Loeffler Randall, Inc. v Web Commerce Communications Limited, Client

WIPO Case No. D2023-2116

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Loeffler Randall, Inc. v. Web Commerce Communications Limited, Client
Care

Case No. D2023-2116

1. The Parties

The Complainant is Loeffler Randall, Inc., United States of America, represented by Tucker & Latifi, LLP,

United States of America.

The Respondent is Web Commerce Communications Limited, Client Care, Malaysia.

2. The Domain Names and Registrar

The disputed domain names <loefflerrandallaustralia.com>, <loefflerrandallbootssale.com>,
<loefflerrandallcanada.com>, <loefflerrandallespana.com>, <loefflerrandallfrance.com>,
<loefflerrandallireland.com>, <loefflerrandallksa.com>, <loefflerrandallshoessale.com>,
<loefflerrandallsingapore.com> and <loefflerrandalluk.com> are registered with Alibaba.com Singapore

E-Commerce Private Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2023. On May 12, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 13, 2023, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details / disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (ALIBABA.COM Singapore E- Commerce Private Limited) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 2, 2023 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 7, 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 Respondent of the
Complaint, and the proceedings commenced on June 13, 2023. In accordance with the Rules, paragraph 5,

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the due date for Response was July 3, 2023. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on July 21, 2023.

The Center appointed George R. F. Souter as the sole panelist in this matter on August 10, 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

The Complainant has, since 2004, been selling shoes, clothing and accessories internationally, under its trademark LOEFFLER RANDALL. It has registered the LOEFFLER RANDALL in over 30 countries, and details of these registrations, including United States Trademark Registration No. 3,850,447, registered on

September 21, 2010, have been supplied to the Panel.

All the disputed domain names in this case were registered on March 15, 2023, and all resolve to websites offering products competing with those sold by the Complainant, solely under the LOEFFLER RANDALL trademark.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that all of the disputed domain names are confusingly similar to its LOEFFLER geographical names or non-distinctive or descriptive elements.

The Complainant alleges that the Respondent lacks rights or legitimate interests in any of the disputed domain names, in particular that the Respondent is not generally known by any of the disputed domain names, and the Complainant has never granted permission to the Respondent to use its LOEFFLER RANDALL trademark in connection with the registration of a domain name, or otherwise.

The Complainant alleges that all the disputed domain names were registered in bad faith, and are being used in bad faith in connection with the websites mentioned above.

B. Respondent

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

6. Discussion and Findings
A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights to the trademark LOEFFLER RANDALL for the purposes of these proceedings.

It is well-established in prior decisions under the Policy that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded when comparing a trademark with a disputed domain name. The Panel finds that the gTLD “.com” may be disregarded in the present case.

The Complainant’s LOEFFLER RANDALL trademark is instantly recognizable in all the disputed domain names, rendering all the disputed domain names confusingly similar to the Complainant’s trademark. None of the added elements in the disputed domain names in this case detract from this finding.

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Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the

Policy.

B. Rights or Legitimate Interests

It is well-established in prior decisions under the Policy that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirements of paragraph 4(a)(ii) of the Policy, provided that the respondent does not come forward with evidence demonstrating rights or legitimate interests in a disputed domain name. The Panel notes that the disputed domain names resolve to websites displaying prominently the Complainant’s trademark, and offer for sale products under the Complainant’s trademarks, which the Complainant believes to be counterfeit. Such use is not bona fide. The Respondent in this case did not reply to the Complainant’s contentions.

Accordingly the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the

Policy.

C. Registered and Used in Bad Faith

The Panel is of the view that the finding that a respondent lacks rights or legitimate interests in a disputed domain name can, in the circumstances of a particular case, lead to a finding of registration in bad faith. The circumstances of the present case, where the Panel is convinced that the Respondent has mounted a concentrated bad faith attack on the Complainant’s rights in its LOEFFLER RANDALL trademark, are such that a finding of registration in bad faith is clearly appropriate, and the Panel so finds, in connection with all the disputed domain names in this case.

It is well-established in prior decisions under the Policy that the use of a disputed domain name in direct
competition with genuine goods sold by the complainant constitutes use of the disputed domain name in bad
faith. That is clearly the situation in the circumstances of the present case in connection with all of the
disputed domain names, and the Panel finds that all the disputed domain names in this case are being used
in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 disputed domain names <loefflerrandallaustralia.com>, <loefflerrandallbootssale.com>,
<loefflerrandallcanada.com>, <loefflerrandallespana.com>, <loefflerrandallfrance.com>,
<loefflerrandallireland.com>, <loefflerrandallksa.com>, <loefflerrandallshoessale.com>,

<loefflerrandallsingapore.com>, <loefflerrandalluk.com> be transferred to the Complainant.

/George R. F. Souter/
George R. F. Souter
Sole Panelist
Date: August 24, 2023