THE RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAMES<\/strong><\/p>\nThe Complainant asserts that it has no relationship whatsoever with the Respondent and has never licensed or otherwise authorized the Respondent to use the well-known “TOMMY HILFIGER”, “TOMMY” and “HILFIGER” trademarks on the websites or in the disputed domain names. The Complainant has exclusive trademark rights which predate the registration of the disputed domain names.<\/p>\n
The Respondent cannot demonstrate any legitimate offering of goods or services under the trademarks. All 84 (eighty-four) disputed domain names were registered between November of 2021 and June of 2023.<\/p>\n
The Respondent cannot demonstrate any legitimate offering of goods or services in this case. In the absence of a license or permission from the Complainant, no actual or contemplated bona fide or legitimate use of the disputed domain names can reasonably be claimed.<\/p>\n
There is no credible evidence that the Respondent is commonly known by the disputed domain names.<\/p>\n
The Complainant alleges that the Respondent is not making any noncommercial or fair use of the disputed domain names in the circumstances of this dispute.<\/p>\n
In particular, the Complainant claims that the disputed domain names have been and are being used to offer multiple goods for sale. Since the use made of the websites by the disputed domain names to offer goods for sale to consumers is clearly commercial, it cannot be considered a legitimate non-commercial or fair use.<\/p>\n
The Complainant notes that a Respondent’s use of a domain name will not be considered “Fair” if it falsely suggests affiliation with the trademark owner and this is the case in the present dispute.<\/p>\n
The Respondent registered 84 disputed domain names that incorporate Complainant’s Trademark(s) in its entirety, with the addition of a geographical term or a generic word that is related to Complainant’s business. The Respondent has registered and used the disputed domain names for the purpose of passing itself off as being (connected with) the Complainant by prominently featuring one of Complainant’s Trademarks at the top of every page, on each of its substantially identical websites in connection with the sale of clothing.<\/p>\n
Confusion is heightened by the prominent use of Complainant’s Trademarks on every page of the 84 disputed domain names, thereby suggesting a commercial relation with the Complainant where none exists.<\/p>\n
The Respondent also displays similar text messages such as the ones displayed at the top of Complainant’s own website.<\/p>\n
Furthermore, the Respondent placed a false and misleading copyright notice in the footer of all disputed domain names, claiming it owns copyrights in the content\/products offered on the websites (for example: “Copyright © 2023 tommyoutletaustralia Powered By tommyoutletaustralia.com”).<\/p>\n
The Complainant also alleges that the Respondent fails to comply with the “Oki Data Test” criteria and par. 2.8.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), namely “accurately and prominently disclose the registrant’s relationship with the trademark holder”.<\/p>\n
While some of the disputed domain names are inactive at the time of filing this Complaint, the Complainant has made a prima facie case that the currently inactive domain names have not been used in a manner which confers any rights or legitimate interests on the Respondent. The disputed domain names were used to impersonate the Complainant and impersonation does not create rights or legitimate interest.<\/p>\n
THE DISPUTED DOMAIN NAMES WERE REGISTERED AND BEING USED IN BAD FAITH<\/strong><\/p>\nThe Complainant’s submissions on the bad faith element of the Policy can be summarized as follows:<\/p>\n
\n- The Respondent has engaged in a pattern of conduct where it has registered domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain names. Registering 84 domain names that incorporate the Complainant’s trademark constitutes a pattern of conduct directed against the Complainant, stopping it from reflecting its trademark in the disputed domain names. The Complainant claims that the Respondent is known as a serial cybersquatter and appeared in numerous previous UDRP disputed, including no less than 40 CAC disputes.<\/li>\n
- By using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or of a product or service on its web site. The Complainant claims that its marks are well-known citing previous UDRP decisions. The disputed domain names have all been registered between November of 2021 and June of 2023. According to the Complainant, it is not feasible that the Respondent could ignore the Complainant's reputation and business when it registered the disputed domain names. <\/li>\n
- The Respondent has registered 84 domain names which incorporate Complainant’s well-known trademarks, merely adding generic and\/or geographical terms. The prominent use of Complainant’s Trademark(s) in the disputed domain names and on the content of the corresponding websites clearly creates a likelihood of confusion for Internet users who visit Respondent’s domain names. The similarity of the products offered on the websites, demonstrates that the Respondent was seeking to cause confusion. The false impression is increased by the incorporation of the Complainant’s Trademark(s) in the 84 disputed domain names, the similar goods (apparel) being offered, and the unauthorized featuring of the Complainant’s trademarks, most notably the “TOMMY HILFIGER” and the “Tommy Hilfiger flag logo”, in a prominent manner on the websites related to the disputed domain names. A number of disputed domain names have become inactive during the course of this proceeding. However, the Complainant has provided evidence that the disputed domain names have been registered and used in bad faith, namely, to impersonate the Complainant. Moreover, non-use of a domain name, especially one which incorporates an extremely famous trademark such as those of Complainant, does not prevent a finding of bad faith under the passive holding doctrine. <\/li>\n
- The content of any website to which the disputed domain names direct: the Respondent has sought to impersonate and pass itself off as Complainant or one of its local outlets and a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the disputed domain names;<\/li>\n
- Use of the privacy services in the circumstances of this case also indicates bad faith of the Respondent.<\/li>\n<\/ol>\n
Therefore, the Complainant claims the disputed domain names were registered and being used in bad faith.<\/p>",
"other_legal_proceedings": "
The Panel while conducting its limited independent research discovered that some of the disputed domain names on the date of this decision resolve to a web page that contains information about legal proceedings in the US and the following message:<\/p>\n
\"Plaintiffs have charged Defendants with violations of United States federal and state laws prohibiting trademark infringement and counterfeiting<\/strong>\".<\/p>\nIt therefore possible that there is a legal proceeding in the US in respect of some of the disputed domain names.<\/p>\n
Under par. 18 (a) of the UDRP Rules the Panel in the event of any legal proceedings initiated prior to or during an administrative proceeding has a discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.<\/p>\n
The Panel decides to proceed to a decision as it finds that any possible pending legal proceeding does not affect its own analysis of this case.<\/p>\n
The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.<\/p>",
"no_response_filed": "
The Complainant's contentions are summarized in the Factual Background section above.<\/p>\n
NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED. <\/p>",
"rights": "
The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).<\/p>",
"no_rights_or_legitimate_interests": "
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).<\/p>",
"bad_faith": "
The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).<\/p>",
"procedural_factors": "
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.<\/p>\n
Preliminary Issues<\/strong><\/p>\nI. Consolidation and identity of Respondent - “Web Commerce Communications Limited”<\/strong><\/p>\nThe Complainant requests consolidation of all the disputed domain names into a single dispute. The Complainant asserts that 22 (twenty-two) of the disputed domain names are registered by a single registrant identified as “Web Commerce Communications Limited” and all the disputed domain names (including the remaining 62 domain names) are owned or under the effective control of a single person or entity, or a group of individuals acting in concert. <\/p>\n
The Complainant’s arguments in favor of consolidation can be summarized as follows:<\/p>\n
- All 84 disputed domain names share the same Registrar – “ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED”;<\/p>\n
- All 84 disputed domain names use a similar naming pattern, namely the entirety of Complainant’s trademark, accompanied by a geographical term and\/or a generic term, sometimes divided by a dash;<\/p>\n
- The websites by the disputed domain names share a similar fake copyright notice at the bottom;<\/p>\n
- The websites by the disputed domain names use a similar template;<\/p>\n
- Two of the named registrants share the same email address;<\/p>\n
- For all the disputed domains except one (tommyhilfigerthailand.com), the Respondent made the exact same mistake in the WHOIS data: only providing an identical town name two or three times, instead of any real address (e.g. street name and house number);<\/p>\n
- The Complainant also cites some previous UDRP CAC decisions on the consolidation issue that support Complainant’s position.<\/p>\n
The Panel first notes that under par. 3 (c) of the UDRP Rules, the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. Consolidation is also addressed in WIPO Overview 3.0, section 4.11, which states that “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”.<\/p>\n
The Panel considered the Complainant’s arguments in favor of consolidation, the evidence provided as well as facts of this dispute, and also its limited research conducted under par. 10 (a) of the Rules and its authority under par. 10 (e) of the Rules, decided to accept the consolidation request based on the following:<\/p>\n
\n- All 84 disputed domain names are registered through the same Registrar;<\/li>\n
- All 84 disputed domain names share a similar composition, e.g. Complainant’s mark with the addition of a geographical or descriptive\/generic term;<\/li>\n
- They all share a similar pattern of use, namely for websites with nearly identical content, including pictures and logos of the Complainant, nearly identical copyright notices at the bottom and they all seem to offer Complainant’s goods for sale;<\/li>\n
- Most of the contact details of the registrant share a similar pattern, as noted by the Complainant, e.g. providing identical town name two or three times;<\/li>\n
- At least one of the named registrants – Joseph Graham, was previously involved in numerous UDRP proceedings along with “Web Commerce Communications Limited”, where they were named as co-respondents and it appears he is associated with “Web Commerce Communications Limited” (see e.g. WIPO Case No. D2023-3558, WIPO Case No. D2023-3806<\/em><\/strong> and CAC Case No. 105616<\/em><\/strong> where one of the named respondents was identified as “Joseph Graham (Web Commerce Communications Limited)”);<\/li>\n
- Totality of the circumstances of this dispute indicate that all the named registrants are either different aliases of the same person\/entity or they are commonly controlled. As noted by the Panel in CAC case No. 105776<\/strong><\/em>, where one of the name respondents was involved (“Web Commerce Communications Limited”): “all of the disputed domain names are equally registered with \"Alibaba.Com Singapore E-Commerce Private Limited\", which is, in the panel's experience, not too common a registrar for domain holders from Italy and France… it is more likely than not for the Panel, taking into account all the circumstances of the specific case, that all of the disputed domain names are under common control<\/em>”. This Panel notes that “Web Commerce Communications Limited” was involved in numerous previous UDRP consolidated cases and never questioned consolidation (see e.g. CAC Case No. 105792, CAC Case No.105776<\/strong><\/em> and CAC Case No. 105616<\/em><\/strong>) and<\/li>\n
- Last, but not least, neither of the identified respondents filed a response and questioned consolidation or otherwise indicated that he or she is not related to the other identified respondents.<\/li>\n<\/ul>\n
Based on the above the Panel finds that all disputed domain names are more likely than not under common control and consolidation is fair and equitable to both parties, taking into account evidence available and facts of the case, Panel’s own limited research and previous UDRP decisions in similar circumstances, including decisions involving the same Respondent (s).<\/p>\n
Therefore, the Panel accepts the consolidation request of the Complainant and will refer to all named respondents in the complaint as “Respondent”.<\/p>\n
Identity of Respondent - Web Commerce Communications Limited<\/u><\/strong><\/p>\nThe Complainant emphasized that the largest subset in terms of identical registrant data, namely 22 domains, are registered by the same Registrant: “Web Commerce Communications Limited”, doing business as “Webnic.cc”.<\/p>\n
Webnic.cc is, however, simply a reseller of the Registrar's domain name registration services. Since it operates as a reseller and conduit reselling Registrar’s services, the Registrar should have provided the details of the underlying registrants. It failed to do so, therefore, the Complainant claims that the Registrar is potentially in violation of the Temporary Specification for gTLD Registration Data, Appendix E 1.1 (https:\/\/www.icann.org\/resources\/pages\/gtld-registration-data-specs-en ).<\/p>\n
The Panel notes that there may be indeed potential non-compliance by the Registrar with the Temporary Specification for gTLD Registration Data, Appendix E 1.1 that states, inter alia, the following: “The Registrar MUST provide the UDRP provider with the full Registration Data for each of the specified domain names, upon the UDRP provider notifying the Registrar of the existence of a complaint…”, if the Registrar failed to disclose actual registrant(s) and instead provided details of a proxy\/privacy service.<\/p>\n
In any case, the Panel here agrees to treat “Web Commerce Communications Limited” as registrant and respondent since there is no other information and this name was disclosed by the Registrar. The same respondent previously appeared in numerous UDRP disputes (e.g. in over 40 CAC disputes) and was treated as respondent by previous UDRP panels.<\/p>\n
<\/p>\n
II. Language <\/strong><\/p>\nThe registration agreement for all 84 disputed domain names is in English. The Complainant asserts that in case the Respondent requests another language, English still shall be the language of this proceedings based on a number of factors, including the following: a) the disputed domain names are all formed by words in the Latin script and not in Chinese characters; b) all of the disputed domain names include the English-language trademark(s), c) all of the disputed domain names are in the international .com gTLD and most of the websites are or were in the English language and d) requiring the Complainant to translate the Complaint into another language would create an undue burden and delay.<\/p>\n
The Respondent did not respond and did not question the language of this proceeding. Therefore, English shall be the language of this proceeding.<\/p>",
"decision": "Accepted",
"panelists": [
"Igor Motsnyi"
],
"date_of_panel_decision": "2023-12-13 00:00:00",
"informal_english_translation": "
In this proceeding the Complainant relies on the various trademark registrations “TOMMY HILFIGER”, “TOMMY”, “HILFIGER” and
“TOMMY JEANS” including the following valid registrations:<\/p>\n
\n- Benelux trademark registration No. 587912 “TOMMY HILFIGER” (word), registered on December 01, 1996;<\/li>\n
- EU trademark registration No. 000131706 “TOMMY HILFIGER” (word), registered on October 16, 1998;<\/li>\n
- UK trademark registration No. UK00900131706 “TOMMY HILFIGER” (word), registered on October 16, 1998;<\/li>\n
- International Trademark registration under the Madrid System No.1270616 “TOMMY HILFIGER” (word), registered on July 29, 2015, protected inter alia <\/em>in the following jurisdictions: Algeria, Armenia, Azerbaijan, Egypt, Georgia, Iceland, Iran, Japan, Mongolia, Norway, Philippines, Korea, Turkey, Ukraine and Singapore;<\/li>\n
- EU trademark registration No. 018093680 “TOMMY” (word), registered on December 21, 2019;<\/li>\n
- UK trademark registration No. UK00002292693 “TOMMY” (word), registered on July 29, 2005;<\/li>\n
- International Trademark registration under the Madrid System No. 1170031 “HILFIGER” (word), registered on November 7, 2012, protected in Russia, Norway and Switzerland;<\/li>\n
- EU trademark registration No. 10451383 “HILFIGER” (word), registered on May 2, 2012;<\/li>\n
- UK trademark registration No. UK00001300553 “HILFIGER” (word), registered on May 12, 1989;<\/li>\n
- EU trademark registration No. 001233923 “TOMMY JEANS” (word), registered on October 31, 2005;<\/li>\n
- International Trademark registration under the Madrid System No.1393619 “TOMMY JEANS” (word), registered on August 28, 2017, protected inter alia <\/em>in Albania, Australia, Bahrain, Egypt, Iceland, Montenegro, Morocco, Israel, Korea, Serbia, Switzerland and Ukraine;<\/li>\n
- UK trademark registration No. UK00801225683 “TOMMY HILFIGER” (word + flag picture), registered on October 06, 2015;<\/li>\n
- EU trademark registration No. 1225683 “TOMMY HILFIGER” (word + flag picture), registered on May 16, 2014;<\/li>\n
- International Trademark registration under the Madrid System No. 1243929 “TOMMY HILFIGER” (word + flag picture), registered on April 28, 2014, protected in China and Japan;<\/li>\n
- EU trademark registration No. 000131631 “TOMMY HILFIGER” (word + flag picture), registered on October 16, 1998.<\/li>\n<\/ul>",
"decision_domains": {
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"tommyhilfigerchiletiendas.com": "TRANSFERRED",
"tommychile.com": "TRANSFERRED",
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"tommyhilfiger-ireland.com": "TRANSFERRED",
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},
"panelist": null,
"panellists_text": null
}