Leon Max, Inc. v Serhii Popelniukh

WIPO Case No. D2025-1165

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Leon Max, Inc. v. Serhii Popelniukh

Case No. D2025-1165

1. The Parties

The Complainant is Leon Max, Inc., United States of America (“United States”), represented by Fross Zelnick

Lehrman & Zissu, PC, United States.

The Respondent is Serhii Popelniukh, Ukraine.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2025. On March 21, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 21, 2025, 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 (WITHHELD FOR PRIVACY EHF) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 25, 2025, 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 March 25, 2025.

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 March 27, 2025. In accordance with the Rules, paragraph
5, the due date for Response was April 16, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on April 17, 2025.

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The Center appointed Tobias Malte Müller as the sole panelist in this matter on April 28, 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. Further Procedural Considerations

Under paragraph 10 of the Rules, the Panel is required to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, and also that the administrative proceeding takes place with due expedition.

Since the Respondent’s mailing address is stated to be in Ukraine, which is subject to an international conflict at the date of this Decision that may impact case notification, it is appropriate for the Panel to consider, in accordance with its discretion under paragraph 10 of the Rules, whether the proceeding should

continue.

Having considered all the circumstances of the case, the Panel is of the view that it should continue, even though it is not quite clear if the Written Notice has duly been delivered to the address according to the courier delivery records (“Misrouting”). The Panel has nevertheless reached this conclusion in part because the Panel recognizes that the Center employed all reasonably available means calculated to achieve actual notice to the Respondent. In particular, the Center successfully sent the Notification of the Complaint to the email address disclosed for the Respondent by the Registrar in its Registrar Verification Response. There is no indication that the email notification has not been successfully delivered.

Furthermore, the Panel notes that the disputed domain name was created in January 2024, during the international conflict, suggesting that the Respondent is able to access the Internet, maintain control of the disputed domain name, and should have received at least electronic notice of this proceeding.

Finally, for the reasons which are set out later in this Decision, the Panel has no serious doubt that the

Respondent registered and has used the disputed domain name in bad faith.

The Panel therefore concludes that the Respondent has been given a fair opportunity to present his case,
and so that the administrative proceeding takes place with due expedition, the Panel will proceed to a

Decision accordingly.

5. Factual Background

It results from the Complainant’s undisputed and documented allegations, that the Complainant is a women’s luxury fashion brand with offices in Pasadena, California and founded in 1979. It commercializes its fashion products under the brand MAX STUDIO. The Complainant commercializes its MAX STUDIO products

through a storefront at “Amazon.com”.

The Complaint is based amongst others on United States trademark no. 6,053,854 for MAX STUDIO, registered on May 12, 2020 for goods in class 25.

According to the WhoIs information, the disputed domain name was registered on January 26, 2024.

The disputed domain name resolves to an active website which is an imitation of the Complainant’s storefront at “Amazon.com” and makes it appear as if it was the Complainant’s website. In particular, the Respondent’s website under the disputed domain name (i) prominently shows the Complainant’s MAX STUDIO trademark in the header; (ii) copies nearly every feature of the Complainant’s storefront, including the photos; (iii) claims a copyright in the name of MAX STUDIO at the bottom of said website; and (iv) refers exclusively to MAX STUDIOS in the “about” section.

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6. 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:

(1) The disputed domain name is confusingly similar to the Complainant’s MAX STUDIO trademark because it incorporates said mark in its entirety (minus the space), merely adding the descriptive term, “dresses,” and the “.com” generic Top-Level Domain (“gTLD”);

(2) Consumers and third parties who search the Internet for legitimate information about the Complainant and the MAX STUDIO products may be misdirected to the disputed domain name, creating a probability of confusion. The website associated with the disputed domain name demonstrates the Respondent’s

knowledge of the Complainant and its MAX STUDIO trademarks, as it is passing itself off as the
Complainant’s own website, purportedly offering the Complainant’s MAX STUDIO products, and stealing the
Complainant’s images to do so. The Respondent’s website unquestionably trades on the recognition of

Complainant’s MAX STUDIO trademarks and as such could not constitute a bona fide use;

(3) There is no basis for the Respondent to have chosen the disputed domain name unless the

Respondent was seeking to create an association with the Complainant. Thus, the Respondent selected and is using the disputed domain name to trade on the Complainant’s rights and reputation. In addition, the Respondent uses its dispute domain name in connection with a website that purports to offer the

Complainant’s MAX STUDIO products and makes unauthorized use of the Complainant’s own product images to do so. Consequently, Internet users are likely to believe, mistakenly, that the disputed domain name is owned by, related to, or associated with the Complainant.

B. Respondent

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

7. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that each disputed domain name be transferred or cancelled:

(i) each 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 each disputed domain name; and

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

The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

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

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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.

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 entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy, WIPO Overview 3.0, section 1.7.

Although the addition of another term, here “dresses”, may bear on the assessment of the second and third elements, the Panel finds the addition of such a term does not prevent a finding of confusing similarity between the disputed domain names and the marks for the purposes of the Policy, WIPO Overview 3.0, section 1.8.

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.

Although the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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.

Having reviewed the available 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 such as those enumerated in the Policy or otherwise.

As detailed above, the disputed domain name resolves to a website reproducing, without authorization, the Complainant’s trademark and logo and allegedly selling the Complainant’s products. There is no accurate and prominent disclaimer regarding the Respondent’s (missing) relationship with the Complainant on the website under the disputed domain name.

Moreover, the Panel notes that the disputed domain name contains the Complainant’s registered trademark combined with the term “dresses” which is inherently descriptive for the Complainant’s field of commerce as a fashion label. It is acknowledged amongst previous panels that such additional terms within the trademark owner’s field of commerce may or may not by themselves trigger an inference of affiliation, and would

normally require a further examination by the panel of the broader facts and circumstances of the case – particularly including the associated website content – to assess potential respondent rights or legitimate interests, WIPO Overview 3.0 at section 2.5.1. In the present case, taking into account that the website to which the disputed domain name resolves is an imitation of the Complainant’s storefront at “amazon.com”, allegedly selling the Complainant’s products and reproducing without authorization the Complainant’s
trademark and product pictures, the Panel sees the disputed domain name as tending to suggest
sponsorship or endorsement by the trademark owner.

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Furthermore, the Panel notes the Complainant’s contention that consumers who search the Internet for the MAX STUDIO products may be misdirected to the disputed domain name, creating a probability of confusion. The Panel has conducted such a search for the trademark MAX STUDIO in Google, see section 4.8 of the WIPO Overview 3.0, and notes that although the Complainant’s storefront at “Amazon.com” appear within the first results, the disputed domain name appears as the very first result. The Panel considers that the composition of the disputed domain name directly targeting the Complainant’s field of activity enhances the false impression that the disputed domain name is somehow related to the Complainant and its official web shop. Such composition of the disputed domain name cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner, see section 2.5.1 of the WIPO Overview 3.0.

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. One of these circumstances is that the Respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy). This is the case here.

According to the Complainant’s documented allegations the disputed domain name resolves to an active website which is an imitation of the Complainant’s storefront at “Amazon.com” and makes it appear as if it was the Complainant’s website. In particular, the Respondent’s website under the disputed domain name:

(i)        prominently shows the Complainant’s MAX STUDIO trademark in the header;

(ii)       copies nearly every feature of Complainant’s storefront, including the photos;

(iii)      claims a copyright in the name of MAX STUDIO at the bottom of said website and

(iv)      refers exclusively to MAX STUDIOS in the “about” section.

Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the registered the disputed domain names and tries to pass itself off as the Complainant.

The Panel finds that the Complainant has established the third element of the Policy.

8. 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 <maxstudiodresses.com> be transferred to the Complainant.

/Tobias Malte Müller/
Tobias Malte Müller
Sole Panelist
Date: May 12, 2025