Gallery Department, LLC v Naeem Abbas

WIPO Case No. D2023-4816

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Gallery Department, LLC v. Naeem Abbas

Case No. D2023-4816

1. The Parties

The Complainant is Gallery Department, LLC, United States of America (the “United States”), represented by

Adelman Matz P.C., United States.

The Respondent is Naeem Abbas, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <gallerydeptshop.net> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21,

2023. On November 21, 2023, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On November 21, 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 (Redacted for Privacy) and contact information in
the Complaint. The Center sent an email communication to the Complainant on November 22, 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 November 27,

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 November 29, 2023. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2023. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on December 21, 2024.

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The Center appointed Jeremy Speres as the sole panelist in this matter on January 10, 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 by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant, based in Los Angeles, United States trades as a unisex clothing brand. The Complainant

has owned and operated a website at “gallerydept.com” since 2014 and operates retail stores in Los Angeles

and Miami.

The Complainant owns trade mark registrations for its GALLERY DEPT. mark, and variations of it, in numerous jurisdictions including United States Trade Mark Registration No. 6048485 GALLERY DEPT. in class 25, having a registration date of May 5, 2020.

The disputed domain name was registered on December 23, 2022. It redirects to a website headed “Gallery well as other information referencing the Complainant, such as the name of the Complainant’s founder.

Dept.” purporting to be an online clothing store offering “Gallery Dept.” clothing at significant price reductions.

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 was registered and has been used in bad faith given its usage to offer counterfeit merchandise for sale targeting the Complainant.

B. Respondent

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

6. Discussion and Findings

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 trade mark and the disputed domain name. WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

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

WIPO Overview 3.0, section 1.2.1. The entirety of the Complainant’s GALLERY DEPT. mark is reproduced

within the disputed domain name without the full stop. Accordingly, the disputed domain name is confusingly

similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The Panel finds the first element of the Policy has been established.

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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.

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.

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 such as those enumerated in the Policy or
otherwise.

The general impression created by the website to which the disputed domain name redirects is one of impersonation of the Complainant. UDRP panels have categorically held that the use of a domain name for illegal activity (here impersonation/passing off) can never confer rights or legitimate interests on a

respondent. WIPO Overview 3.0 at section 2.13.1. To the extent that the disputed domain name’s website

might be considered that of a reseller of the Complainant’s products, it does not meet the requirements of

the well-known Oki Data test given that the site does not accurately and prominently disclose the

Respondent’s relationship with the Complainant. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case

No. D2001-0903; and WIPO Overview 3.0 at section 2.8.

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 website to which the disputed domain name redirects clearly impersonates the Complainant.

Considering this and the composition of the disputed domain name wholly incorporating the Complainant’s mark plus a term, “shop”, that is descriptive of the Complainant’s business, the Respondent must have had

the Complainant in mind when registering and using the disputed domain name. It is clear in these circumstances that the Respondent sought to impersonate the Complainant, falling squarely within paragraph 4(b)(iv) of the Policy (Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).

The Panel has independently established that the disputed domain name is listed for sale on a prominent domain name marketplace for USD 811, which is likely, without evidence from the Respondent to the

contrary, in excess of the Respondent’s out-of-pocket expenses relating directly to the disputed domain

name. Thus, paragraph 4(b)(i) of the Policy is also applicable.

The Panel finds that the Complainant has established the third element 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 name <gallerydeptshop.net> be transferred to the Complainant.

/Jeremy Speres/

Jeremy Speres

Sole Panelist
Date: January 24, 2024