Autumnpaper Ltd v Sylvia Baer, Monika Nussbaum, Jessica Decker, Client

WIPO Case No. D2023-3339

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Autumnpaper Ltd v. Sylvia Baer, Monika Nussbaum, Jessica Decker, Client
Care, Web Commerce Communications Limited, Max Werner, Krzysztof
Lobacz

Case No. D2023-3339

1. The Parties

Complainant is Autumnpaper Ltd, United Kingdom, represented by Studio Barbero, Italy.

Respondent is Sylvia Baer, Germany, Monika Nussbaum, Germany, Jessica Decker, Germany, Client Care,
Web Commerce Communications Limited, Malaysia, Max Werner, Germany, and Krzysztof Lobacz,

Germany.

2. The Domain Names and Registrars

The disputed domain names, <alexandermcqueenco.com> and <alexandermcqueenlisboa.com>, are
registered with Gransy, s.r.o. d/b/a subreg.cz; the disputed domain names,
<alexandermcqueenespana.com>, <alexandermcqueenitalia.com>, and <alexandermcqueennl.com>, are
registered with Key-Systems GmbH; the disputed domain names, <alexandermcqueenlisboas.com>,
<alexandermcqueenmexlco.com>, <alexandermcqueen-rebajas.com>, <alexandermcqueenrebajas.com>,
<alexandermcqueenschuhe.com>, <alexandermcqueentenis.com>, <alexandermcqueenusa.com>, and
<mcqueen-philippines.com> (together the “Domain Names”), are registered with Alibaba.com Singapore E-
Commerce Private Limited

(together the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2023. On August 3, 2023, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On August 4 and 7, 2023, the Registrars transmitted by email to the Center their verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 9, 2023, providing the registrant and contact information disclosed by the Registrars, and inviting Complainant to submit an amendment to the Complaint or file a separate complaint for any domain name(s) for which it is not possible to demonstrate that all named Respondents are in fact the same entity and/or that all domain names are under common control and

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indicate (by short amendment or reply email) which domain name(s) will no longer be included in the current

Complaint. Complainant filed an amendment to the Complaint on August 10, 2023.

The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on August 16, 2023. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 6, 2023.

The Center appointed Marina Perraki as the sole panelist in this matter on September 13, 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

Complainant is the owner of the international luxury fashion brand ALEXANDER McQUEEN. ALEXANDER followed by others around the world, reaching the 100 McQueen stores worldwide by the end of 2020.

McQUEEN is a major player on the fashion scene and offers a wide range of luxury products from Haute
Couture and Prèt-à-Porter to an extensive accessories collection that includes bags, shoes, small leather
goods, belts, eyewear, silks and perfumes. The ALEXANDER McQUEEN brand was founded in 1992 by the
British fashion designer and couturier Alexander McQueen. Mr. McQueen was one of the youngest
designers to achieve the title of “British Designer of the Year” and won the accolade four times between
1996 and 2003, while he was also named International Designer of the Year by the Council of Fashion
Complainant distributes its products through a worldwide network of authorized third-party retailers, exclusive
departments and specialty stores, in Europe, Asia and North America and through owned boutiques,
currently located in Italy, United States of America, China, France, United Kingdom, Germany, Australia,
Türkiye, United Arab Emirates, Hong Kong, China, Japan, Kuwait, Malaysia, New Zealand, Republic of

Korea, Singapore, Thailand and Taiwan Province of China.

Complainant’s revenues were estimated to be EUR 500 million in 2020. ALEXANDER McQUEEN has over the years, ALEXANDER McQUEEN is a well-known trademark worldwide.

become popular with famous women over the years, including Nicole Kidman, Penélope Cruz, Sarah Jessica

Complainant owns trademark registrations for ALEXANDER MCQUEEN and MCQUEEN, including:

- the European Union Trademark Registration No. 000565796 for ALEXANDER MCQUEEN (word), filed on
July 10, 1997 and registered on May 14, 2003, for goods in international classes 18, 24 and 25;
- the European Union Trademark Registration No. 007594781 for ALEXANDER MCQUEEN (word), filed on
February 11, 2009 and registered on March 15, 2012, for goods and services in international classes 3, 4, 9,
14, 18, 20, 24, 25, 27 and 35;
- the International Trademark Registration No. 1273128 for MCQUEEN (figurative), filed on March 11, 2015
and registered on February 11, 2016, for goods and services in international classes 3, 9, 14, 18, 25 and 35;
- the Malaysian Trademark Registration No. 2010000197 for MCQ ALEXANDER MCQUEEN (figurative),
registered on January 7, 2010, for goods in international class 25; and
- the Malaysian Trademark Registration No. 2010000200 for MCQ ALEXANDER MCQUEEN (figurative),
registered on January 7, 2010, for goods in international class 18.

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Complainant also owns domain name registrations worldwide consisting of or comprising ALEXANDER

McQUEEN, including, inter alia, <alexandermcqueen.com>, registered on September 12, 2000.

The Domain Names were registered as follows:

<alexandermcqueentenis.com>, registered on June 3, 2021
<alexandermcqueenschuhe.com>, registered on February 17, 2022
<alexandermcqueenrebajas.com>, registered on February 18, 2022
<alexandermcqueenusa.com>, registered on February 18, 2022
<alexandermcqueenmexlco.com>, registered on April 1, 2022
<alexandermcqueenco.com>, registered on February 17, 2022
<alexandermcqueenespana.com>, registered on February 18, 2022
<alexandermcqueenlisboa.com>, registered on February 18, 2022
<alexandermcqueenitalia.com>, registered on February 18, 2022
<alexandermcqueennl.com>, registered on February 18, 2022
<mcqueen-philippines.com>, registered on January 11, 2022
<alexandermcqueen-rebajas.com>, registered on February 6, 2023
<alexandermcqueenlisboas.com>, registered on February 28, 2023

Complainant sent cease and desist letters to Respondent through the Registrars, to which Respondent did not reply.

The Domain Names <alexandermcqueenespana.com>, <alexandermcqueenitalia.com>, similar websites, prominently displaying Complainant’s trademark and containing similar photographs, with goods purportedly of Complainant in discounted prices. In particular, the Domain Names <alexandermcqueenschuhe.com>, <alexandermcqueenrebajas.com>, <alexandermcqueenusa.com>, <alexandermcqueenco.com>, <alexandermcqueenlisboa.com>, <mcqueen-philippines.com>, <alexandermcqueen-rebajas.com> and <alexandermcqueenlisboas.com> resolve to websites featuring Complainant’s trademarks and images taken from Complainant’s official advertising campaigns and offering for sale purported ALEXANDER McQUEEN products at discounted prices (“the Websites”). Moreover, the copyright lines read “Copyright © 2023” followed by the different Domain Names. Furthermore, no information about the name and identity of the person or entity operating the Websites is provided. Last, the prices at which products are offered for sale are lower than of the original goods of Complainant.

<alexandermcqueenmexlco.com> and <alexandermcqueennl.com> lead to inactive websites, while the

5. Procedural Issue: Consolidation of Respondents

The Panel has considered the possible consolidation of the Complaint for the Domain Names at issue.
According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 4.11.2, “Where a complaint is filed against multiple respondents, 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”.

The Domain Names <alexandermcqueentenis.com>, <alexandermcqueenschuhe.com>,
<alexandermcqueenrebajas.com>, <alexandermcqueenusa.com>, <alexandermcqueenmexlco.com>,
<mcqueen-philippines.com>, <alexandermcqueen-rebajas.com>, <alexandermcqueenlisboas.com> share
the same registrant.

The Panel notes the following features of all the Domain Names and arguments submitted by Complainant in favour of the consolidation:

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- all Domain Names share the same structure, as they all include Complainant’s trademarks ALEXANDER countries (such as “espana” and “italia” or a country code) and/or to online sale (such as “rebajas”, which means “sales” in Spanish) and/or to products of Complainant’s core business (such as “schuhe”, which means “shoes” in German);

- furthermore,

A) as regards the Domain Names:

i. the Domain Names <alexandermcqueentenis.com>, <alexandermcqueenschuhe.com>,
<alexandermcqueenrebajas.com>, <alexandermcqueenusa.com>, <alexandermcqueenmexlco.com>,
<mcqueen-philippines.com>, <alexandermcqueen-rebajas.com> and <alexandermcqueenlisboas.com>

share the same Registrar;

ii. the Domain Names <alexandermcqueenco.com> and <alexandermcqueenlisboa.com> share the same

Registrar and the registrant’s country code indicated in the Whois records is DE (which stands for Germany);

iii. the Domain Names <alexandermcqueenespana.com>, <alexandermcqueenitalia.com> and
<alexandermcqueennl.com> share the same Registrar and the registrant’s country code indicated in the

Whois records is DE (which stands for Germany);

iv. the Domain Names <alexandermcqueenschuhe.com>, <alexandermcqueenrebajas.com>,
<alexandermcqueenusa.com>, <alexandermcqueenmexlco.com> and <alexandermcqueenespana.com>

share the same name servers;

v. the Domain Names <alexandermcqueenco.com>, <alexandermcqueenlisboa.com>,
<alexandermcqueenitalia.com> and <alexandermcqueennl.com> share the same name servers;

vi. all Domain Names were registered between June 2021 and February 2023, while the Domain Names <alexandermcqueenschuhe.com> and <alexandermcqueenco.com> were registered on the same date, February 17, 2022 and the Domain Names <alexandermcqueenrebajas.com>,

<alexandermcqueenusa.com>, <alexandermcqueenlisboa.com>, <alexandermcqueenespana.com>, <alexandermcqueenitalia.com> and <alexandermcqueennl.com>, were registered on the same date, February 18, 2022;

vii. as regards the Domain Names <alexandermcqueenco.com>, <alexandermcqueenlisboa.com>,
<alexandermcqueenespana.com>, <alexandermcqueenitalia.com> and <alexandermcqueennl.com>, email

addresses which are all based on @hotmail.com are published in the Whois records;

viii. as regards the Domain Names <alexandermcqueenco.com>, <alexandermcqueenlisboa.com>,
<alexandermcqueenespana.com>, <alexandermcqueenitalia.com> and <alexandermcqueennl.com>, they

are all registered in the name of individuals based in Germany;

ix. as regards the Domain Names <alexandermcqueenco.com>, <alexandermcqueenitalia.com>,
<alexandermcqueennl.com>, <alexandermcqueentenis.com>, <alexandermcqueenschuhe.com>,
<alexandermcqueenrebajas.com>, <alexandermcqueenusa.com>, <alexandermcqueenmexlco.com>,
<mcqueen-philippines.com>, <alexandermcqueen-rebajas.com> and <alexandermcqueenlisboas.com>, they

show fictitious contact details in the Whois records, in particular inaccurate postal addresses;

B) as regards the websites to which the Domain Names resolve:

i. the Domain Names <alexandermcqueentenis.com>, <alexandermcqueenschuhe.com>,
<alexandermcqueenrebajas.com>, <alexandermcqueenusa.com>, <alexandermcqueenco.com>,
<alexandermcqueenespana.com>, <alexandermcqueenlisboa.com>, <alexandermcqueenitalia.com>,

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<alexandermcqueennl.com>, <mcqueen-philippines.com>, <alexandermcqueen-rebajas.com> and products at discounted prices;

<alexandermcqueenlisboas.com> lead to substantially identical websites with very similar layout, displaying
ii. as regards the Domain Names <alexandermcqueenrebajas.com>, <alexandermcqueen-rebajas.com> and
<alexandermcqueenco.com>, in the internal sections of the websites to which they lead (such as in the
sections “Sobre nosotros”, “Envíos Y Entregas”, “Declaración de privacidad”, “Devoluciones”

and “Opciones De Pago”), the same text appears;

iii. as regards the Domain Names <alexandermcqueenlisboa.com> and <alexandermcqueenlisboas.com>
they redirected at the time of filing of the Complaint to the same website
“

iv. The same products are advertised and offered for sale on the websites to which the Domain Names <alexandermcqueenschuhe.com>, <alexandermcqueenrebajas.com>, <alexandermcqueenusa.com>, <alexandermcqueenco.com>, <alexandermcqueenlisboa.com>, <mcqueen-philippines.com>,

<alexandermcqueen-rebajas.com> and <alexandermcqueenlisboas.com> resolve, using images taken from
Complainant’s website “

Considering all the above, the Panel also notes that the contact details for Respondents are apparently fake, and thus finds that, as Complainant has argued, there appears prima facie to be one single Respondent, providing possibly fake contact details, or at least all Respondents are under common control. Furthermore, named Respondents did not submit any arguments to rebut the requested consolidation.

The Panel finds that consolidation is fair to Parties and all nominal Respondents have been given an opportunity to object to consolidation through the submission of pleadings to the Complaint but have chosen not to respond (see WIPO Overview 3.0, section 4.11.2; Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302). Based on the file, the Panel finds that it is more likely than not that the Domain Names are in common control of one entity, and hence the Panel grants the consolidation (and will refer to these Respondents as “Respondent”).

6. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Names.

B. Respondent

Respondent did not reply to Complainant’s contentions.

7. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the
Domain Names:

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

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

(iii)      the Domain Names have been registered and are being used in bad faith.

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A. Identical or Confusingly Similar

The Domain Names incorporate Complainant’s ALEXANDER MCQUEEN or MCQUEEN trademarks as the
case may be in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The

Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The additional terms “mexlco” (misspelling of “Mexico”), “Espana”, “lisboa”, “italia”, “philippines” and
“lisboas”; or letters such as “usa”, “co” and “nl”; or terms mainly related to online sale, such as “rebajas”
(“sales” in Spanish); and/or to Complainant’s products and core businesses, such as “schuhe” (“schoes” in
German) and “tenis” (“gym shoes” in Portuguese), as well as the hyphens, do not avoid a finding of
confusing similarity as Complainant’ s trademark remains clearly recognisable (WIPO Overview 3.0, section

1.8).

The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the
comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v.
Zhan Yequn, WIPO Case No. D2017-0275; and Hay & Robertson International Licensing AG v. C. J. Lovik,

WIPO Case No. D2002-0122).

The Panel finds that the Domain Names are confusingly similar to Complainant’s trademark.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the
Domain Names, among other circumstances, by showing any of the following elements:

(i)        before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or

(ii)       Respondent (as an individual, business, or other organization) has been commonly known by the Domain Names, even if Respondent has acquired no trademark or service mark rights; or

(iii)      Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complainant, Respondent was not authorized to register the Domain Names.

Respondent has not demonstrated any preparations to use, or has not used the Domain Names or a trademark corresponding to the Domain Names in connection with a bona fide offering of goods or services. On the contrary, as Complainant demonstrated, the Domain Names were used to host the Websites to impersonate Complainant and attempt to mislead consumers into thinking that the goods purportedly offered for sale on the Websites originated from Complainant. Such use demonstrates neither a bona fide offering of goods nor a legitimate interest of Respondent (Arkema France v. Aaron Blaine, WIPO Case No. D2015-0502).

The Domain Names all falsely suggested that the Websites were official sites of Complainant or of an entity affiliated to or endorsed by Complainant. The Websites extensively reproduced, without authorization by Complainant, Complainant’s trademarks and product photos without any disclaimer of association (or lack thereof) with Complainant.

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The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Names.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Names in “bad faith”:

(i)        circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Names; or

(ii)       that Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii)      that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or

(iv)      that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s Websites or location or of a product or service on Respondent’s Websites or location.

The Panel concludes that Respondent has registered and used the Domain Names in bad faith.

Because Complainant’s mark had been widely used and registered by Complainant before the Domain
Names registrations, and noting the content of the corresponding Websites, it is clear that Respondent had
Complainant’s mark in mind when registering the Domain Names (Tudor Games, Inc. v. Domain Hostmaster,
Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis
Inc., WIPO Case No. D2014-1754; and Parfums Christian Dior v. Javier Garcia Quintas and
Christiandior.net, WIPO Case No. D2000-0226).

Furthermore, the content of the Websites gives the impression that they originated from Complainant, prominently displaying Complainant’s trademarks and product photographs on the Websites, thereby giving the false impression that the Websites emanate from or are endorsed by Complainant. This further supports registration in bad faith reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Names as in some way endorsed by or connected with Complainant (WIPO Overview 3.0, section 3.1.4).

The Domain Names incorporate entirely Complainant’s trademark plus additional words. This further
indicates that Respondent knew of Complainant and chose the Domain Names with knowledge of

Complainant and its industry (Safepay Malta Limited v. ICS Inc., WIPO Case No. D2015-0403).

As regards bad faith use, Complainant demonstrated that the Domain Names were employed to host the
Websites which appear falsely to be those of or endorsed by Complainant.
Furthermore, the Domain Names have been operated by intentionally creating a likelihood of confusion with
Complainant’s trademark and business. This further supports the finding of bad faith use (Arkema France v.
Aaron Blaine, supra; Aktiebolaget Electrolux v. Priscilla Quaiotti Passos, WIPO Case No. D2011-0388; and
WIPO Overview 3.0, sections 3.1.4 and 3.2.1).

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Some of the Domain Names lead to inactive websites and one leads to an error page. The non-use of a domain name does not prevent a finding of bad faith under the circumstances of this proceeding (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and WIPO Overview 3.0, section 3.3).

The Panel also notes that as Complainant demonstrated, Respondent has provided fictitious contact details
for the Domain Names <alexandermcqueenco.com>, <alexandermcqueenitalia.com>,
<alexandermcqueennl.com>, <alexandermcqueentenis.com>, <alexandermcqueenschuhe.com>,
<alexandermcqueenrebajas.com>, <alexandermcqueenusa.com>, <alexandermcqueenmexlco.com>,
<mcqueen-philippines.com>, <alexandermcqueen-rebajas.com> and <alexandermcqueenlisboas.com>.

Moreover, the registrants of the Domain Names <alexandermcqueenco.com> and <alexandermcqueenlisboa.com> are located in Germany, however the corresponding Websites are drafted entirely in Spanish and Portuguese and the entities indicated in the privacy section of the Websites do not appear to be related to the registrants.

Last, registered Respondent “Web Commerce Communications Limited, Client Care”, was involved in several prior UDRP proceedings concerning domain names corresponding to third party-trademarks.

Under these circumstances and on this record, the Panel finds that Respondent registered and is using the

Domain Names in bad faith.

Complainant has established Policy, paragraph 4(a)(iii).

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 disputed domain names, <alexandermcqueenco.com>, <alexandermcqueenespana.com>, <alexandermcqueenitalia.com>, <alexandermcqueenlisboa.com>, <alexandermcqueenlisboas.com>,

<alexandermcqueenmexlco.com>, <alexandermcqueennl.com>, <alexandermcqueen-rebajas.com>,
<alexandermcqueenrebajas.com>, <alexandermcqueenschuhe.com>, <alexandermcqueentenis.com>,

<alexandermcqueenusa.com>, <mcqueen-philippines.com>, be transferred to Complainant.

/Marina Perraki/
Marina Perraki
Sole Panelist
Date: September 27, 2023