ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Telfar LLC v. Yuanqin Lin Case No. D2023-5202 1. The Parties The Complainant is Telfar LLC, United States of America (“United States”), represented by Marq Vision Inc., Republic of Korea. The Respondent is Yuanqin Lin, China. 2. The Domain Names and Registrar The disputed domain names , , , , and (the “Domain Names”) are registered with NameSilo, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2023. On December 14, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 14, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent (Domain Administrator, PrivacyGuardian.org llc) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 15, 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 amendment to the Complaint on December 18, 2023. The Center verified that the Complaint, together with the amendment, 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 December 28, 2023. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2024.
page 2 The Center appointed Mathias Lilleengen as the sole panelist in this matter on January 31, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant designs, manufactures, and sells handbags, apparel, and accessories under the registered TELFAR trademarks in the United States and worldwide. The Complainant actively promotes its trademarks through its official website at “www.telfar.net”. The Complainant has registered trademarks in the United States, such as United States trademark registration number 5,895,525 registered on October 29, 2019, and subsequently obtained registrations in numerous jurisdictions worldwide. The Complainant has used its trademarks globally in connection with the sale of handbags, apparel, and accessories since as early as 2005. The Domain Names have been registered on December 14 and 15, 2022. The Domain Names have resolved to websites that are similar to the Complainant’s official website, copying the content, layout, design of the Complainant’s website. At the time of drafting the Decision, the Domain Names resolved to error pages. 5. Parties’ Contentions A. Complainant The Complainant argues that the Domain Names are under common control. All were registered using the same registrar and privacy protection, and they share the same IP address. The Domain Name have resolved to websites with similar content, layout, design, and contact details. The Complainant provides evidence of trademark registrations and argues that its trademark is famous and distinctive. The Domain Names reproduce the Complainant’s trademark. The inclusion of descriptive terms such as “bags”, “shopping”, or “purseshop”, along with the generic top-level domain extension (“gTLD") “.com”, do not mitigate confusing similarity. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant has not authorized the Respondent to use its trademarks in any way. The Respondent has no prior right or legitimate interest justifying use of the Complainant’s trademark, and is not making a legitimate, noncommercial or fair use of the Domain Names or using them in connection with a bona fide offering of goods or services. The Complainant argues that the Domain Names were registered and are being used in bad faith as the Respondent must have had knowledge of the Complainant’s prior rights when the Respondent registered the Domain Names. The Respondent’s use suggests that the Respondent acted with opportunistic bad faith in registering the Domain Names, intending to make illegitimate use of them. The Domain Names were registered to attract Internet users to the Respondent’s websites by creating a likelihood of confusion or association between the Complainant’s trademark and Domain Names. The Domain Names also prevent the Complainant from utilizing them, adversely affecting the Complainant’s business with a clear intention to harm its commercial activity. B. Respondent The Respondent did not reply to the Complainant’s contentions.
page 3 6. Discussion and Findings A. Identical or Confusingly Similar The test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Domain Names. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant has established that it has rights in the trademark TELFAR. Each Domain Name incorporates the Complainant’s trademark in its entirety, with the addition of different terms such as “large”, “purse”, “shop”, “ugg”, “tote” or “bag”. These additions do not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8. For the purpose of assessing under paragraph4(a)(i) of the Policy, the Panel may ignore the gTLD as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1. Based on the available record, the Panel finds the Domain Names are confusingly similar to the trademark in which the Complainant has rights. The first element of paragraph 4(a) the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the respondent may demonstrate rights or legitimate interests in a disputed domain name. While 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 often-impossible 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1. Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Names. There is no evidence of the 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. As described above, the Respondent has used the Domain Names to resolve to websites that appear to imitate the Complainant’s website. Further, also the composition of the Domain Names carries a risk of implied affiliation as it impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1. Based on the available record, the Panel finds the second element of the Policy 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. The composition and use of the Domain Names prove that the Respondent was aware of the Complainant and its prior rights when the Respondent registered the Domain Names. The Respondent has failed to provide any evidence of actual or contemplated good faith use of the Domain Names. The use of the Domain Names for websites that appear to imitate the Complainant to attract Internet users, is evidence of bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy.
page 4 For the reasons set out above, the Panel concludes that the Domain Names were registered and are being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy. The third element of the Policy has been established. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders the Domain Names , , , and transferred to the Complainant. /Mathias Lilleengen/ Mathias Lilleengen Sole Panelist Date: February 5, 2024
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