ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION PRL USA Holdings, Inc. and The Polo/Lauren Company L.P. v. 杨家锋 (Yang Jia Feng) and 吴璐璐 (Wu Lu Lu) Case No. D2022-2844 1. The Parties The Complainants are PRL USA Holdings, Inc. and The Polo/Lauren Company L.P., United States of America ("United States"), represented by CSC Digital Brand Services Group AB, Sweden. The Respondents are 杨家锋 (Yang Jia Feng) (the "First Respondent") and 吴璐璐 (Wu Lu Lu) (the "Second Respondent"), China. 2. The Domain Names and Registrar The disputed domain names
, , , , , and are registered with DNSPod, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on July 29, 2022. On August 3, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 5, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrants and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainants on August 5, 2022, providing the registrants and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint in English on August 10, 2022. On August 10, 2022, the Complainants requested that the disputed domain names and be added to the Complaint. On August 11, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names and . On August 12, 2022, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details. page 2 On August 5, 2022, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On August 10, 2022, the Complainants confirmed their request that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding. 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 August 16, 2022. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2022. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on September 6, 2022. The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on September 22, 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 Complainants are both wholly-owned subsidiaries of the Ralph Lauren Corporation and are the owners of the POLO RALPH LAUREN, RALPH LAUREN, and LAUREN trademark registrations across various jurisdictions. The RALPH LAUREN fashion brand was originally created by Ralph Lauren in 1967, and was launched as a neckwear line. The brand has subsequently expanded into a global fashion business, offering a wide array of fashion products for sale to customers worldwide via 548 retail stores and 650 concession-based shops-within-shops. The Complainants' group employs 20,300 people globally and achieved net revenues of over USD 4.4 million in fiscal year 2021. The Complainants provide evidence that they own a large, international portfolio of trademark registrations for POLO RALPH LAUREN, RALPH LAUREN, and LAUREN including in the Respondents' jurisdiction China. Examples of such registrations include United States Trademark Registration number 1412059 for the word mark RALPH LAUREN, registered on October 7, 1986; Chinese Trademark Registration number 1620757 for the word mark POLO RALPH LAUREN, registered on August 21, 2001; and United States Trademark Registration number 2419959 for the word mark LAUREN, registered on January 9, 2001. The relevant registered trademarks adduced by the Complainants were successfully registered prior to the date of registration of the disputed domain names by the Respondents, which are, respectively, May 27, 2021 for the disputed domain name , April 14, 2022 for the disputed domain name , April 15, 2022 for the disputed domain name , and April 18, 2022 for the disputed domain names , , and . The Complainants submit evidence that the disputed domain name directs to an active website, which presents itself as a website operated by the Complainants, prominently uses the POLO RALPH LAUREN, RALPH LAUREN, and LAUREN marks, as well as images and contents from the Complainants' official website, and offers for sale products branded with the Complainants' trademarks at heavily discounted prices. The Complainants provide evidence that the disputed domain names and previously also directed to identical commercial websites but currently direct to inactive websites. The Panel notes that the disputed domain names , , and direct to inactive websites. page 3 5. Parties' Contentions A. Complainants The Complainants essentially contend that the disputed domain names are confusingly similar to its trademarks for POLO RALPH LAUREN, RALPH LAUREN, or LAUREN, that the Respondents have no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered, and are being used in bad faith. The Complainants claim that their trademarks are intensively used and globally famous in the fashion industry and provide printouts of their official website and of their marketing and related materials. Moreover, the Complainants provide evidence that the disputed domain name is linked (and disputed domain names and were previously also linked) to an active website, which they claim the Respondents are operating as an e-commerce website misleadingly passing itself off as the website of the Complainants. In this context, the Complainants essentially claim that the Respondents are unlawfully misrepresenting their website as operated by the Complainants, using the Complainants' trademarks, images, and content, which is likely protected by copyright, and offering for sale products which are presumably counterfeit products. Moreover, the Complainants argue that the Respondents are also using those same disputed domain names to potentially conduct phishing activities by requiring unsuspecting Internet users to register on their website, thereby obtaining personal and financial information. As to the other disputed domain names, namely , , and , the Complainants claim that the Respondents are holding them passively and in bad faith. The Complainants finally also claim in their amended Complaint that the Respondents have engaged in a pattern of trademark-abusive registrations, by registering various domain names incorporating famous third party brands. The Complainants essentially contend that the registration and use of the disputed domain names in such circumstances constitutes registration and use in bad faith. The Complainants request the transfer of the disputed domain names. B. Respondents The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 First Preliminary Issue: Consolidation of Complainants The Complainants in this administrative proceeding request consolidation in regard to the Complainants. In this regard, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") states in section 4.11.1: "In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation." The Panel has carefully reviewed all elements of this case, giving particular weight to the following elements: the Complainants are both wholly-owned subsidiaries of Ralph Lauren Corporation, and therefore form part of the same organization and have a common grievance of trademark-abusive domain name registration and use against the Respondents. As such, the Panel concludes that all Complainants are the target of common conduct by the Respondents and both have common grievances regarding the use of the POLO RALPH LAUREN, RALPH LAUREN, and LAUREN trademarks in the disputed domain names by the Respondents. The Panel accepts that permitting the consolidation would be fair and equitable to all Parties involved and would safeguard procedural efficiency. The Panel therefore grants the request for consolidation of the page 4 Complainants and shall hereafter refer to the Complainants jointly as "the Complainant". 6.2 Second Preliminary Issue: Consolidation of Respondents The Complainant requests consolidation in regard to the Respondents, as the disputed domain names are currently owned by seemingly multiple registrants. In this regard, the WIPO Overview 3.0 states in section 4.11.2: "Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario." (See in this regard also prior UDRP decisions such as Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281). The Panel has carefully reviewed all elements of this case, giving particular weight to the following elements and facts: (A) the six disputed domain names were all registered through a privacy service with the same Registrar; (B) the Respondents both use the same telephone number in their registration information; (C) the disputed domain names and previously, while still owned by the Second Respondent, directed to the same website as the website currently hosted by the First Respondent at disputed domain name ; (D) the disputed domain names , , , and were all registered on very close dates: i.e. April 18, 2022 and April 15, 2022, while the first two of these disputed domain names were registered by the Second Respondent and the latter were registered by the First Respondent. The Panel also notes that the Respondents did not submit any arguments and did not contest the request for consolidation. In view of these elements, the Panel finds that the Respondents are the same or connected and that the websites linked to the disputed domain names are under common control, that in this case consolidation would be fair and equitable to all Parties involved and would safeguard procedural efficiency. The Panel therefore decides to grant the request for consolidation of the Respondents and shall hereafter refer to the Respondents jointly as "the Respondent". 6.3 Third Preliminary Issue: Language of the Proceeding Pursuant to paragraph 11(a) of the Rules, 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. According to the Registrar's verification response, the language of the Registration Agreements for the disputed domain names is Chinese. Nevertheless, the Complainant filed its Complaint and its amended Complaint in English, and requests that English be the language of the proceeding. The Panel notes that the Respondent did not comment on the language of the proceeding and did not submit any arguments on the merits of this proceeding. In considering this request, the Panel has carefully reviewed all elements of this case, and deems the following elements particularly relevant: the Complainant's request that the language of the proceeding be English; the lack of comment on the language of the proceeding and the lack of response on the merits of this proceeding by the Respondent (the Panel notes that the Respondent was invited by the Center in Chinese and English and in a timely manner to present its comments and response in either Chinese or English, but chose not to do so); the fact that the disputed domain names are written in Latin letters and not in Chinese characters and that the website linked to the disputed domain name (and previously also the identical websites that were hosted at disputed domain names and ) is exclusively in English, so that the Panel concludes that the Respondent is capable of writing and understanding English; and, finally, the fact that Chinese as the language of proceeding could lead to unwarranted delays and additional costs for the Complainant. In view of all these elements, the Panel grants the Complainant's request, and decides that the language of this proceeding shall be English. page 5 6.4 Discussion and Findings on the Merits The Policy requires the Complainant to prove three elements: (a) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (b) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (c) the disputed domain names have been registered and is being used in bad faith. Based on the evidence and arguments submitted, the Panel's findings are as follows: A. Identical or Confusingly Similar The Panel finds that the Complainant has provided sufficient evidence that it has valid rights in its marks for POLO RALPH LAUREN, RALPH LAUREN, and LAUREN, based on its use and registration of the same as trademarks in several jurisdictions, as stated above. Further, as to confusing similarity of the disputed domain names with the Complainant's POLO RALPH LAUREN, RALPH LAUREN, and LAUREN marks, the Panel finds: (A) that the disputed domain names and consist of only the Complainant's POLO RALPH LAUREN mark, so that they should be considered identical to such trademark; and (B) that the disputed domain names , , , and were each created by the Respondent by adding the additions "brand", "usa", "go", or "us" to the Complainant's RALPH LAUREN or LAUREN trademarks; and, additionally, for disputed domain names and , by intentionally misspelling the Complainant's RALPH LAUREN and LAUREN trademarks, by replacing the letter "n" with the letter "u". The Panel concludes that the disputed domain names each contain the Complainant's trademarks for POLO RALPH LAUREN, RALPH LAUREN, or LAUREN, which remain easily recognizable in spite of the abovementioned additions and/or intentional misspellings, and are therefore confusingly similar to the Complainant's POLO RALPH LAUREN, RALPH LAUREN, and LAUREN marks. The Panel also notes that the applicable generic Top-Level Domains are viewed as a standard registration requirement, and may as such be disregarded by the Panel, see in this regard the WIPO Overview 3.0, section 1.11.1. Finally, the Panel also finds that any hyphens in the disputed domain names may be disregarded as they are considered merely as a punctuation mark (see also Vente-Privee.Com and Vente-Privee.com IP S.à.r.l. v. 崔郡 (jun cui) WIPO Case No. D2021-1685). Accordingly, based on the above elements, the Panel finds that the disputed domain names are confusingly similar to the Complainant's trademarks. The Panel decides that the Complainant has satisfied the requirements of the first element under the Policy. B. Rights or Legitimate Interests On the basis of the evidence and arguments submitted, the Panel accepts that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee, or distributor of the Complainant, is not a good faith provider of goods or services under the disputed domain names and is not making legitimate noncommercial or fair use of the disputed domain names . The Panel also notes that the Respondent is not commonly known by the disputed domain names. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply. Further, upon review of the facts and the evidence submitted in this proceeding, the Panel notes that the disputed domain name (and previously also the disputed domain names and ) directs to an active website which shows a clear intent on the page 6 part of the Respondent to misleadingly pass it off as the Complainant's website. In fact, this website prominently displays the Complainant's trademarks and uses the Complainant's own images and content likely protected by copyright, thereby misleading consumers into believing that the Respondent is at least licensed by, or affiliated with the Complainant and/or its trademarks. Moreover, such website also requests unsuspecting Internet users to register an account and therefore poses a risk of fraud and phishing, which may lead unsuspecting Internet users to share sensitive information such as identity and payment information with the Respondent. Moreover, the Panel also accepts that, given the unclear origin and the heavily discounted prices, it is very likely that the products offered by the Respondent on such website are counterfeit products. It is clear to the Panel from the foregoing elements that the Respondent is not a good faith provider of goods or services under the disputed domain name (and previously, while they were linked to identical websites, also under the disputed domain names and ), see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Furthermore, the Complainant provides evidence that the disputed domain names , , , , and direct to inactive webpages. In this regard, the Panel finds that holding a domain name passively, without making any use of it, does not confer any rights or legitimate interests in the disputed domain names on the Respondent (see earlier UDRP decisions such as Bollore SE v. 赵竹飞 (Zhao Zhu Fei), WIPO Case No. D2020-0691 and Vente-Privee.Com and Vente-Privee.com IP S.à.r.l. v. 崔郡 (jun cui), WIPO Case No. D2021-1685). Given the abovementioned elements, the Panel concludes that the Respondent's use does not constitute legitimate noncommercial or fair use of the disputed domain names. On the basis of the foregoing elements, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy. C. Registered and Used in Bad Faith Given the very widespread reputation and fame of the Complainant's prior registered trademarks, the Panel finds that the subsequent registration of the disputed domain names clearly and consciously targeted the Complainant's prior registered trademarks for POLO RALPH LAUREN, RALPH LAUREN, and LAUREN. The Panel deducts from these efforts to consciously target the Complainant's prior registered trademarks that the Respondent knew, or at least should have known, of the existence of the Complainant's trademarks at the time of registering the disputed domain names. The Panel also considers the disputed domain names to be so closely linked and so obviously connected to the Complainant and its trademarks that the Respondent's registration of these disputed domain names points toward the Respondent's bad faith. In the Panel's view, these 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 name (and previously also the disputed domain names and ) directs to an active website which shows a clear intent on the part of the Respondent to misleadingly pass it off as the Complainant's website, displaying the Complainant's trademarks, official content and images (thereby likely violating the Complainant's copyrights) and offering products for sale that are likely counterfeit products. The Panel concludes from these facts that the Respondent is intentionally attracting Internet users for commercial gain to such website, by creating consumer confusion between the website 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. Furthermore, as to the disputed domain names , , , , and , these all direct to inactive websites. In this regard, the WIPO Overview 3.0, section 3.3 provides: "From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or "coming soon" page) would not prevent a finding of bad faith under the doctrine of passive holding". The Panel has reviewed all elements of this case, and attributes particular relevance to the fact that such disputed domain names are identical or confusingly similar to the Complainant's trademarks, to the high degree of distinctiveness and well-established fame of the page 7 Complainant's trademarks, and to the unlikelihood of any good faith use to which the disputed domain names may be put by the Respondent. Moreover, the Panel also finds that the Complainant sufficiently proves that the Respondent has been engaged in a pattern of trademark-abusive domain name registrations. In this regard, the Panel refers to the reverse WhoIs results provided by the Complainant, from which it appears that the Respondent has also registered a number of domain names incorporating globally famous third party brands such as ADIDAS, LEGO, and MATTEL. In these circumstances, the Panel considers that the passive holding of the disputed domain names by the Respondent constitutes use of the disputed domain names in bad faith. The preceding elements lead the Panel to conclude that the Respondent is using the disputed domain names in bad faith. The Panel therefore finds that it has been demonstrated that the Respondent has used, and is using the disputed domain names in bad faith. Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore finds that the Complainant has satisfied the requirements of the third requirement under 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 names, , , , , , and be transferred to the Complainant. /Deanna Wong Wai Man/ Deanna Wong Wai Man Sole Panelist Date: September 29, 2022
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