 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 April 14, 2022. On April 14, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 15, 2022, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on April 19, 2022, 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 April 20, 2022. 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 April 21, 2022. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 12, 2022. page 2 The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on May 18, 2022. 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 PJ Hungary Szolgáltató Korlátolt Felelösségü Társaság, which is part of the AWWG global fashion group, having over 4,200 employees of 54 nationalities worldwide and 4,000 points of sales. One of its famous mark is the internationally recognized PEPE JEANS, as well as HACKET and FAÇONNABLE. The Complainant owns several trademark registrations for PEPE JEANS around the world, including the following: -Mexican Registration No. 594981, of July 22, 2003, in class 16; -European Union Registration No. 001807379, of August 3, 2001, in classes 3, 9, 14, and 18; -Chinese Registration No. 4296238, of October 7, 2008, in class 25 and -United States Registration No. 4370772 of July 23, 2013, in class 9. The Complainant maintains a strong Internet presence and owns the domain name , registered on March 4, 1996. The disputed domain names were registered on August 28, 2021 (); on December 3, 2021 (); on December 14, 2021 () and on February 24, 2022 (). The three first disputed domain names resolve to blank pages while the latter currently resolves to a website displaying the Complainant's PEPE JEANS logo and offering clothing items for sale. 5. Parties' Contentions A. Complainant The Complainant argues that the disputed domain names incorporate the Complainant's registered trademark PEPE JEANS, with the addition of the geographical terms "Mexico", "Greece", and "Portugal", making them confusingly similar to the Complainant's trademark. With relation to the disputed domain name , the Complainant informs that the addition of the hyphen is not sufficient to distinguish it from the Complainant's trademark. The Complainant alleges that the Respondent is not sponsored by or affiliated with the Complainant in any manner, registered the disputed domain names without authorization, is not commonly known by the disputed domain names, and has no rights or legitimate interest in respect to the disputed domain names. In addition, the Complainant says that the Respondent is not making a bona fide offering of goods or services or legitimate, noncommercial fair use of the disputed domain names. The Respondent's historical use of the disputed domain names , as well as the current use of the disputed domain name , contribute to the confusion with the Complainant's trademarks, since they resolved/currently resolves to websites that purported to be operated by the Complainant or its affiliate. According to the Complainant, the Respondent is not authorized to register and use the disputed domain names, and the disputed domain names were registered with full knowledge of the Complainant's rights in the trademark PEPE JEANS. page 3 The Complainant adds that the Respondent has demonstrated knowledge of and familiarity with the Complainant's brand by copying the look and feel of the Complainant's own website, displaying the Complainant's logo and offering clothing items for sale, aiming to obtain sensitive and financial information, including credit card details, from customers who landed on the infringing websites. In addition, the Complainant argues and shows evidence that the Respondent has previously been involved in other UDRP proceedings and that currently holds registrations for several other domain names that misappropriate well-known brands and businesses, which demonstrates that the Respondent is engaged in a pattern of cybersquatting/typosquatting. Finally, the Complainant requests the transfer of the disputed domain names. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings As per paragraph 4(a) of the Policy, the Complainant must prove that: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar The evidence presented demonstrates that the Complainant is the owner of several trademark registrations for PEPE JEANS around the world, as well as of the domain name . The disputed domain names incorporate the Complainant's trademark PEPE JEANS in its entirety. The addition of the geographical terms "Mexico", "Greece", and "Portugal" does not avoid confusing similarity between the disputed domain names and the Complainant's trademark. In this regard, it is the general view among UDRP panels that the addition of merely dictionary, descriptive or geographical words to a trademark in a domain name would not prevent a finding of confusing similarity under the first element of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8). Also, as numerous prior UDRP panels have already recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is confusingly similar to the complainant's mark where it is recognizable in the domain name. See section 1.7 of the WIPO Overview 3.0. The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain names are confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests The Respondent has not submitted any response to the Complaint. There is no evidence that the Respondent has any authorization to use the Complainant's trademark or to register domain names containing the trademark PEPE JEANS. page 4 There is no evidence that the Respondent is commonly known by the disputed domain names. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services. Instead, there is evidence in the Complaint that the Respondent developed websites to resemble the Complainant's official PEPE JEANS website and, therefore, sought to mislead Internet users for commercial gain or for purposes of phishing by means of collecting personally identifiable information. Furthermore, the construction of the disputed domain names themselves is such to carry a risk of implied affiliation with the Complainant, which cannot constitute fair use. See section 2.5.1 of the WIPO Overview 3.0. Based on the evidence in the Complaint, the Panel finds that the use of the disputed domain names, which incorporate the Complainant's trademark and strongly suggest an association with the Complainant, do not correspond to a bona fide use of the disputed domain names under the Policy. For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith The trademark PEPE JEANS is registered by the Complainant in several jurisdictions and has been used since a long time, predating the registration of the disputed domain names. Also, the Complainant registered and is using the domain name . The disputed domain names incorporate the Complainant's trademark PEPE JEANS in its entirety and the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant's PEPE JEANS mark is distinctive and reputed in several jurisdictions worldwide. Thus, a domain name that comprises such a known mark may be suggestive of the registrant's bad faith. Moreover, considering the use of the majority of the disputed domain names to impersonate the Complainant's website and allegedly offer the Complainant's products, the Respondent was aware of the Complainant and intended to target the Complainant upon registration of the disputed domain names. The addition of the geographical terms "Mexico", "Greece", and "Portugal" is very likely to mislead Internet users into believing that the disputed domain names belong to the Complainant in these three specific countries, which is not true. In addition, the Complainant showed evidence that the disputed domain names (except ) were/are being used by the Respondent to mislead users into believing that the corresponding websites were related to the Complainant, by copying the look and feel of the Complainant's own website and offering clothing items for sale. Therefore, this Panel finds that the Respondent has intentionally attempted to take undue advantage of the trademark PEPE JEANS as described in paragraph 4(b)(iv) of the Policy. As regards the disputed domain name and the current inactive state of the disputed domain names and , the passive holding of the disputed domain names does not prevent a finding of the Respondent's bad faith. See section 3.3 of the WIPO Overview 3.0. The Respondent has chosen not to respond to the Complainant's allegations and registered multiple domain names consisting of the Complainant's distinctive trademark, engaging in a pattern of bad faith registrations, which reinforces the Panel's above finding. In these circumstances, and as found in the UDRP panel's decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, "the failure of the Respondent to respond to the Complaint further supports an inference of bad faith". As regards the Respondent's pattern of registration, the Panel takes further note of prior proceedings finding against the Respondent. See, e.g., DKH Retail Limited v. Client Care, Web page 5 Commerce Communications Limited Domain Admin, Whoisprotection.cc, WIPO Case No. D2021-4100; PUMA SE v. Client Care, Web Commerce Communications Limited Dreher Barbara FAERBER Matthias, WIPO Case No. D2022-0112. For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain names have been registered and are being 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 names, , , , and be transferred to the Complainant. /Mario Soerensen Garcia/ Mario Soerensen Garcia Sole Panelist Date: June 1, 2022
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