Designli LLC v Himura Kenshin

WIPO Case No. D2023-3630

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Designli LLC v. Himura Kenshin

Case No. D2023-3630

1. The Parties

The Complainant is Designli LLC, United States of America (“United States”), represented by

Vanderbloemen Law Firm, United States.

The Respondent is Himura Kenshin, Singapore.

2. The Domain Name and Registrar

The disputed domain name <designliss.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2023. connection with the disputed domain name. On August 30, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Owner of <designliss.com> (to be identified), through PrivacyGuardian.org LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 4, 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 September 8, 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 September 13, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2023.

page 2

The Center appointed Willem J. H. Leppink as the sole panelist in this matter on October 12, 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 following facts are undisputed.

The Complainant is Designli LLC, a United States company operating in the field of website and mobile application design and development.

The Complainant is the owner of the following trademark registration United States Trademark Registration
No. 5250721 for DESIGNLI (word mark), registered on July 25, 2017.

The Complainant owns the domain name <designli.co>, which solves to its official website. The domain name was registered on February 15, 2013.

According to the WhoIs records, the disputed domain name was registered on July 18, 2023. At the time filing the Complaint the disputed domain name resolved to a websites in which the Complainant’s trademark, logo and get-up were reproduced. The disputed domain name is currently inactive. Also, the Complainant provided evidence of Whatsapp messages that appear to be from Respondent or its agents soliciting people to sign up on the disputed domain name.

5. Parties’ Contentions

A. Complainant

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

Notably, the Complainant contends that the disputed domain name is confusingly similar to Complainant’s
domain name, in that it uses Complainant’s trademark DESIGNLI. Furthermore, the Respondent and its
agents are using the disputed domain name to impersonate Complainant and perpetuate a scam. Earlier
this year, a WIPO Panel awarded relief to the Complainant involving a similar scam and three domain names

impersonating Complainant, see Designli LLC v. Weng Long Chen and 铁 陈, WIPO Case No. D2023-1857.

The disputed domain name resolves to a website that mimics the Complainant’s website and displays the believing the disputed domain name is associated with the Complainant.

The Respondent’s registration of the disputed domain name was not accidental or unintentional, but was done and continues to be in bad faith. The Respondent registered the disputed domain name in bad faith and primarily for the purpose of disrupting and trading on the Complainant’s business. The Respondent, by

registering and using the disputed the domain name, intentionally attempted to attract for financial gain,
Internet users to the Respondent’s website or other on-line locations, by creating a likelihood of confusion
with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the

Respondent’s website or location or of a product or service on the Respondent’s website or location.

B. Respondent

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

page 3

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:

(i)      the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii)     the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)    the disputed domain name has been registered and is being used in bad faith.

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 the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

Based on the available record, the Panel finds the 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 the entirety of the mark is reproduced within the disputed domain name. Twice the letter “s” was added after the word element “designli”. This, however, does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. The mark is still recognizable within the disputed domain name. Accordingly, the disputed domain name is identical or confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Based on the available record, the Panel finds the first element of 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. 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 disputed domain name. 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 disputed domain name.

Panels have held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

Based on the available record, the Panel finds the second element of the Policy has been established.

page 4

C. Registered and Used in Bad Faith

The Panel refers to its considerations under section 6.B.

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.

In the present case, the Panel notes that the Respondent and/or its agents have clearly been engaged in phishing activities by registering and using the disputed domain name by purporting to be the Complainant.

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.

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. Having reviewed the record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. While panelists will look at the totality of the circumstances in each case, factors that

have been considered relevant in applying the passive holding doctrine include: (i) the degree of trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response
or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its
identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the
implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3.

Panels have held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) constitutes bad faith. WIPO Overview 3.0, section 3.4. . Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel also notes that the Respondent has apparently made use of a non-existent street address, which in itself is also an indication of bad faith. Also the lack of a response is an indication of bad faith.

Based on the available record, the Panel finds 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 that the disputed domain name, <designliss.com> be transferred to the Complainant.

/Willem J. H. Leppink/
Willem J. H. Leppink
Sole Panelist
Date: October 20, 2023