ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION PRL USA Holdings, Inc., The Polo/Lauren Company L.P. v. Client Care, Web Commerce Communications Limited, DianaBeichDE, Gerber Christina, Bachmeier Frank, Friedmann Anke, Lulu Couch, Holtzmann Dieter, Angelika Drechsler, Anne Scherer, Stephanie Kaestner, Schmitz Tom Case No. D2023-5190 1. The Parties The Complainants are PRL USA Holdings, Inc., United States of America (“United States”), and The Polo/Lauren Company L.P., United States, represented by CSC Digital Brand Services Group AB, Sweden. The Respondents are Client Care, Web Commerce Communications Limited, Malaysia (“Alias 1”), DianaBeichDE, Germany (“Alias 2”), Gerber Christina, Germany (“Alias 3”), Bachmeier Frank, Germany (“Alias 4”), Friedmann Anke, Germany (“Alias 5”), Lulu Couch, United States (“Alias 6”), Holtzmann Dieter, Germany (“Alias 7”), Angelika Drechsler, Germany (“Alias 8”), Anne Scherer, Germany (“Alias 9”), Stephanie Kaestner, Germany (“Alias 10”), and Schmitz Tom, Germany (“Alias 11”). 2. The Domain Names and Registrars The disputed domain names
, , , , , , , and are registered with Alibaba.com Singapore E-Commerce Private Limited (“Registrar A”); the disputed domain names , , , , , , , , , , , , and are registered with Key-Systems GmbH (“Registrar B”); and the disputed domain name is registered with Gransy, s.r.o. d/b/a subreg.cz (“Registrar C”). Registrars A, B, and C are individually and collectively referred to as the “Registrars”. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2023. On December 15, 2023, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On December 18, 2023, the Registrars
page 2 transmitted by email to the Center the verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainants on December 19, 2023, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainants to either file separate complaint(s) for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity. The Complainants filed an amended Complaint on December 21, 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 Respondents of the Complaint, and the proceedings commenced on January 4, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2024. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on January 25, 2024. The Center appointed Karen Fong as the sole panelist in this matter on January 26, 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 Complainants own the trade mark registrations for RALPH LAUREN and POLO RALPH LAUREN across many jurisdictions (for convenience, referred to as the “Complainant”). The brand was started by the American fashion designer Ralph Lauren in 1967. It is now one of the leading fashion brands with 553 retails stores and 722 concession - based shops employing 23,300 people globally. The Complainant has trade mark registrations for RALPH LAUREN and POLO RALPH LAUREN in many jurisdictions including the following: - United States Trade Mark Registration No. 1412059 for RALPH LAUREN registered on October 7, 1986; - United States Trade Mark Registration No. 1935665 for POLO RALPH LAUREN registered on November 14, 1995; and - European Union Trade Mark Registration No. 4164828 for RALPH LAUREN registered on December 7, 2005. (together, individually and collectively referred to as the “Trade Mark”). The Complainant owns a logo of a polo player on a horse (the “Logo”) which it uses on its products and communications including its website at “www.ralphlauren.com”. The disputed domain names resolve/redirect to websites where the Complainant’s Trade Mark is prominently displayed and the Complainant’s branded products are purportedly offered for sale. The websites feature the Complainant’s copyrighted images, without any disclaimer clarifying the (lack of) relationship between the Parties. The details of the disputed domain names and the websites they are/were connected to (the “Websites”) are set out below:
page 3 No Domain Name Creation Date Registrant Alias No. Registrar No. Websites 1 April 30, 2023 Alias 1 Registrar A Ralph Lauren lookalike website 2 April 30, 2023 Alias 1 Registrar A Same as Domain Name 1 3 May 4, 2023 Alias 1 Registrar A Same as Domain Name 1 4 May 4, 2023 Alias 1 Registrar A Same as Domain Name 1 5 May 4, 2023 Alias 1 Registrar A Same as Domain Name 1 6 April 30, 2023 Alias 1 Registrar A Same as Domain Name 1 7 May 4, 2023 Alias 2 Registrar A Same as Domain Name 1 8 May 4, 2023 Alias 2 Registrar A Same as Domain Name 1 9 March 30, 2023 Alias 3 Registrar C Same as Domain Name 1 10 May 11, 2023 Alias 4 Registrar B Same as Domain Name 1 11 March 30, 2023 Alias 5 Registrar B Redirection to Domain Name 1 12 April 30, 2023 Alias 6 Registrar B Same as Domain Name 1 13 April 30, 2023 Alias 6 Registrar B Same as Domain Name 1 14 May 22, 2023 Alias 7 Registrar B Same as Domain Name 1 15 April 30, 2023 Alias 8 Registrar B Same as Domain Name 1 16 April 30, 2023 Alias 8 Registrar B Same as Domain Name 1 17 April 30, 2023 Alias 9 Registrar B Same as Domain Name 1 18 April 30, 2023 Alias 9 Registrar B Same as Domain Name 1 19 May 4, 2023 Alias 10 Registrar B Same as Domain Name 1 20 May 4, 2023 Alias 10 Registrar B Same as Domain Name 1 21 ralphlauren-turkiye.com> May 4, 2023 Alias 10 Registrar B Same as Domain Name 1 22 March 30, 2023 Alias 11 Registrar B Same as Domain Name 1 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.
page 4 Notably, the Complainant contends that the disputed domain names are confusingly similar to the Trade Mark, that the Respondents have no rights or legitimate interests with respect to the disputed domain names, and that the disputed domain names have been registered and are being used in bad faith. The Complainant requests transfer of the disputed domain names to the Complainant. B. Respondents The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Preliminary Issues A. Consolidation: Multiple Respondents The amended Complaint was filed in relation to 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. As regards common control, the Panel notes the following: 1. All 22 disputed domain names were registered within a three-month period between March to May 2023 with many of them being registered on the same day; 2. Disputed domain names 1, 2, 6, 12, 13,15-18 all share the same registration date of April 30, 2023, whilst disputed domain names 3, 4, 5, 7, 8, 19-21 all share the registration date May 4, 2023. Disputed domain names 9, 11 and 22 share the registration date March 30, 2023. 3. 21 of the disputed domain names resolve to, and one of the disputed domain names redirects to geo-restricted impersonation websites which are only accessible from the country indicated in the disputed domain name. The Websites are almost identical to each other. They all display the Logo, the Trade Mark, and copyrighted images of RALPH LAUREN branded clothing offered for sale at discounted prices. 4. The composition of all 22 disputed domain names follow the same pattern of combining the Trade Mark and a geographical term. 5. Alias 1 has been named in a number of UDRP decisions involving multiple respondents, suggesting that this may be a pattern of behaviour. (e.g., LEGO Juris A/S v. Gruenewald Stephanie; Engel Dominik; Koch Anja; and Client Care, Web Commerce Communications Limited, WIPO Case No. D2023-2881, and Mizuno Corporation v. Client Care, Web Commerce Communications Limited, Domain Admin, Whoisprotection.cc, Ziegler Jana, WIPO Case No. D2023-3245) The evidence submitted points to the fact that the disputed domain names are subject of common control by the Respondents. The above pattern evidences common conduct based on the registration and use of the disputed domain names and that such conduct interferes with the Trade Mark. Furthermore, the Complainant’s claims against the disputed domain names involve common questions of law and fact. The
page 5 Respondents had the opportunity but did not respond substantively to the Complaint. 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. 6.2 Substantive Issues 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 trade mark and the disputed domain name. WIPO Overview 3.0, section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trade mark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the entirety of the Trade Marks are reproduced within the disputed domain names. Accordingly, these disputed domain names are confusingly similar to the Trade Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. While the addition of the terms here, “uae”, “argentina”, “athens”, “australia”, “colombia”, “cz”, “deutschland”, “espana”, “greece”, “hrvastska”, “ireland”, “italia”, “mexico”, “norge”, “portugal”, “romania”, “turkiye”, “uk”, “usa”, “madrid”, and “indonesia”, 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 Trade Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Based on the available record, the Panel finds the first element of the Policy has been established. 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. 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. Moreover, the nature of the disputed domain names is inherently misleading as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. WIPO Overview 3.0, section 2.5.1. Based on the available record, the Panel finds the second element of the Policy has been established.
page 6 C. Registered and Use 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. In the present case, the Panel notes that the Respondent must have been aware of the Trade Mark when it registered the disputed domain names given the fame of the Trade Mark and the fact that all of the disputed domain names were impersonation websites. It is therefore implausible that the Respondent was unaware of the Complainant when it registered the disputed domain names after that date. In the WIPO Overview 3.0, section 3.2.2 states as follows: “Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.” The fact that there is a clear absence of rights or legitimate interests coupled with the Respondent’s choice of the 22 disputed domain names without any explanation is also a significant factor to consider (as stated in WIPO Overview 3.0, section 3.2.1). The disputed domain names fall into the category stated above and the Panel finds that registration is in bad faith. The disputed domain names are also being used in bad faith. The unauthorised impersonation of the Complainant’s website offering for sale selling discounted products bearing the Trade Mark is a clear indication of use for illegal activity. Either the products sold are counterfeit or no products are being delivered after payment. Further, the large number of disputed domain names involved is an indication of a serial cybersquatting ring involved in illegal activity. The content of the Websites is calculated to give the impression it has been authorized by or connected to the Complainant when this is not the case. The websites were set up to deliberately mislead Internet users that they are connected to, authorised by, or affiliated with the Complainant. From the above, the Panel concludes that the Respondent has intentionally attempted to attract, for commercial gain, by misleading Internet users into believing that the Respondent’s websites and the products offered for sale and sold on them are those of or authorised or endorsed by the Complainant. The Panel therefore finds that the disputed domain names have been registered and are being used in bad faith under paragraph 4(b)(iv) of the Policy. Based on the available record, the Panel finds the third element of the Policy has been established.
page 7 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 Complainants. /Karen Fong/ Karen Fong Sole Panelist Date: February 19, 2024
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