Thegvgallery LLC v Umar Shahroz / rr

WIPO Case No. DCO2025-0050

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

THEGVGALLERY LLC v. Umar Shahroz / rr

Case No. DCO2025-0050

1. The Parties

The Complainant is THEGVGALLERY LLC, United States of America, represented by Immix Law Group PC,

United States of America.

The Respondent is Umar Shahroz / rr, Pakistan, self-represented.

2. The Domain Name and Registrar

The disputed domain name <thegvgalleryus.com.co> is registered with CloudFlare, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2025. connection with the disputed domain name. On June 30, 2025, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 the due date for Response was July 20, 2025.

On July 15, 2025 and July 16, 2025, the Respondent sent two informal communications indicating his intention to negotiate a settlement. The Center invited the Complainant to consider this invitation to negotiate and request the suspension of the proceedings. The Complainant did not request the suspension of the proceeding to negotiate the transfer of the disputed domain name. For this reason, on July 22, 2025, the Center notified the commencement of panel appointment.

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The Respondent on July 24, 2025, indicated in a new informal communication that it would provide evidence related to the case regarding the disputed domain name. The Center acknowledged receipt of this communication on July 25, 2025.

On the same date, the Center appointed Vincent Denoyelle as the sole panelist in this matter. 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.

On July 25, 2025, the Respondent sent a new informal communication indicating that it could remove the content of the website associated with the disputed domain name.

4. Factual Background

The Complainant is an international fashion retailer that has traded under the mark THEGVGALLERY since

2018 (which was not registered until June 3, 2025).

The Complainant owns the following THEGVGALLERY trade mark:

- United States of America Trade Mark THEGVGALLERY, registered on June 3, 2025 under number 7,815,194 and applied for on August 16, 2024, with a date of first use in commerce in 2018.

The Complainant owns several domain names reflecting its THEGVGALLERY trade mark including
<thegvgallery.com> which it registered in 2020.

The disputed domain name was registered on April 30, 2025 and it directs to a website (thereafter the “Website”) reproducing the Complainant’s trade mark THEGVGALLERY and other trade marks of the Complainant. The Website purports to sell the products retailed by the Complainant and bearing the Complainant’s trade marks and the Website gives the impression that it is affiliated with the Complainant.

Respondents with the same name as the Respondent in the present proceedings have been involved in previous cases under the Policy against the Complainant, where previous panels found in favour of the Complainant.

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 merely contains the Complainant’s trade mark and the added geographical designation “us”. The Complainant asserts that the addition of “us” does not make the disputed domain name any less confusingly similar to the THEGVGALLERY trade mark and thus the disputed domain name is confusingly similar to the Complainant’s trade mark.

The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent is not in any way associated with the Complainant and its trade marks and, to the Complainant’s knowledge, has not been known by or linked to the name “thegvgallery”. The

Complainant points out that the Respondent has not been licensed or otherwise authorized to use the disputed domain name. The Complainant contends that the Respondent has not made any bona fide offering of goods or services using the disputed domain name given that the disputed domain name diverts

Internet users to false online storefronts that purport to be the Complainant, when in actuality, on information and belief, the Respondent is accepting orders and payment but either sending out fake products or not

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sending out the ordered products, thus illegitimately and unjustly capitalizing on the Complainant’s

THEGVGALLERY trade mark and harming the Complainant’s reputation.

In terms of bad faith, the Complainant argues that the Respondent would have been well aware of the and financial gain. The Complainant also highlights the fact that there is a pattern of bad faith conduct on the part of the Respondent who has been a party involved in previous cases under the Policy against the Complainant and where previous panels found in favour of the Complainant.

Complainant given the use in commerce of the term “thegvgallery” since 2018 and the online visibility of the
Complainant’s retail business. The Complainant contends that the Respondent is intentionally targeting the
B. Respondent

The Respondent did not reply to the Complainant’s contentions. The Respondent sent very brief informal communications to the Center where it did not remotely address any of the merits of the Complaint and the present case. In its informal communications, the Respondent first expressed a willingness to explore

settlement and then asked for the disputed domain name not to be transferred.

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 THEGVGALLERY trade mark is reproduced within the disputed domain name. purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, “us”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the trade mark 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, 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.

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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.

Panels have held that the use of a domain name for illegitimate activity here, alleged sale of fake goods and
impersonation/passing off can never confer rights or legitimate interests on a respondent.

WIPO Overview 3.0, section 2.13.1.

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 Panel preliminarily notes that the Complainant’s trade mark THEGVGALLERY was registered after the registration of the disputed domain name.

Therefore, a question arises as to whether bad faith can be found in this case since the disputed domain name was registered before the Complainant acquired registered trade mark rights.

Generally, where a respondent registers a domain name before the complainant’s trade mark rights accrue, panels will not normally find bad faith on the part of the respondent. WIPO Overview 3.0, section 3.8.1.

As an exception to the general proposition described above, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trade mark rights, panels have been prepared to find that the respondent has acted in bad faith. WIPO Overview 3.0, section 3.8.2.

Here it is clear to the Panel that the Respondent’s intent in registering the disputed domain name was to unfairly capitalize on the Complainant’s unregistered trade mark rights given that (i) the THEGVGALLERY trade mark application was filed several months before the disputed domain name was registered, (ii) the date of first use in commerce of the THEGVGALLERY trade mark predates the disputed domain name by more than six years, (iii) evidence has been produced to show the Internet visibility and reputation of the business carried out under the THEGVGALLERY trade mark, before the registration of the disputed domain name and (iv) there is a pattern of bad faith conduct on the part of the Respondent who has been a party involved in previous cases under the Policy against the Complainant and where previous panels found in favour of the Complainant.

The Panel finds that the Respondent acted in opportunistic bad faith when registering the disputed domain name, as it is so obviously connected with the Complainant and its services that its selection by the Respondent, which has no connection with the Complainant, suggests the disputed domain name has been registered with a deliberate intent to create an impression of an association with the Complainant (see for instance New European College GmbH v. Moniker Privacy Services / Mr. Li Chang, NECM, WIPO Case No. D2017-0538).

The Panel thus finds that the disputed domain name was registered in bad faith.

As for the use of the disputed domain name in bad faith, given the circumstances described in the Complaint and the evidence provided by the Complainant, the Panel considers that the disputed domain name is used in bad faith.

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In the present case, the Panel notes that the Website purports to sell the products retailed by the affiliated with the Complainant. The Complainant asserts – and the Respondent has not denied that – the Respondent is accepting orders and payment but either sending out fake products or not sending out the ordered products.

Panels have held that the use of a domain name for illegitimate activity here, alleged sale of fake goods and impersonation/passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4.

The fact that the Respondent has been a party involved in previous cases under the Policy against the that the Respondent is using the disputed domain name in bad faith.

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

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 <thegvgalleryus.com.co> be transferred to the Complainant.

/Vincent Denoyelle/
Vincent Denoyelle
Sole Panelist
Date: August 8, 2025