WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PJ Hungary Szolgáltató Korlátolt Felelősségű Társaság v. Chenmei Mei Chen / Private Whois pepejeans-uk.org, Private Whois pepejeans-uk.net
Case No. D2012-0441
1. The Parties
The Complainant is PJ Hungary Szolgáltató Korlátolt Felelősségű Társaság of Budapest, Hungary, represented by Ubilibet, Spain.
The Respondents are Chenmei Mei Chen of Fuzhou, Fujian, China / Private Whois pepejeans-uk.org of Nassau, Bahamas, and Private Whois pepejeans-uk.net of Nassau, Bahamas.
2. The Domain Names and Registrar
The disputed domain name <pepejeans-uk.com> is registered with Jiangsu Bangning Science & technology Co. Ltd; the disputed domain names <pepejeans-uk.net> and <pepejeans-uk.org> are registered with Internet.bs Corp. (each a “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2012. On March 6, 2012, the Center transmitted by email to each Registrar a request for registrar verification in connection with the relevant disputed domain names. On March 7, 2012, Jiangsu Bangning Science & Technology Co. Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <pepejeans-uk.com> which differed from the named Respondent and contact information in the Complaint. On March 9, 2012, Internet.bs Corp transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for the disputed domain names <pepejeans-uk.net> and <pepejeans-uk.org> and providing the contact details. The Center sent an email communication to the Complainant on March 15, 2012 providing the registrant and contact information disclosed by Jiangsu Bangning Science & technology Co. Ltd, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 27, 2012. On March 15, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On March 16, 2012, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2012.
The Center appointed Douglas Clark as the sole panelist in this matter on April 30, 2012. 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 the owner of numerous registered trademarks in class 25 and other classes in numerous countries that contain and consist of the terms, “Pepe”, “Pepe Jeans” and “Pepe Jeans London”. Most of these marks were filed before the registration dates of the disputed domain names.
The disputed domain name <pepejeans-uk.com> was registered on July 19, 2011. The disputed domain names <pepejeans-uk.net> and <pepejeans-uk.org> were created on February 11, 2012.
5. Parties’ Contentions
The Complaint alleges that the disputed domain names are all identical to or confusingly similar to the registered trademarks PEPE JEANS or PEPE JEANS LONDON. The addition of “uk” does not take away from any confusing similarity. A consumer would think that the disputed domain names refer to the Complainant’s business in the United Kingdom of Great Britain and Northern Ireland.
No rights or legitimate interests
The Complainant submits that the Respondent has never sought or obtained any trademark registrations for “Pepe-Jeans” with the Chinese Trademark Office, OHIM or WIPO and that the Respondent has not been known by the disputed domain names and the Respondent has no connection with the Complainant or any of its affiliates.
Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain names the Respondent knew of the Complainant’s rights in the PEPE JEANS trademark. The unauthorized sale of products by the Respondent on the websites at the disputed domain names that gives the impression of being a genuine website by the use of the Complainant’s trademarks and images is clearly use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In the Panel’s view, this is a very simple case of clear cybersquatting for the purposes of commercial gain which the UDRP was designed to stop.
A. Language of Proceedings
The language of the Registration Agreements for <pepejeans-uk.net> and <pepejeans-uk.org> is English. The language of the Registration Agreement for <pepejeans-uk.com> is Chinese. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complainant requested that the language of the proceeding for the disputed domain name <pepejeans-uk.com> be English on the following grounds:
1. the Complainant has no familiarity with the Chinese language;
2. the language of the Registration Agreements for the disputed domain names <pepejeans-uk.net> and <pepejeans-uk.org> is English; and
3. the websites associated with the disputed domain names are written entirely in English;
In the circumstances of this case, the Panel determines that English shall be the language of the proceeding. The websites under the disputed domain names were written entirely in English and designed to do business in the United Kingdom in English. Indeed, the terms and conditions of use of the websites were written solely in English. There can be no doubt that the Respondent is able to handle these proceedings in English.
B. Respondents’ Consolidation
Paragraph 5(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder. The panel in Speedo Holdings BV v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 reviewed the relevant UDRP decisions in relation to consolidation in multiple respondents’ cases and extracted the following general principles:
1. Consolidation of multiples registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the domain names or the websites to which they resolve are subject to common control, and the panel having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient, fair and equitable to all parties.
2. The administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondents have the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.
In the present case, each of the disputed domain names incorporates the Complainant’s trade mark PEPE JEANS in its entirety together with the geographic identifier, “-uk” and three widely-used Top Level Domains (“.com”, “.net”, and “.org”). The Panel accepts the Complainant’s evidence supporting its assertion that all of the pages resolve to the same content as being indicative that the dispute domain names are subject to common control by the same person or company. In addition, the Panel notes that all the dispute domain names end with the same geographic identifier.
The Respondent had the opportunity but did not respond substantively to the Complaint.
Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainant has established more likely than not that the dispute domain names are subject to the common ownership or control of the same person or company. The Panel finds such common control justify consolidation of the Complainant’s claims against the registrants of the dispute domain names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules.
C. Identical or Confusingly Similar
The Complainant has demonstrated that it has rights in the PEPE JEANS trademark.
The disputed domain names are made up of the registered trademark “Pepe Jeans” and the geographic indicator, “uk”. All three disputed domain names are clearly confusingly similar to the registered trademark PEPE JEANS. The first part of paragraph 4(a) of the Policy is therefore satisfied.
D. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests.
For the reasons stated above, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.
The unauthorized use made by the Respondent of the websites under the disputed domain names, where the Complainant’s trademark features prominently and products bearing its trademarks are sold, make it hard to imagine that the Respondent could ever establish any rights or legitimate interests.
The Panel finds that none of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
E. Registered and Used in Bad Faith
For the same reasons as those above, the Panel has no hesitation in finding that the disputed domain names <pepejeans-uk.com>, <pepejeans-uk.net> and <pepejeans-uk.org> were registered in bad faith and are being used in bad faith.
This case, in this Panel’s opinion, clearly falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
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 <pepejeans-uk.com>, <pepejeans-uk.net> and <pepejeans-uk.org> be transferred to the Complainant.
Dated: May 16, 2012