Marshalls of Nevada, Inc. v. Savvy Investments, LLC Privacy ID# 945766
Claim Number: FA1812001822175
Complainant is Marshalls of Nevada, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Savvy Investments, LLC Privacy ID# 945766 (“Respondent”), Wyoming, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marshallsstores.com>, registered with Sea Wasp, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 21, 2018; the Forum received payment on December 31, 2018.
On December 26, 2018, Sea Wasp, LLC confirmed by e-mail to the Forum that the <marshallsstores.com> domain name is registered with Sea Wasp, LLC and that Respondent is the current registrant of the name. Sea Wasp, LLC has verified that Respondent is bound by the Sea Wasp, LLC 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 January 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 23, 2019 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@marshallsstores.com. Also on January 3, 2019, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 25, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, Marshalls of Nevada, Inc., is one of the largest operators of off-price department stores with over 1,000 stores in the United States and Canada. Complainant has rights in the MARSHALLS mark based on its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,978,509, registered Jun. 4, 1996) and the Office for Harmonization in the International Market (“OHIM”) (e.g. Reg. No. 010688406, registered Feb. 15, 2014). Respondent’s <marshallsstores.com> domain name is confusingly similar to Complainant’s MARSHALLS mark because Respondent merely adds the generic and/or descriptive term “store” and the generic top-level domain (“gTLD”) to Complainant’s fully incorporated mark.
Respondent lacks rights or legitimate interests in the <marshallsstores.com> domain name because Respondent is not commonly known by the disputed domain name nor does Respondent operate a business under the MARSHALLS mark. Furthermore, Respondent is not authorized to use the MARSHALLS mark. Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Rather, the resolving webpage displays pay-per-click links which divert internet users to Complainant’s competitors and Respondent makes an offer to sell the disputed domain name.
Respondent registers and uses the <marshallsstores.com> domain name in bad faith. Respondent’s offer to sell the disputed domain name is evidence of bad faith registration and use. Additionally, Respondent is a serial cybersquatter and engages in a pattern of registering domain names incorporating marks belonging to others, which is also evidence of bad faith. Respondent uses the disputed domain name to attract Internet users for commercial gain by displaying pay-per-click hyperlinks on the resolving webpage, which demonstrates bad faith registration and use. Moreover, Respondent displaying links to Complainant’s competitors demonstrates Respondent had actual knowledge of Complainant’s rights in the MARHSALLS mark at the time of registration. Finally, Respondent failed to respond to Complainant’s cease and desist correspondence.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant, Marshalls of Nevada, Inc., is a United States company and one of the largest operators of off-price department stores with over 1,000 stores in the United States and Canada.
2. Complainant has established its trademark rights in the MARSHALLS mark based on its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,978,509, registered Jun. 4, 1996) and the Office for Harmonization in the International Market (“OHIM”) (e.g. Reg. No. 010688406, registered Feb. 15, 2014).
3. Respondent registered the <marshallsstores.com> domain name on November 16, 2001.
4. Respondent has caused the disputed domain name to resolve to a webpage that displays pay-per-click links which divert internet users to Complainant’s competitors.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the MARSHALLS mark based on its registration with the USPTO and OHIM. Registration of a mark with multiple trademark agencies is sufficient to demonstrate a complainant’s rights in a mark under Policy ¶ 4(a)(i). See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides copies of its registration for the MARSHALLS mark with the USPTO (e.g. Reg. No. 1,978,509, registered June 4, 1996) and OHIM (e.g. Reg. No. 010688406, registered Feb. 15, 2014). See Compl. Ex. E. Therefore, the Panel finds Complainant has rights in the MARSHALLS mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MARSHALLS mark. Complainant contends Respondent’s <marshallsstores.com> domain name is confusingly similar to Complainant’s MARSHALLS mark because Respondent merely adds the relevant descriptive term “store” and the gTLD “.com” to Complainant’s fully incorporated mark. The addition of a term descriptive of goods or services connected to the mark and a gTLD may be insufficient to distinguish a disputed domain name from a complainant’s mark. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Indeed, as Complainant argues persuasively, the addition of the word “stores” exacerbates the confusing similarity as it is so well known that Complainant operates stores that the internet user would assume that the domain name relates to Complainant’s business conducted through its stores. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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 finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MARSHALLS trademark and to use it in its domain name, adding merely the descriptive word “stores”;
(b) Respondent registered the <marshallsstores.com> domain name on November 16, 2001;
(c) Respondent has caused the disputed domain name to resolve to a webpage that displays pay-per-click links which divert internet users to Complainant’s competitors;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits Respondent lacks rights or legitimate interest in the <marshallsstores.com> domain name because Respondent is not commonly known by the disputed domain name nor does Respondent operate a business under the MARSHALLS mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). The WHOIS information for the <marshallsstores.com> domain name lists the registrant as “Savvy Investment, LLC Privacy ID# 945766.” See Amend. Compl. Ex. B. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant submits Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <marshallsstores.com> domain name. Complainant argues Respondent instead uses the disputed domain name to display pay-per-click hyperlinks, some of which divert Internet users to Complainant’s competitors. Use of a disputed domain name to display hyperlinks unrelated to or in competition with complainant’s business is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides screenshots of the resolving webpages of the disputed domain name which show the competing hyperlinks. See Compl. Ex. F. The Panel has examined them and notes that Respondent has been so brazen that it has included Complainant’s well known name and brand on some of the resolving websites. Therefore, the Panel agrees that Respondent does not make a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name under a Policy ¶¶ 4(c)(i) or (iii) analysis.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that a number of UDRP cases have been successfully brought against Respondent and this indicates a pattern of bad faith registration. Evidence of previous UDRP against a respondent that result in a transfer of the domain names can establish bad faith per Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Complainant provides records of previously successful UDRP actions against Respondent. See Amend. Compl. p. 11. Therefore, the Panel finds that the disputed domain name was registered and used in bad faith under Policy ¶ 4(b)(ii).
Secondly, Complainant argues Respondent registered and uses the <marshallsstores.com> domain name in bad faith because Respondent displays unrelated and other hyperlinks on the website that compete with Complainant for commercial gain. Using a disputed domain name to display both competing hyperlinks and hyperlinks unrelated to the complainant’s business is evidence of bad faith registration and use under Policy 4(b)(iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). The Panel recalls Complainant provides screenshots of the resolving webpage of the disputed domain name which displays hyperlinks, some of which lead to competitors of Complainant. See Compl. Ex. F. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant contends Respondent had actual notice of Complainant’s rights in the MARSHALLS mark at the time of registration of the <marshallsstores.com> domain name due to the fame and notoriety of the mark and because Respondent displays links related to Complainant’s industry. Actual knowledge of complainant’s rights in a mark prior to registering a domain name may be evidence of bad faith under Policy ¶ 4(a)(iii). Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name"); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues because the links Respondent displays on the webpage mention Complainant’s industry, this is evidence that Respondent had actual knowledge of Complainant’s rights in the MARSHALLS mark. Furthermore, Complainant submits multiple articles evidencing the fame and notoriety of the MARSHALLS mark. See Compl. Ex. D. As the Panel agrees, it finds Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the MARSHALLS trademark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marshallsstores.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 26, 2019
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