Mar-Lou Shoes, Inc. v. bo pam
Claim Number: FA2304002039849
Complainant is Mar-Lou Shoes, Inc. (“Complainant”), represented by Michael A. Marrero of Ulmer & Berne, LLP, Ohio, USA. Respondent is bo pam (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mar-lou.shop>, registered with Dynadot, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on April 12, 2023; Forum received payment on April 12, 2023.
On April 13, 2023, Dynadot, LLC confirmed by e-mail to Forum that the <mar-lou.shop> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 April 19, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 2023 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@mar-lou.shop. Also on April 19, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On May 15, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 contends as follows:
Complainant, Mar-Lou Shoes, Inc., is a retailer of shoes.
Complainant has common law rights in the MAR-LOU SHOES mark through Complainant’s long and continued use of the mark in commerce.
Respondent’s <mar-lou.shop> domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the MAR-LOU SHOES mark in its substantive entirety and adds the “.shop” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <mar-lou.shop> domain name. Respondent is not commonly known by the at-issue domain name and Complainant has not authorized or licensed Respondent any rights in the MAR-LOU SHOES mark. Additionally, Respondent does not use the at-issue domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the domain name resolves to a page that displays Complainant’s products in an attempt to falsely suggest that Respondent is affiliated with Complainant. Respondent uses the domain name to engage in phishing.
Respondent registered and uses the <mar-lou.shop> domain name in bad faith. Respondent registered the at-issue domain name in order to pass off as Complainant and divert customers for commercial gain. Respondent registered the at-issue domain name in order to phish for personal financial information. Respondent failed to respond to “cease and desist” letters. Finally, Respondent registered the domain name with actual knowledge of Complainant’s rights in the MAR-LOU SHOES mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the MAR-LOU SHOES trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the MAR-LOU SHOES trademark.
Respondent uses the at-issue domain name to pass itself off as Complainant to facilitate a phishing scheme.
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”).
The at-issue domain name is confusingly similar to a mark in which Complainant has rights.
There is no requirement under the UDRP that a complainant must show registration of a trademark to demonstrate its rights therein. Rights may be shown by persuasive evidence of common law trademark rights in a mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (“Complainant does not claim to own a trademark registered with a governmental authority. However, Policy ¶ 4(a)(i) does not require such registration if a complainant can demonstrate having common law rights.”). In the instant case Complainant shows evidence that MAR-LOU SHOES has acquired secondary meaning through long term public and continuous use of the mark as a source identifier for its retail shoe business. Respondent, having failed to respond to the Complaint, offers no evidence challenging Complainant’s contentions regarding Complainant’s rights in the MAR-LOU SHOES. In light of the foregoing, the Panel concludes that Complainant has acquired sufficient common law rights in the MAR-LOU SHOES mark for the purposes of Policy ¶ 4(a)(i). See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Respondent’s <mar-lou.shop> domain name is confusingly similar to Complainant’s MAR-LOU SHOES mark. The domain name contains the distinctive first term of Complainant’s trademark followed by the suggestive “.shop” top-level domain name. The differences between the at-issue <mar-lou.shop> domain name and Complainant’s MAR-LOU SHOES mark are insufficient to distinguish the domain name from Complainant’s mark for the purposes of the Policy. Notably, the top-level here suggests Complainant’s retail business thus adding to any confusion between Complainant’s mark and Respondent’s domain name. Therefore, the Panel finds pursuant to Policy ¶ 4(a)(i) that Respondent’s <mar-lou.shop> domain name is confusingly similar to MAR-LOU SHOES. See Huron Consulting Group Inc. v. David White, FA 1701395 (Forum Dec. 6, 2016) (finding that Respondent’s <huroninc.net> domain name is confusingly similar to the HURON CONSULTING GROUP and HURON HEALTHCARE marks under Policy ¶ 4(a)(i) because in creating the domain name, the respondent contains the dominant portion of the marks and appends the term “inc” and a gTLD); See also, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the <mar-lou.shop> domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and “Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.”).
The WHOIS information for the at-issue domain name ultimately identifies the domain name’s registrant as “bo pam” and the record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <mar-lou.shop> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s uses the at-issue domain name to pass itself off as Complainant and address a website dressed to appear as if sponsored by Complainant by its display of Complainant’s logo and photos. There, Respondent pretends to take orders for products when in fact it is only intent on extracting financial information from those believing they are dealing with Complainant. Respondent’s use of the confusingly similar domain name to pass itself off as Complainant constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Additionally, Respondent’s use of the at-issue domain name to facilitate a phishing scheme is neither indicative of a bona fide offering of goods or services per Policy ¶ 4(c)(i) nor of a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Forum Dec. 13, 2007) (“There is no dispute that respondent previously used the disputed domain name to obtain personal and financial information from Internet customers of complainant. This fraudulent use [is] known as ‘phishing’”); see also, Allianz of Am. Corp. v. Bond, FA 690796 (Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
Given the foregoing, Complainant demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
As discussed below without being exhaustive, bad faith circumstances are present which permit the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights and legitimate interests, Respondent uses <mar-lou.shop> to pass itself off as Complainant in furtherance of a phishing campaign intent on tricking <mar-lou.shop> website visitors into disclosing their personal financial information to Respondent. Respondent’s use of the at-issue domain name in this manner shows Respondent’s aspiration to pass itself off as Complainant and capitalize on the confusion Respondent created between the at-issue domain name and Complainant’s trademark. Respondent’s use of the domain name thus shows Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv) and otherwise. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also, Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the MAR-LOU SHOES mark when it registered <mar-lou.shop> as a domain name. Respondent’s actual knowledge is evident from the notoriety and long term use of the MAR-LOU SHOES trademark and from Respondent’s use of the <mar-lou.shop> domain name to pass itself off as Complainant as discussed elsewhere herein. Respondent’s registration and use of a confusingly similar domain name with knowledge of Complainant’s rights in such domain name further shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mar-lou.shop> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco. Panelist
Dated: May 16, 2023
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