WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Levi Strauss & Co. v. Domain Admin, Whoisprotection.cc, Client Care, Web Commerce Communications Limited, Yvonne Hoffmann, Yvonne HIMMEL, Thomas BECKKER, Phillipp BAYER, ralph neudorf

Case No. D2021-4241

1. The Parties

The Complainant is Levi Strauss & Co., United States of America (“United States” or “U.S.”), represented by Verso Law Group LLP, United States.

The Respondent is Domain Admin, Whoisprotection.cc, Malaysia, Client Care, Web Commerce Communications Limited, Malaysia, Yvonne Hoffmann, Germany, Yvonne HIMMEL, Germany, Thomas BECKKER, Germany, Phillipp BAYER, Germany, and ralph neudorf, Germany

2. The Domain Names and Registrars

The disputed domain names <leviaustralia.com>, <levionsaleuk.com>, <levisalesingapore.com>, <levischeapuk.com>, <levisforsalenz.com>, <levisropa.com>, <levitarjous.com>, and <tiendalevisbaratas.com> are registered with Alibaba.com Singapore E-Commerce Private Limited (the “First Registrar”).¹

The disputed domain names <levi-italia.com>, <levisdescuento.com>, and <levis-polska.com>, registered with NETIM SARL (the “Second Registrar”).

The disputed domain name <levis-au.com> is registered with Mat Bao Corporation (the “Third Registrar”).

The disputed domain name <levisdanmark.com> is registered with Web Commerce Communications Limited dba WebNic.cc (the “Fourth Registrar”). The disputed domain names will collectively be referred to as the “Domain Names”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2021. On December 16, 2021, the Center transmitted by email to the Registrars requests for registrar verification in connection with the Domain Names.

On December 17, 2021, the First Registrar, Second Registrar, and Fourth Registrar transmitted by email to the Center their verification responses disclosing registrant and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint. On December 18, 2022, the Third Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint.

The Center sent an email communication to the Complainant on December 20, 2021, 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 December 29, 2021.

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 January 19, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2022.

The Center appointed Karen Fong as the sole panelist in this matter on February 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 Complainant, founded in the 1850’s, has developed, manufactured, promoted and sold a variety of clothing products including jeans under the mark LEVI’S. The LEVI’S trade marks are registered all over the world including the United States, Malaysia, and Germany. The earliest trade mark registration submitted in evidence in each of these countries are U.S. trade mark registration number 250,265, registered on December 4, 1928; Malaysia trade mark registration number 01001699, registered in February 12, 2001; and German trade mark registration number 733001 registered on January 21, 1960 (the “Trade Mark”).

The Complainant’s main website is at “www.levi.com”.

The Respondent registered the Domain Names as follows:

The Complainant contends that all the domain names were connected to websites, which reproduced content from the Complainant’s official website (the “Websites”). Evidence for this was submitted in relation to Domain Names 1, 4, 5, 6, 12, and 13. None of the Domain Names are active at the time of the writing of this decision.

The location of the registrant details of Domain Names 3, 4, 5, 6, 7, 8, 12, and 13 is Malaysia, and Domain Names 1, 2, 9, 10, and 11 is Germany.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names, all of which it believes are related and under management and common control of a single entity or network. The basis of its belief that the registrant details are related and under management and common control of a single network are as follows:

1. all of the Domain Names bear the Trade Mark;

2. all the Websites display content which have been copied or cloned from the Complainant’s Websites;

3. the IP addresses of Domain Names 1 and 9 are identical; Domain Names 2, 6 and 7 are identical; Domain Names 3, 4, 8, 10, and 11 are identical, even though the registrant’s name vary except in the case of Domain Names 3 and 4, which are both in the name of Domain Admin, Whoisprotection.cc; and Domain Names 6 and 7 which are in the name of Client Care, Web Commerce Communications Limited;

4. the backend of the Websites connected to Domain Names 3, 4, 8, 10, and 11 are connected to each other;

5. the Internet Service Providers for Domain Names 2, 3, 4, 6, 10, and 11 are identical, and Domain Names 5, 7, 8, 12 and 13 are identical; and

6. the registrants are either located in Malaysia or Germany.

B. Respondent

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

6. Discussion and Findings

6.1. Preliminary Procedural Issues - Consolidation of Proceedings

The Complainant has filed a single complaint in relation to thirteen domain names against multiple registrants. The preliminary issue to be determined is whether the Complainant is entitled to bring a consolidated complaint against the Respondent, or whether it is necessary for the Complainant to bring individual complaints.

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 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.

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, UDRP 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. Previous 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 UDRP 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 of 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 fulfil 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 reasons outlined above.

The evidence submitted points to the fact that the Domain Names are subject of common control by the Respondents. The above pattern evidences common conduct based on the registration and use of the Domain Names and that such conduct interferes with the Trade Mark. 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 Complainant has 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 Complainant’s claims against the registrants of the Domain Names in this proceeding save. 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 Respondent has be referred to collectively as the “Respondent” throughout the Decision.

6.2 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.

6.3 Substantive Analysis

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established that it has registered rights to the LEVI’S trade mark.

The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself such that the trade mark would generally be recognizable within the domain name. In this case

all the Domain Names comprise the well-known LEVI’S trade mark in its entirety together with various additional terms and hyphens. None of these additions prevent a finding that the Domain Names are identical or confusingly similar to the Trade Mark.

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 generic Top-Level Domain (“gTLD”), which in this case is “.com”.

For the reasons above, the Panel finds that the Domain Names are confusingly similar to trade marks in which the Complainant has rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the 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 trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.

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 the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. 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 rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.

The Complainant contents that the Respondent does not own any trade marks or trade names that correspond to the Domain Names. The Respondent is also not making any legitimate noncommercial or fair use of the Domain Names. The Complainant has never licensed or otherwise permitted the Respondent to use the Trade Mark or apply or use any domain names that incorporate the Trade Mark or trade marks which are confusingly similar. The Respondent is not commonly known by the Domain Names. The cloning of the Complainants website does not amount to a bona fide offering of goods or legitimate noncommercial or fair use of the domain names.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. Further, it would appear that 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.

C. 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 Mark when it registered the Domain Names. The Trade Mark is famous worldwide and significantly pre-dates the registration of the Domain Names. The fact that at least six of the Domain Names were connected to Websites which mimicked the Complainant’s website and displayed the Trade Mark prominently makes it clear that the Respondent was aware of the Trade Marks when it registered the Domain Names. The Panel finds that registration is in bad faith.

The Panel finds that the Domain Names are also used in bad faith. On the evidence before the Panel, it seems entirely clear that the Respondent is engaged in a scheme of misleading visitors that it is somehow connected to the Complainant and by doing so seeks to divert its business to themselves. The Respondent produced multiple websites which were copies of those of the Complainant and which would no doubt have enticed customers to purchase LEVI’S products from the Respondent rather than the Complainant or could have been for the purpose of obtaining of personal and financial information from customers for nefarious purposes. Further, the evidence also points to the fact that it is very likely that some, if not all, the registrant information provided for the registration of the Domain Names is false. Further, the Respondent failed to respond or offer any evidence to the contrary.

From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondents’ websites are authorised or somehow connected to the Complainant. The Panel therefore also concludes that the Domain Names were registered and are being used in bad faith under paragraph 4(b)(iv) of 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 Domain Names, <leviaustralia.com>, <levi-italia.com>, <levionsaleuk.com>, <levisalesingapore.com>, <levis-au.com>, <levischeapuk.com>, <levisdanmark.com>, <levisdescuento.com>, <levisforsalenz.com>, <levis-polska.com>, <levisropa.com>, <levitarjous.com>, and <tiendalevisbaratas.com>, be transferred to the Complainant.

Karen Fong
Sole Panelist
Date: March 15, 2022

¹ The Complaint also included the Domain Names <levimexico.com> and <levisalg.com>. On December 20, 2021, the Center informed the Parties that the Domain Names <levimexico.com> and <levisalg.com> had expired and the Registrar indicated that payment of a renewal/registration fee needed to be made by one of the Parties to ensure that the Domain Names <levimexico.com> and <levisalg.com> remained active and not deleted so that the administrative procedure can continue as required under the UDRP. The Center also informed the Parties that possible consequences for not renewing the Domain Names may include the dismissal (at the sole discretion of a Panel to be appointed) of the Complaint in relation to these Domain Names. On March 21, 2022, the concerned Registrar confirmed the Domain Names <levimexico.com> and <levisalg.com> had expired and been deleted. The Panel notes that at the time of this Decision that the Domain Names <levimexico.com> and <levisalg.com> are available for registration. Accordingly, the Panel has decided to dismiss the Domain Names <levimexico.com> and <levisalg.com> from the current proceeding.