ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Manduka LLC v. Bach Johanna, Beike Dieter, Brandt Uta, Wexler Mathias, Kalb Benjamin, and Client Care, Web Commerce Communications Limited Case No. D2023-3098 1. The Parties The Complainant is Manduka LLC, United States of America ("United States"), represented by SafeNames Ltd., United Kingdom. The Respondents are Bach Johanna, Germany; Beike Dieter, Germany; Brandt Uta, Germany; Wexler Mathias, Germany; Kalb Benjamin, Germany; and Client Care, Web Commerce Communications Limited, Malaysia. 2. The Domain Names and Registrars The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with Alibaba.com Singapore E-Commerce Private Limited (the "First Registrar"). page 2 The disputed domain names ("xn--mandukaespaa-khb.com"), (""), ("xn--mandukajgasznyeg-dvb01o.com"), (""), and ("") are registered with Gransy, s.r.o. d/b/a subreg.cz. (the "Second Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 17, 2023. On July 19, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 19, 2023, the Second 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 (Not Disclosed) and contact information in the Complaint. On July 20, 2023, the First 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 (Not Disclosed) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 20, 2023, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 24, 2023. 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 August 3, 2023. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 24, 2023. The Center appointed John Swinson as the sole panelist in this matter on September 6, 2023. 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 1997, is headquartered in California, and operates in the fitness and wellness market. The Complainant has a well-known product known as the Manduka Pro yoga mat. The Manduka name derives from the founder's teacher and mentor, Shandor Remete, whose core practice and teaching includes the ancient Hatha Yoga Pradipika pose, Mandukasana. The Complainant owns a portfolio of trademark registrations, including United States Registration No. 85805464 for MANDUKA that has a registration date of August 27, 2013. The Complainant operates an online store at the domain name . The Complainant registered this domain name in 2002. According to the Complainant, the website attached thereto receives over 200,000 visits per month. The Respondents did not file a Response, so little information is known about them. page 3 The Sixth Respondent, Client Care, Web Commerce Communications Limited, has been a respondent in many prior cases under the Policy, several of which involve the advertising and sale of athletics products and clothing. See, for example, New Balance Athletics, Inc. v. Client Care, Web Commerce Communications Limited, WIPO Case No. D2022-0908, and PUMA SE v. Dreher Barbara, Faerber Matthias, and Client Care, Web Commerce Communications Limited, WIPO Case No. D2022-0112; and Alpargatas S.A., Alpargatas Europe, S.L.U. v. Quinton Baker, Jovin Lim, Web Commerce Communications Limited, Client Care, WIPO Case No. D2022-1500. This dispute involves 81 disputed domain names. These disputed domain names were registered on various dates between January 2023 and July 2023. The majority of the disputed domain names resolve to online stores that purport to sell the Complainant's products. These websites are similar in structure and design, with mostly identical content (but with pricing in a currency matching the geographical term used in the corresponding disputed domain name). On these websites, the Complainant's MANDUKA trademark is prominently used, and the websites create the impression that they all are operated by the Complainant. At the present time, a small number of the disputed domain names resolve to a website that displays an error message. 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 names. Notably, the Complainant contends that the Respondents deceive Internet users by impersonating the MANDUKA brand with copycat online shops at the disputed domain names. The disputed domain names have been used to resolve to websites which illegitimately copy the MANDUKA logo and product images, offering to sell heavily discounted goods under the Complainant's MANDUKA brand. Such conduct is clearly calculated to give online users the false impression that such resolving sites' content is controlled and authorized by the Complainant when this is not the case. B. Respondent The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the disputed domain name is 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 name; and (iii) the disputed domain name has been registered and is being used in bad faith. The onus of proving these elements is on the Complainant. Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and page 4 documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Consolidation - Multiple Domain Names and Multiple Respondents The Complainants request the consolidation of the proceedings in respect of the disputed domain names, maintaining that all of them belong to the same owner, because the websites to which the disputed domain names resolve are very similar, and the disputed domain names have all been registered within a short period and have the same or similar structure, and the disputed domain names are registered with two Registrars. Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes, and 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. Where a complaint is filed against multiple respondents, UDRP panels typically will look at whether the domain names or corresponding websites are subject to common control, and whether the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. The Center has discharged its duties to notify the persons listed as registrants of the disputed domain names. None of the listed registrants of the disputed domain names has submitted a formal Response or objected to the consolidation request of the Complainants. The Sixth Respondent, Client Care, Web Commerce Communications Limited, is listed as the registrant of 76 disputed domain names. The remaining five disputed domain names have ownership details for different registrants, but with common features. For example, each of these five disputed domain names is an internationalised domain name of similar composition, registered with the Second Registrar, is hosted on IP addresses provided by the company Inter Connects, and each has ownership details for an individual based in a small German town. The email address of the name owner uses the same Chinese email service provider (<@yeah.net>), and each email address similarly features random letters and numbers with no correlation to the purported registrant name. All the disputed domain names are hosted on a server with the same IP address, and those that are operative resolve to websites that have a design that is almost identical and common text. For example, the privacy policy for each such website is identical. These circumstances show that it is more likely than not that the disputed domain names are under common control. The Respondents have not advanced any reasons why it may not be equitable to allow the consolidation of the dispute domain names. Consolidation would lead to greater procedural efficiency, and the Panel is not aware of any reasons why the consolidation would not be fair and equitable to all parties. The above satisfies the Panel that the consolidation of the Respondents and the disputes related to the disputed domain names in a single proceeding is justified and appropriate in the circumstances. Therefore, the Panel decides to allow the consolidation of the disputes in relation to all the disputed domain names in the present proceeding. The Panel will refer to all named Respondents as the Respondent. page 5 B. 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the mark is recognizable within the disputed domain names. Accordingly, the disputed domain names are identical or confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. While the addition of other terms, here, for example, "mexico", "yoga", and "mat", may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Similarly, the misspelling found in the disputed domain name does not prevent a finding of confusing similarity. WIPO Overview 3.0, section 1.9. Based on the available record, the Panel finds the first element of the Policy has been established. C. 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. While 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 often-impossible 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. 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. Having reviewed the 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. Some of the disputed domain names are currently inactive, but they reflect the same naming pattern and are under common control. Therefore, without any plausible explanation for their registration, they appear as part of an attempt to "corner the market" in domain names that reflect the MANDUKA trademark. In prior decisions involving the same Respondent, the panel in that case considered whether the test set out in the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the "Oki Data test") applied and decided that it did not. See, for example, Alpargatas S.A., Alpargatas Europe S.L.U v. Sabrina Diederich / Web Commerce Communications Limited, WIPO Case No. D2022-0942. The same result and rationale also apply in this case. page 6 In the present case, the Complainant asserts that the websites at the disputed domain names are fake impersonation shops using the Complainant's official logo and product imagery, allegedly offering the Complainant's products, and asking for sensitive information. The Complainant asserts (and the Respondent does not deny) that: "The Complainant's products are advertised as being heavily discounted. It is highly likely that, as an online shop, online users would need to enter sensitive payment information upon checkout. Regardless, there is evidence of harvesting personal details from online users where the user is requested to 'create an account'." Panels have held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The use being made of the disputed domain names cannot be characterized as a bona fide offering of goods or services. The websites at most of the disputed domain names prominently featured the Complainant's logo and products, in what appears to be fraudulent online shops, with no disclaimer as to Respondents' lack of relationship or affiliation with the Complainant and with no contact details provided for the Respondent. Based on the available record, the Panel finds the second element of the Policy has been established. D. 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. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent's registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. In the present circumstances, the Panel concludes that the registration and use of the disputed domain names are in bad faith. The Respondent's conduct demonstrates the Respondent's knowledge of the Complainant and its trademark. By registering many domain names that include the Complainant's well-known trademark, and then by using the disputed domain names to impersonate the Complainant, demonstrates that the Respondent specifically knew of and targeted the Complainant. On multiple occasions over the past two years, the Respondent, Client Care, Web Commerce Communications Limited, has been found by UDRP panels to have engaged in abusive domain name registrations. In fact, the Respondent has lost over 150 cases under the Policy. In the Panel's view, such pattern of recent abusive conduct, repeatedly registering trademark-abusive domain names, constitutes further evidence of bad faith. See also New Balance Athletics, Inc. v. Client Care, Web Commerce Communications Limited, WIPO Case No. D2022-0908, and Alpargatas S.A., Alpargatas Europe, S.L.U. v. Quinton Baker, Jovin Lim, Web Commerce Communications Limited, Client Care, WIPO Case No. D20221500, where a similar finding was made against the present Respondent. See also Swarovski Aktiengesellschaft v. Client Care, Web Commerce Communications Limited, WIPO Case No. D2023-2685. Lastly, as in this consolidated instance, the Respondent is often associated with, more likely than not, fake registrant details, illustrating a likely intent to frustrate proceedings like this one by registering multiple infringing domain names under distinct registrant details. See in this regard, Stephen Moffitt, Keith Moffitt, and CS Calzature Limited v. Client Care, Web Commerce Communications Limited, Petra REINHARDT, Bjork Nyberg, Johanna BUMGARNER, Steffen SANKT, Olga Khalid, Holm Maria, Anna Arvidsson, Bjork Elliot, Veronica Valentina, Hermansson Hellstrom, Anita Hellstrom, Ebba Melikssa, Obeirg Roni, Gabriele page 7 EGGERS, Katharina JAEGER, Heike ROTH, Kristin WIRTZ, Ines GERSTEN, Thomas BOHM, Ulrich WOLF, Tanja SCHREIBER, Florian DRESCHER, Ulrike OSTERHAGEN, Katrin SOMMER, and Marie VOGEL, WIPO Case No. D2023-2407. The status of some of the disputed domain names (presenting an error message) does not prevent a finding of bad faith, given the Respondent's failure to participate in this proceeding, and the Respondent's attempt to corner the market in respect of domain names involving the Complainant's trademark. WIPO Overview 3.0, section 3.3. Based on the facts in the Complaint, which the Respondent does not rebut, the Panel finds that both paragraphs 4(b)(ii) and (iv) of the Policy apply in the present case. Based on the available record, the Panel finds the third element of the Policy has been established. 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. /John Swinson/ John Swinson Sole Panelist Date: September 19, 2023
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