Marshalls of Nevada, Inc v. Data Protected Data Protected / Data Protected
Claim Number: FA2006001900888
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marshalls.co>, registered with Tucows Domains Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 18, 2020; the Forum received payment on June 18, 2020.
On June 19, 2020, Tucows Domains Inc. confirmed by e-mail to the Forum that the <marshalls.co> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 23, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@marshalls.co. Also, on June 23, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
On July 17, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Marshalls of Nevada, Inc., is a chain of off-price department stores. Complainant has rights in the MARSHALLS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,978,509, registered June 4, 1996). Respondent’s <marshalls.co> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s MARSHALLS mark, simply adding the “.co” country-code top-level domain (“ccTLD”).
Respondent does not have rights or legitimate interests in the <marshalls.co> domain name. Respondent is not licensed or authorized to use Complainant’s MARSHALLS mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass off as Complainant and redirect users who are seeking Complainant’s products and/or services to a website that has no affiliation with Complainant. Additionally, Respondent uses the disputed domain name to resolve to a site which contains pay-per-click advertisements.
Respondent registered and uses the <marshalls.co> domain name in bad faith. Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site. Additionally, Respondent is attempting to attract Internet users to its webpage which resolves to pay-per-click advertisements. Respondent also provided false WHOIS information through use of a privacy service. Lastly, Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s rights in the MARSHALLS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Marshalls of Nevada, Inc (“Complainant”), of North Las Vegas, NV, USA. Complainant is the owner of domestic and international registrations for the mark MARSHALLS, which it has used continuously since at least as early as 1956 in connection with its operation of a chain of off-price department stores.
Respondent is Data Protected Data Protected / Data Protected (“Respondent”), of Toronto, Canada. Respondent’s registrar’s address is indicated to be in the same location. The Panel notes the <marshalls.co> domain name was registered on or about July 20, 2010.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the MARSHALLS mark based upon its registration of the mark with the USPTO (e.g., Reg. No. 1,978,509, registered June 4, 1996). Registration of a mark with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i)”). Complainant provides evidence of registration of the MARSHALLS mark with the USPTO. The Panel here finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <marshalls.co> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s MARSHALLS mark, with the mere addition of the “.co” ccTLD. The addition of a TLD to a mark may not negate any confusing similarity between a disputed domain name and mark per ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name”). The Panel here finds that the disputed domain name is confusingly similar to the MARSHALLS mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <marshalls.co> domain name because Respondent is not licensed or authorized to use Complainant’s MARSHALLS mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names”). Additionally, lack of authorization to use a mark can constitute a further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record notes “Data Protected” as the registrant and no information in the record supports a conclusion that Complainant has authorized Respondent to use the MARSHALLS mark in any way. The Panel here finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to mislead consumers and direct them to the website they may believe is affiliated with Complainant. Use of a disputed domain name to divert Internet users to a respondent’s site and confusing them into believing that some sort of affiliation with a complainant exists may not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Here, Complainant argues that Respondent wholly incorporates Complainant’s mark, which creates a likelihood of confusion. The Panel here finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) and (iii).
Additionally, Complainant argues that Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to a website containing pay-per-click advertisements. Use of a disputed domain name to resolve to a site displaying pay-per-click advertisements generally does not qualify as a bona fide offering of goods or services. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering”). Here, Complainant has provided a screenshot of Respondent’s webpage which features links to third party sites titled “Online Shopping Store,” “Womens Fashion Online Shopping,” “Homegoods Store,” “Marshalls Store,” “Retail Store,” “Home Goods Store,” and “Paving Slabs.” The Panel here finds that Respondent’s use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent has registered and uses the <marshalls.co> domain name in bad faith. Specifically, Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Here, Complainant claims Respondent created a likelihood of confusion with Complainant and its trademarks by registering a domain that in its entirety incorporates Complainant’s MARSHALLS mark, and gives the impression that interested individuals will receive information regarding Complainant. However, individuals are actually presented with links to third party websites. The Panel here finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Additionally, Complainant alleges Respondent uses the disputed domain name to misdirect users to a commercial website which hosts advertisements and links to third-party sites. Using a confusingly similar domain name to commercially benefit via pay-per-click links can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees”); see also Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). As previously mentioned, Complainant has provided screenshots of Respondent’s website which features links to various third party sites. The Panel here finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant asserts that Respondent used a WHOIS privacy service when registering the <marshalls.co> domain name. Use of a WHOIS privacy service may be further indication of bad faith registration. See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sep. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason”). Here, Complainant has provided a copy of Respondent’s WHOIS information, which shows use of a privacy service. That information supports the Panel here’s finding of bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <marshalls.co> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 31, 2020
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