ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Commander Holding B.V., Just Brands B.V. v. Jeffrey EManley, User User, Johnnie R Hutchinson, Hal P Bickel, Douglas T Bates, Frank Bellavia, 朱凌晴(zz zz), 沈静枫 (zz zz), 钱若菱 (Shengjie Zhuang), Patricia AGonzalez, Cameron Whiteley, Abc Name, Vernon S Mercado, 卫安荷 (Martin Parker) Case No. D2024-2867 1. The Parties The Complainants are Commander Holding B.V., Netherlands (Kingdom of the) (the “First Complainant”) and Just Brands B.V., Netherlands (Kingdom of the) (the “Second Complainant”), represented by BINGH Advocaten, Netherlands (Kingdom of the). The Respondents are Jeffrey EManley, United States of America (“United States”); User User, United States; Johnnie R Hutchinson, United States; Hal P Bickel, United States; Douglas T Bates, United States; Frank Bellavia, United States; 朱凌晴 (zz zz), China and United Kingdom; 沈静枫 (zz zz), China and United Kingdom; 钱若菱 (Shengjie Zhuang), China; Patricia AGonzalez, United States; Cameron Whiteley, United States; Abc Name, United States; Vernon S Mercado, United States; and 卫安荷 (Martin Parker), China and United States. 2. The Domain Names and Registrars The disputed domain names
, , , , , and are registered with NameSilo, LLC. The disputed domain names , , , , , , , , , and are registered with Sav.com, LLC. The disputed domain names , , , and are registered with West263 International Limited. NameSilo, LLC, Sav.com, LLC, and West263 International Limited are referred to below separately and collectively as “the Registrar”.
page 2 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2024. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with three disputed domain names, namely , and . On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for these disputed domain names that differed from the named Respondent (Redacted for privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 17, 2024 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the Complainant to either file separate complaints for these 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 these disputed domain names are under common control. On July 22, 2024, the Complainant requested the addition of the disputed domain name . On July 25, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with this additional disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for this additional disputed domain name that differed from the named Respondent (Undisclosed) in the email requesting its addition. The Center sent an email communication to the Complainant on the same day, with the registrant and contact information of the nominally different underlying registrants disclosed by the Registrar for the four disputed domain names, 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 disputed domain names are under common control. The Complainant filed a first amended Complaint in English on August 7, 2024 in which the Complainant requested the addition of the disputed domain name . On August 9, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with this additional disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification responses disclosing registrant and contact information for the additional disputed domain name that differed from the named Respondent (N/A) and contact information in the amended Complaint. The Center sent an email communication to the Complainant on the same day, with the registrant and contact information of the nominally different underlying registrants disclosed by the Registrar, 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 disputed domain names are under common control. The Complainant filed a second amended Complainant in English on August 14, 2024 in which the Complainant requested the withdrawal of the disputed domain name and the addition of the disputed domain name . On August 29, 2024, the Complainant filed a third amended Compliant in English in which it requested transfer of the disputed domain names rather than cancellation. On August 30, 2024, the Center notified the Parties and the Registrar of the requested withdrawal for the disputed domain name . On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the newly added disputed domain name . On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the newly added disputed domain name that differed from the named Respondent (Unknown) and contact information in the amended Complaint. On September 4, 2024, the Complainant requested the addition of 15 disputed domain names , , , , , , , , , , , , , , and . On September 10, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the 15 additional disputed domain names. On September 10, the Registrar transmitted by email to the Center its verification responses
page 3 disclosing registrant and contact information for the 15 additional disputed domain name that differed from the named Respondent and contact information in the Complaint and amended Complaints. The Center sent an email communication to the Complainant on September 12, 2024, with the registrant and contact information of the nominally different underlying registrants disclosed by the Registrar, 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 disputed domain names are under common control. On September 12, 2024, the Center also informed the Parties in Chinese and English, that the language of the Registration Agreements for the disputed domain names , , and is Chinese. On October 2, 2024, the Complainant filed a fourth amended Complaint in English in which the Complainant requested the addition of one disputed domain name () and the withdrawal of another disputed domain name (). On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the newly added disputed domain name. On October 8, 2024, the Center notified the Parties and the Registrar of the requested withdrawal for the disputed domain name . On October 8, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the newly added disputed domain name that differed from the named Respondent and contact information in the Complaint and amended Complaints. The Center sent an email communication to the Complainant on October 8, 2024, with the registrant and contact information of the nominally different underlying registrant disclosed by the Registrar, 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 disputed domain names are under common control. The Complainant filed a fifth amended Complaint in English on October 10, 2024. On October 8, 2024, the Center informed the Parties in Chinese and English, that the language of the Registration Agreements for the disputed domain names , , , and is Chinese. On October 10, 2024, the Complainant requested that English be the language of the proceeding while the Complainant also provided a machine translation of the amended Complaint into Chinese. The Respondents did not submit any comment on the language of the proceeding. 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 Respondents of the Complaint in Chinese and English, and the proceedings commenced on October 16, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2024. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on November 6, 2024. The Center appointed Matthew Kennedy as the sole panelist in this matter on November 11, 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 First Complainant is the owner of the following trademark registrations: - International trademark registration number 644491A for PME in a stylized script, registered on September 15, 1995, designating multiple jurisdictions, specifying goods in classes 18, 24, and 25;
page 4 - International trademark registration number 1389041 for PME LEGEND, registered on September 22, 2017, specifying clothing and other goods and services in classes 3, 18, 25, and 35; and - European Union trademark registration number 018701736 for a figurative PME LEGEND AMERICAN CLASSIC mark (the “PME LEGEND logo”, registered on October 8, 2022, specifying clothing and other goods in classes 9 and 25. The Second Complainant is the exclusive licensee of the above trademarks. The Second Complainant uses the domain name in connection with an online store where it sells PME LEGEND clothing, including jeans, jackets and t-shirts. The Respondents are identified in the Registrar’s WhoIs database by the names of individuals or aliases. The disputed domain names are set out in the following table with their respective dates of registration and registrant names. No. Registration date Disputed domain name Registrant 1 June 2, 2024 Abc Name 2 June 2, 2024 User User 3 June 6, 2024 Jeffrey EManley 4 June 8, 2024 Patricia AGonzalez 5 June 14, 2024 Hal P Bickel 6 June 24, 2024 钱若菱 (Shengjie Zhuang) 7 July 5, 2024 卫安荷 (Martin Parker) 8 July 5, 2024 Johnnie R Hutchinson 9 July 5, 2024 Johnnie R Hutchinson 10 July 8, 2024 Frank Bellavia 11 July 13, 2024 Douglas T Bates 12 July 18, 2024 沈静枫 (zz zz) 13 July 25, 2024 朱凌晴 (zz zz) 14 July 26, 2024 Johnnie R Hutchinson 15 August 1, 2024 Abc Name 16 August 7, 2024 Hal P Bickel 17 August 12, 2024 Hal P Bickel 18 August 15, 2024 Hal P Bickel 19 August 22, 2024 Vernon S Mercado 20 August 28, 2024 Cameron Whiteley At the times when the original Complaint or amended Complaints were filed, at least 11 disputed domain names resolved to online stores offering for sale what purported to be the Complainant’s clothing. The websites prominently displayed the PME LEGEND logo and product photographs reproduced from the Complainant’s own online store. The website associated with displayed terms and conditions that referred to the Second Complainant by name. The evidence on record does not show that the other nine disputed domain names have resolved to an active website. The Complainant has received complaints from consumers, including one who ordered and paid for goods at an online shop associated with the disputed domain name on June 13, 2024 but did not receive their order. At the time of this decision, the disputed domain names no longer resolve to any active website, with the exception of which continues to resolve to an online store displaying the PME LEGEND logo and product photographs reproduced from the Complainant’s own online store, and offering for sale what purports to be PME LEGEND goods at discounted prices displayed in EUR.
page 5 5. Parties’ Contentions A. Complainants The Complainants contend that they have satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Notably, the Complainants contend that the disputed domain names are all confusingly similar to the PME or PME LEGEND mark. The Respondents have no rights or legitimate interests in respect of the disputed domain names. The Second Complainant is the exclusive licensee and the only party entitled to exploit a PME LEGEND website and online shop. The disputed domain names were registered and are being used in bad faith. The Respondents pretend to offer PME LEGEND products at the online shops associated with the disputed domain names in order to make customers provide financial information or make payments. The Respondents even pretend to be the Second Complainant and want to create the impression that their websites are the official PME LEGEND online store. B. Respondents The Respondents did not reply to the Complainants’ contentions. 6. Discussion and Findings 6.1 Preliminary Issues A. Consolidation: Multiple Complainants The Complaint was filed by two Complainants. The First Complainant owns trademark registrations for PME and PME LEGEND and the Second Complainant is the exclusive licensee of those trademark registrations. The Panel finds that the Complainants have a common grievance against the disputed domain name registrants and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as “the Complainant” except as otherwise indicated. B. Consolidation: Multiple Domain Name Registrants The amended Complaint was filed in relation to 14 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.
page 6 As regards common control, the Panel begins by noting that all 20 disputed domain names were registered within a relatively short period of time (three months) and they follow a pattern that resembles the Complainant’s own domain name () insofar as most include “pme-legend” (with or without a hyphen) as their respective initial elements, and they all include “pme”. The Panel notes that, using the numbering in the table shown in Section 4 above, the disputed domain names 5, 16, 17, and 18 are held by one registrant (Hal P Bickel) and the disputed domain names 8, 9, and 14 are held by another registrant (Johnnie R Hutchinson). Among these, the disputed domain names 8, 9, 16 and 17 formerly resolved to websites with an identical or near-identical homepage; while the disputed domain names 8 and 9 (which were registered on the same day as each other) both redirected to the disputed domain name 16 prior to the filing of the first amended Complaint, and both redirected to the disputed domain name 17 prior to the filing of the second amended Complaint. These circumstances indicate that the disputed domain names registered in the names of Hal P Bickel and Johnnie R Hutchinson or their associated websites, or both, are under common control. The Panel also notes that the disputed domain names 1 and 15 are held by the same registrant (Abc Name). Both these disputed domain names are hosted on the same nameservers as the disputed domain name 2 (which was registered on the same day as the disputed domain name 1). The disputed domain names 1, 2, 3, and 6 have resolved to websites with an identical or near-identical homepage, the disputed domain name 3 is hosted on the same nameservers as the disputed domain name 4, and the disputed domain name 6 is hosted on the same nameservers as the disputed domain names 7, 12, and 13. The disputed domain names 12 and 13 were registered in the same English registrant name (zz zz) with the same contact details as each other. These circumstances indicate that these disputed domain names or their associated websites, or both, are under common control. Further, the Panel notes that the disputed domain name 2 formerly resolved to a website with pages nearly identical to those on the website associated with the disputed domain name 9 (held by Johnnie R Hutchinson), the disputed domain name 3 formerly redirected to the disputed domain name 8 (held by Johnnie R Hutchinson), the disputed domain name 7 was registered on the same day as the disputed domain names 8 and 9 (both held by Johnnie R Hutchinson), and the disputed domain names 11 and 19 are hosted on the same nameservers as the disputed domain names 5, 16, and 17 (held by Hal P Bickel) and 14 (held by Johnnie R Hutchinson). As for the disputed domain name 10, it incorporates the same PME LEGEND trademark as most other disputed domain names and it was registered within days of some of them, with the same Registrar as nine of them. All the disputed domain names registered with that particular Registrar, including the disputed domain name 10, have contact addresses in the same country. As for the disputed domain name 20, it incorporates the same PME LEGEND trademark as most other disputed domain names, it was registered soon after the disputed domain name 19, with the same operational element, and the same Registrar as five other disputed domain names. All the disputed domain names registered with that particular Registrar, including the disputed domain name 20, have contact addresses in the same country. In view of the above circumstances, the Panel is satisfied that all 20 disputed domain names or their associated websites, or both, 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. C. Language of the Proceeding 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 Registrar confirmed that the Registration Agreements for four
page 7 disputed domain names (, , , and ) are in Chinese while the Registration Agreements for the other 16 disputed domain names are in English. The Complainant requested that the language of the proceeding be English. Its main argument is that the disputed domain names with a Registration Agreement in Chinese belong to the same cluster of fraudulent copycat websites of which the majority were registered with a Registration Agreement in English. The Respondent did not make any submission 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. The Panel observes that the Complaint and amended Complaints were filed in English. The Panel notes that the website formerly associated with the disputed domain name was in English, from which it is reasonable to infer that the registrant of that disputed domain name understands that language. Further, the Panel has found in Section 6.1B above that all 20 disputed domain names are under common control. Given that the Registration Agreements for 16 disputed domain names are in English, it is reasonable to infer that the registrants of the other four disputed domain names are also able to understand that language. In any case, despite the Center having sent emails regarding the language of the proceeding and the Notification of the Complaint in English and Chinese, the registrants of these other four disputed domain names have not requested that Chinese be the language of the proceeding or expressed any interest in participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint would create an undue burden and unnecessary delay. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Substantive Issues Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements with respect to each disputed domain name: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. 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. See WIPO Overview 3.0, section 1.7. The Complainant has shown rights in respect of the PME and PME LEGEND trademarks for the purposes of the Policy. See WIPO Overview 3.0, section 1.2.1. The disputed domain names and wholly incorporate the PME mark as their initial element. These disputed domain names add either the letters “vip” or the word “sale” but the PME mark is clearly recognizable in both. The only additional element in these disputed domain names is a generic Top-Level Domain (“gTLD”) extension (“.shop”) which, as a standard requirement of domain name
page 8 registration, may be disregarded in the assessment of confusing similarity. Accordingly, these two disputed domain names are confusingly similar to the Complainant’s PME mark for the purposes of the Policy. See WIPO Overview 3.0, sections 1.7, 1.8, and 1.11.1. The other 18 disputed domain names wholly incorporate both the PME and PME LEGEND marks. One of these disputed domain names () contains no other element apart from a gTLD extension. Eight others add a hyphen between “pme” and “legend”, while 15 disputed domain names add a word (variously “buy”, “club”, “home”, “mark”, “online”, “outlets”, “shop”, or “sell”) or other element (variously the abbreviation “vip”, the geographic reference “nl” for the Netherlands (Kingdom of the), or the plural “s”). Despite these additions, the PME and PME LEGEND marks are clearly recognizable within all these disputed domain names. The only additional element in these disputed domain names is a gTLD extension (variously “.com”, “.shop”, “xyz”, or “.top”) which, as a standard requirement of domain name registration, may be disregarded in the assessment of confusing similarity. Accordingly, one of these disputed domain names is identical to the PME LEGEND mark, 17 of these disputed domain names are confusingly similar to the PME LEGEND mark, and all 18 of these disputed domain names are confusingly similar to the PME mark for the purposes of the Policy. See WIPO Overview 3.0, sections 1.7, 1.8, and 1.11.1. Therefore, the Panel finds the first element of the Policy has been established with respect to all 20 disputed domain names. 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. See WIPO Overview 3.0, section 2.1. In the present case, the disputed domain name resolves to an online store displaying the PME LEGEND logo and product photographs reproduced from the Complainant’s own online store and offering for sale PME LEGEND goods at discounted prices displayed in EUR. This all gives the impression that the Respondent’s online store is affiliated with, or sponsored or endorsed by, the Complainant. However, there is no relationship between the Parties. The other 19 disputed domain names are now passively held. In view of these circumstances, the Panel finds that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain names. Further, the Registrar has confirmed that the Respondent’s names and aliases are as shown in the table in Section 4 above. None of these names or aliases resembles any of the disputed domain names. Nothing on the record indicates that the Respondent has been commonly known by any of the disputed domain names. 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.
page 9 Based on the record, the Panel finds the second element of the Policy has been established with respect to all 20 disputed domain names. 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 fourth of these is as follows: “(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] web site or location.” In the present case, all disputed domain names were registered in 2024, years after the registration of the Complainant’s PME and PME LEGEND marks. All disputed domain names incorporate the PME mark while 18 disputed domain names also incorporate the PME LEGEND mark. 11 disputed domain names have resolved to online stores that displayed the Complainant’s PME LEGEND logo and reproduced product photographs from the Complainant’s own online store. The online store associated with the disputed domain name displayed terms and conditions that referred to the Second Complainant by name. In view of these circumstances, the Panel is persuaded that the Respondent registered the disputed domain names to target the Complainant’s PME mark, or PME LEGEND mark, or both. With respect to use, 11 disputed domain names (, , , , , , , , , , and ) have resolved to online stores offering for sale what purported to be the Complainant’s goods. The online stores displayed the Complainant’s PME LEGEND logo and reproduced product photographs from the Complainant’s official website giving the false impression that they were affiliated with, or sponsored or endorsed by, the Complainant. In view of these circumstances, the Panel finds that the circumstances of this case, with respect to these 11 disputed domain names, fall within the terms of paragraph 4(b)(iv) of the Policy. The Panel takes note that the use of 10 of the above 11 disputed domain names (i.e., all except ) has changed since the original Complaint was filed and that they no longer resolve to any active website. This change in use does not alter the Panel’s conclusion; if anything, it may be a further indication of bad faith. The other nine disputed domain names (, ,, , , , , , and ) may not have ever resolved to any active website. However, prior UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness of the Complainant’s PME LEGEND trademark, the similarity in the composition of these disputed domain names and others that contain the PME LEGEND mark and have been actively used in bad faith, and the similarity in the timing of their registrations, and finds that in the circumstances of this case the passive holding of these disputed domain names does not prevent a finding of bad faith under the Policy. Therefore, the Panel finds that the Complainant has established the third element of the Policy with respect to all 20 disputed domain names.
page 10 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. /Matthew Kennedy/ Matthew Kennedy Sole Panelist Date: November 21, 2024
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