WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tommy Hilfiger Licensing, LLC; Deckers Outdoor Corporation; Otter Products LLC v. 曾燕 (Zeng Yan); 赵兴明 (Zhao Xing Ming)

Case No. D2017-2384

1. The Parties

The Complainants are Tommy Hilfiger Licensing, LLC of New York, United States of America ("United States"); Deckers Outdoor Corporation of Goleta, California, United States and Otter Products LLC of Fort Collins, Colorado, United States, represented by The C.V. React U.A., Netherlands (collectively or individually, referred to as the "Complainant(s)").

The Respondent is 曾燕 (Zeng Yan) of Guangzhou, Guangdong, China; and 赵兴明 (Zhao Xing Ming) of Suzhou, Jiangsu, China.

2. The Domain Names and Registrars

The disputed domain name <otterbox.info> is registered with HiChina Zhicheng Technology Ltd.

The disputed domain names <tommyhilfiger.info> and <uggaustralia.info> are registered with 22net, Inc.

The above disputed domain names are collectively or individually referred to as the "Domain Name(s)" and HiChina Zhicheng Technology Ltd. and 22net, Inc. are collectively or individually, referred to as the "Registrar(s)".

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 4, 2017. On December 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 5, 2017, the Registrars transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On December 6, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On December 7, 2017, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

The Center verified that the 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 in both Chinese and English, and the proceedings commenced on December 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 4, 2018.

The Center appointed Karen Fong as the sole panelist in this matter on January 17, 2018. 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 three brand owners who own and use the following trade marks in connection with their respective goods and services:

Tommy Hilfiger Licensing LLC owns the trade mark TOMMY HILFIGER in a variety of classes in the United States, the earliest registration submitted in evidence dates back to June 24, 1986 (International Trade Mark Registration No. 73566804). The TOMMY HILFIGER trade mark is well known for its apparel.

Deckers Outdoor Corporation owns the trade mark UGG in a variety of classes in the United States, the earliest registration submitted in evidence dates back to January 24, 2006 (International Trade Mark Registration No. 72976129). The trade mark UGG is well known for its high quality sheepskin shoes.

Otter Products LLC owns the trade mark OTTERBOX in classes 9 in the United States, the earliest registration submitted in evidence dates back to May 11, 2010 (International Trade Mark Registration No. 77723375). The trade mark OTTERBOX is well known for its smartphone cases.

The above trade marks are referred to collectively and individually as the "Trade Mark(s)".

The Domain Names <tommyhilfiger.info> and <uggaustralia.info> are registered to 曾燕 (translated, Zeng Yan), a Chinese national from Guandong, China (the "First Respondent "). The Domain Name <otterbox.info> is registered to 赵兴明 (translated, Zhao Xing Ming) a Chinese national from Jiangsu, China (the "Second Respondent"). <tommyhilfiger.info> was registered on February 24, 2015; <uggaustralia.info> was registered on December 14, 2013 and <otterbox.info> was registered on August 2, 2017.

The website connected to <tommyhilfiger.info> is not active and has on the home page the words, "No Sponsors. Tommyhilfiger.info currently does not have any sponsors for you". The website connected to <uggaustralia.info> is connected to a pay-per-click website which has link names bearing the UGG trade mark, with these links being connected to the Complainant's website and websites of its competitors. The website connected to <otterbox.info> is inactive. The above websites are collectively and individually referred to as the "Website(s)".

The Complainant's representatives sent a cease-and-desist letter to the First Respondent on behalf of Tommy Hilfiger Licensing LLC. The Respondent 1 responded that he would transfer <tommyhilfiger.info> for USD 2,890.

5. Preliminary Procedural Issues

5.1 Consolidation of Complaints

The case before the Panel involves three individual brand owners who wish to bring a single consolidated complaint in relation to three domain names against multiple registrants. The preliminary issue to be determined is whether the Complainants are entitled to bring a consolidated complaint against the Respondents, or whether it is necessary for the Complainants to bring individual complaints against the individual Respondents.

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 complainants in a single complaint or 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. While both the Policy and Rules use the term "complainant" throughout, the Policy and Rules do not expressly preclude multiple legal persons from falling within the term "complainant".

This case involves both multiple complainants and multiple respondents. The Panel will consider first the position of whether the Complaint should have been filed against multiple respondents and then whether it should be filed by multiple complainants.

Multiple Respondents

In relation to the position of a complaint being filed against multiple respondents, Section 4.11.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") provides that in such cases, 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.

UDRP panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants' identity(ies) including pseudonyms, (ii) the registrants' contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).

The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 after reviewing the relevant UDRP decisions in relation to consolidation in multiple respondents' took the view that 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 respondent has 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, the Complainant submits that the Domain Names are subject to common control for the following reasons:

(1) In June 29, 2017, the registrant of the Domain Name <otterbox.info> had listed on the WhoIs, the Registry Registrant ID – C199248451-LRMS, the Registrant Email: […]@hotmail.com and they matched the current details of the Domain Name <tommyhilfiger.info>. The WhoIs for the Domain Names <tommyhilfiger.info> and <uggaustralia.info> have the same exact details for the Registry Registrant ID and Registrant Email as at November 30, 2017 and the Registrant Phone is listed as +86.18915170790. On November 30, 2017, the Registry Registrant ID for the Domain Name <otterbox.info> was changed to C207499513-LRMS, the Registrant email to […]@outlook.com and the Registrant telephone number, +86.18915170790. This means that the current Registrant Phone number for all the three Domain Names is the same. The historical WhoIs record for a domain name dated June 29, 2017 submitted in evidence does have the details alleged by the Complainant but the printout does not specify the Domain Name <otterbox.info>. It would have been helpful if the Complainant had explained why this is the case in the Complaint.

(2) Following the cease-and-desist letter sent by the Complainant's representatives to the First Respondent at the email address […]@hotmail.com, the First Respondent responded that he would transfer it for USD 2,890 and signed off with the name "Song". In response to an email sent to the Second Respondent at […]@outlook.com in connection with the Domain Name <otterbox.info>, the Respondent also responded that he would transfer the name for USD 2,890 and signed off with the name, "Song". The Complainant submitted in evidence the email exchange with the First Respondent but not with the Second Respondent. It would have been helpful if it had done so.

The evidence submitted points to the fact that the Domain Names are subject of common control. The email addresses, registrant ID and phone number and sign off name points to this. The modus operandi of both Respondents appear to be identical, providing further evidence of common conduct based on the registration and use of the Domain Names and that such conduct interferes with the Trade Marks. Furthermore, the Complainant's claims against the Domain Names involve common questions of law and fact.

The Respondents 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 Complainants have established more likely than not that the Domain Names are subject to common ownership or control. The Panel finds such common control to justify consolidation of the Complainants' claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all the Parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainants pursuant to paragraph 10(e) of the Rules.

In light of the above, the Respondents may be referred to collectively as the Respondent hereafter.

Multiple Complainants

The Panel will next turn to the question as to whether it was appropriate in this case for the Complaint to be filed by multiple complainants. In other words, as a matter of principle, whether a complainant must be a single legal person or entity or instead can consist of multiple legal persons or entities, and, if this is the case, under what conditions. Section 4.11.1 of WIPO Overview 3.0 provides that 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.

With regard to the first limb of the test, this is not a case where the Complainants have a common legal interest as they are a group of unrelated companies, each of whom are protecting their individual trade mark rights. It is likely that they have become aware of each other's predicament at the hands of the Respondent because they have the same authorized representative. The question is therefore whether the Respondent has engaged in common conduct that has affected the Complainants in a similar fashion. Common conduct has been found to exist in the following cases:

(i) where the rights relied on and the disputed domain names in question involve readily identifiable commonalities; or (ii) where there is a clear pattern of registration and use of all the disputed domain names.

In this case, the indications of the Respondent engaging in common conduct which has affected the Complainants legal rights in a similar fashion are as follows:

(i) the generic Top-Level Domain ("gTLD") of all the Domain Names is ".info";

(ii) the Domain Names comprise well-known consumer brands trade marks;

(iii) Two of the Domain Names appeared to be offered for sale for the identical sum of USD 2,890;

(iv) The Domain Names are either being used as pay-per-click links or are not active.

The Panel is satisfied from the above that common conduct is found to exist.

The Panel now turns to the second limb of the test as to whether it would be equitable and procedurally efficient to permit the consolidation. In considering this, the Panel also is satisfied that this is the case for the following reasons:

(i) the Complainants' substantive arguments made under each of the three elements of the Policy appear to be common to the Domain Names;

(ii) All the Complainants are represented by a single authorized representative for the purpose of the proceedings.

Accordingly the Panel determines that this Complaint consisting of multiple Complainants and multiple Respondents should, for the reasons discussed above, be permitted to have their complaints consolidated into a single Complaint for the purpose of the present proceedings under the Policy. The Respondent has not chosen to file a response and consequently there are no submissions to be taken into account on the procedural issues. In light of the above, the Complainants may be referred to collectively as the Complainant hereafter.¹

5.2. Language of the Proceeding

The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 information received from the Registrar, the language of the Registration Agreements for the Domain Names is Chinese.

The Complainant submits that the language of the proceeding should be English as the Respondent has written to the Complainant's representatives in English and therefore appears to understand English.

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties' ability to understand and use the proposed language, time and costs.

The Panel accepts the Complainant's submission. The Respondent has chosen not to respond. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.

6. Parties' Contentions

A. Complainant

The Complainant contends that the Domain Names are identical to the Trade Marks, the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and used in bad faith. The Complainant requests transfer of the Domain Names.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

7. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:

(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) The Domain Names were registered and are being used in bad faith.

B. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established that it has rights to the Trade Marks.

The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to establish if the domain name is identical or confusingly similar to the complainant's trade mark. The trade mark would generally have to be recognizable within the domain name. In this case the Domain Names integrate the respective Trade Marks in their entirety and in the case of the Domain Name <uggaustralia.info> plus the geographical term "Australia" which is where the product used to originate. The addition of a geographical identifier does not negate the confusing similarity encouraged by the Respondent's complete integration of the Trade Mark in this Domain Name. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the gTLD. It is viewed as a standard registration requirement.

The Panel finds that the Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non- commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.

The Complainant alleges that the Respondent is not commonly known by any of the Domain Names. Aside from the Domain Names, the Complainant also alleges that the Respondent owns many other well-known domain names but the evidence submitted have part of the domain names obscured. It would appear to the Panel that the Respondent appears to have no commercial link to the Complainant and there certainly does not appear to be any bona fide offering of goods and services. The prima facie case established on the part of the Complainant requires an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.

D. Registered and Used in Bad Faith

To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.

The Panel is satisfied that the Respondent must have been aware of the Trade Marks when he registered the Domain Names. It is implausible that he was unaware of the Complainant when he registered the Domain Names given the fame of the Trade Marks. 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."

It is inconceivable that the Domain Names were selected by the Respondent without the Complainant in mind. As outlined under the second element above, the clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent's choice of the Domain Names is also a significant factor to consider (as stated in section 3.1.1 of WIPO Overview 3.0). The Domain Names fall into the category stated above and the Panel finds that registration is in bad faith.

The Panel also concludes that the actual use of the Domain Names is also in bad faith. The use of the Domain Name <uggaustralia.info> is intended to capture Internet traffic from Internet users who are looking for the Complainant's products and services which is bad faith under paragraph 4(b)(iv) of the Policy. In the case of the Domain Names <tommyhilfiger.info> and <otterbox.info>, both Domain Names were offered for sale for USD 2,890. This is a clear demonstration that the Domain Names have been used in bad faith. The offer to transfer the Domain Names for sums exceeding the reasonable cost of registration and maintenance falls squarely within the circumstances in paragraph 4(b)(i) of the Policy which is evidence of bad faith. Considering the circumstances, the Panel considers that the Domain Names were also used in bad faith.

The Panel concludes that the Domain names have been registered and used in bad faith under paragraphs 4(b)(i) and (iv) of the Policy.

8. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <otterbox.info>, <tommyhilfiger.info> and <uggaustralia.info> be transferred to the Complainant.

Karen Fong
Sole Panelist
Date: February 5, 2018

¹ The Panel notes, however, that in cases where there are likely to be different factors to be considered, consolidation might not be the appropriate choice. As discussed above, in this case substantive and procedural factors are not complex, and the Panel thus finds that consolidation is appropriate procedurally.