Tommy Hilfiger Licensing LLC v yi sha bei er lai xie te san shi fu ren

WIPO Case No. D2025-3072

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Tommy Hilfiger Licensing LLC v. yi sha bei er lai xie te san shi fu ren,
a di si ni gu la si

Case No. D2025-3072

1. The Parties

Complainant is Tommy Hilfiger Licensing LLC, United States of America (“United States”), represented by

Lipkus Law LLP, Canada.

Respondents are yi sha bei er lai xie te san shi fu ren, United States, and a di si ni gu la si, United States.

2. The Domain Names and Registrar

The disputed domain names <boxershortstommyhilfiger.com>, <drestommyhilfiger.com>,
<polostommyhilfigerusa.com>, <tommyhilfigeraracist.com>, <tommyhilfigerjacketmens.com>,
<tommyhilfigerpants.com>, <tommyhilfigerracist.com>, <tommyhilfigersweatshirt.com>,

<tommyhilfigertshirts.com> are registered with Gname.com Pte. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2025. connection with the disputed domain names. On August 5, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Redacted for privacy) and contact information in the Complaint.

The Center sent an email communication to Complainant on August 6, 2025, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting Complainant to either file separate complaints for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. Complainant filed an amended Complaint on August 6, 2025.

The Center verified that 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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondents of the Complaint, and the proceedings commenced on August 12, 2025. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2025. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on September 2, 2025.

The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on September 8, 2025. 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 a subsidiary of a widely known global corporation that sells, designs, manufactures and distributes fashion apparel and related items. Complainant owns several international trademark registrations for the famous TOMMY HILFIGER marks, including for example: United States Registration No. 1,398,612, registered on June 24, 1986; and Canadian Trademark Registration No. TMA446291, registered on August 18, 1995.

All nine disputed domain names were registered on July 20, 2025, and each resolves to an identical inactive webpage.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

Complainant avers that “All nine disputed domain names follow a common naming pattern, each incorporating the Complainant’s ‘TOMMY HILFIGER’ mark in its entirety, a descriptive or critical term (e.g. ‘pants’, ‘tshirts’, ‘racist’)” and that “all the disputed domain names were registered through the same registrar, Gname.com Pte.Ltd., on the same day. [….] At present, each domain name is inactive and resolves to a ‘This site can’t be reached’ error page”.

Addressing the question of bringing a single consolidated complaint for nine disputed domain names against the two separately listed registrants (a question that the Panel discusses below), Complainant alleges that:

“The registrant names share several structural similarities. Both are presented entirely in lowercase, transliterated Mandarin to describe U.S. addresses is highly unusual for native U.S. residents and suggests that both sets of registrant data were entered by the same non-native English speaker or group employing a consistent stylistic approach.”
formatted in a pinyin-style transliteration (i.e. phonetic renderings of Mandarin sounds using Latin
characters), and are inconsistent with conventional Western names. Each name is comprised of multiple
monosyllabic components, separated by spaces, with no capitalization or surname/first name differentiation.

Complainant also notes that the phone numbers for the listed registrants are both in the area code associated with Miami, Florida, despite listing physical addresses in Wisconsin and New Jersey, and that both registrants list their company in the registrar’s form as “NIL”.

B. Respondent

Respondents did not reply to Complainant’s contentions.

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6. Discussion and Findings

Consolidation: Multiple Respondents

The amended Complaint was filed in relation to nominally different domain name registrants. Complainant contends that the disputed domain names are under common control, “[i]n light of the identical or highly similar registrant information, the shared registrar and registration date, the uniform inactive webpages, the clear naming pattern targeting Complainant’s [TOMMY HILFIGER] trademark, and the use of a common DNS provider”. Complainant therefore requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules.

The disputed domain name registrants did not comment on Complainant’s request.

Paragraph 3(c) of the Rules states 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 addressing Complainant’s request, the Panel considers whether (i) the disputed domain names or
corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable
to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 4.11.2.

With respect to common control, the Panel notes that the record reflects that the disputed domain names were all registered the same day with the same registrar and that they resolve to inactive web pages. Adding to that, Complainant’s points respecting the use of the hanyu pinyin transliteration and the similar composition of all of the disputed domain names support the Panel’s conclusion that the disputed domain names are under common control.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “Respondent”) in a single proceeding.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing
(or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison

between Complainant’s trademark and the disputed domain names. WIPO Overview 3.0, section 1.7.

Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The Panel finds that the mark is recognizable within each of the disputed domain names.
Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the

Policy. WIPO Overview 3.0, section 1.7.

The Panel finds that the first element of paragraph 4(a) of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name.

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Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized
that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task
of “proving a negative”, requiring information that is often primarily within the knowledge or control of the
respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or
legitimate interests, the burden of production on this element shifts to the respondent to come forward with
relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0,
section 2.1.

In this case, an argument might be made that the registration of the two disputed domain names combining Complainant’s mark with the term “racist” was for purposes of posting critical commentary and therefore might support an argument of fair or legitimate noncommercial use. Respondent, however, has refrained from responding to the Complaint and there is no evidence to support such a finding. Moreover, the Panel notes that the remaining seven disputed domain names contain additional terms of a commercial or online nature, relating to Complainant’s products or geographic location.

Having reviewed the available record, the Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.

The Panel finds that the second element of Policy paragraph 4(a) has been established.

C. Registered and Used in Bad Faith

The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

In the present case, the Panel notes that Respondent, without authorization, registered the nine disputed
domain names on the same day, all of which incorporate in full Complainant’s well-known TOMMY
HILFIGER mark. To the Panel, this is a clear indication that Respondent knew of and intended to target
Complainant. The Panel finds that this constitutes bad faith. E.g., Veuve Clicquot Ponsardin, Maison
Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (disputed domain name
“so obviously connected with such a well-known product that its very use by someone with no connection

with the product suggests opportunistic bad faith”).

Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not
prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having
reviewed the available record, the Panel notes the distinctiveness and reputation of Complainant’s
trademark, and the composition of the disputed domain names, and finds that in the circumstances of this
case the passive holding of the disputed domain names does not prevent a finding of bad faith under the

Policy.

Respondent’s failure to maintain accurate contact details as required in Respondent’s agreement with the

Registrar and Respondent’s failure to respond to the Complaint are further evidence of bad faith.

The Panel finds that Complainant has established the third element of paragraph 4(a) of the Policy.

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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 <boxershortstommyhilfiger.com>, <drestommyhilfiger.com>,
<polostommyhilfigerusa.com>, <tommyhilfigeraracist.com>, <tommyhilfigerjacketmens.com>,
<tommyhilfigerpants.com>, <tommyhilfigerracist.com>, <tommyhilfigersweatshirt.com>,

<tommyhilfigertshirts.com> be transferred to Complainant.

/Jeffrey D. Steinhardt/
Jeffrey D. Steinhardt
Sole Panelist
Date: September 22, 2025