DECISION
Marine Layer, PBC v. Judy Lay / Judy T Lay
Claim Number: FA2309002060347
PARTIES
Complainant is Marine Layer, PBC ("Complainant"), represented by Jonathan A. Muenkel of NorthStar Law Group, California, USA. Respondent is Judy Lay / Judy T Lay ("Respondent"), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shopmarinelayer.shop>, registered with NameCheap, Inc..
PANEL
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 Honorable Neil Anthony Brown KC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on September 5, 2023; Forum received payment on September 5, 2023.
On September 5, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <shopmarinelayer.shop> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 September 6, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 26, 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@shopmarinelayer.shop. Also on September 6, 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 September 27, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. COMPLAINANT
Complainant made the following contentions.
1. Complainant is a United States company that designs, manufactures, markets and sells online ecologically sourced and environmentally friendly men's and women's apparel.
2. To that end, the Complainant owns several trademarks for MARINE LAYER that it uses in its business, namely:
(a) the trademark registered for MARINE LAYER with the United States Patent and Trademark Office ("USPTO"), registration No. 4,200,867, registered on September 4, 2012; and
(b) the trademark registered for MARINE LAYER with the USPTO, registration No. 5,570,741, registered on September 25, 2018.
Complainant is also the registered owner of trademarks for MARINE LAYER IN several foreign jurisdictions (collectively "the MARINE LAYER mark").
The Complainant's MARINE LAYER mark has been proved by Complainant's Exhibits A and B.
3. In the pursuit of its business, the Complainant has established an official presence on the internet at www.marinelayer.com which it uses to promote its products, identify the location of its stores and provide a facility by means of which its customers may buy its products online.
4. Respondent registered the disputed domain name <shopmarinelayer.shop> on June 23, 2023, ("the disputed domain name").
5. The disputed domain name is confusingly similar to the MARINE LAYER mark because it includes the mark in the domain name in its entirety, urges internet users to shop at the business known as Marine Layer and purports to use its online presence to sell products of the same genre as the Complainant's legitimate MARINE LAYER products and adds only the gTLD "shop".
6.The Respondent has no rights or legitimate interests in the disputed domain name. That is because:
(a) Respondent is infringing the Complainant's MARINE LAYER mark and using the domain name to sell products of the same genre as the Complainant's legitimate MARINE LAYER products and doing so by using exact copies of photos, products and product descriptions taken from the Complainant's own website and providing facilities to buy products online;
(b) Respondent is using the MARINE LAYER mark without authorization and using material copied from the Complainant's official website so as to pretend that the products being offered are Complainant's own products, which they are not;
(c) Respondent is not commonly known by the disputed domain name;
(d) The Respondent improperly uses the disputed domain name to claim that it has a customer service team when there is no evidence that it does;
(e) The Respondent has adopted purported Facebook, Instagram and Twitter icons that appear to be dead and adopting an inaccurate description of the registered owner of the disputed domain name;
(f) There is no other ground on which it could be said accurately that Respondent has any right or legitimate interest in the disputed domain name.
7. The disputed domain name was registered and is being used in bad faith, because:
(a) The Respondent has no rights in the MARINE LAYER mark and no right to use it;
(b) The Respondent has taken and used without permission the Complainant's copyrighted photographs to sell its own products and has given them the same product descriptions and adopted the same terminology for them as the Complainant's official and genuine merchandise;
(c) The Respondent has no right to use the disputed domain name to sell
products of the same genre as Complainant's own official products or to advertise them under the imprimatur of the Complainant as it has done;
(d) The facts show that in registering the disputed domain name and in using it as aforesaid, the Respondent has at all times acted in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
1. Complainant is a United States company that designs, manufactures, markets and sells online ecologically sourced and environmentally friendly men's and women's apparel.
2. Complainant has established its rights in the MARINE LAYER mark through its registration of the mark as follows:
(a) the trademark registered for MARINE LAYER with the United States Patent and Trademark Office ("USPTO"), registration No. 4,200,867, registered on September 4, 2012; and
(b) the trademark registered for MARINE LAYER with the USPTO, registration No. 5,570,741, registered on September 25, 2018.
3. Respondent registered the disputed domain name <shopmarinelayer.shop> on June 23, 2023, the ("the disputed domain name").
4. Respondent has caused the disputed domain name to resolve to a website that displays the MARINE LAYER mark and the Complainant's copyrighted images and offer products for sale that carry the MARINE LAYER name, brand and mark and pretend to be genuine MARINE LAYER products.
5. The evidence establishes that the disputed domain name is confusingly similar to the MARINE LAYER mark.
6. The evidence establishes that the Respondent has no rights or legitimate interests in the disputed domain name and that it has been registered and used in bad faith.
DISCUSSION
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 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 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").
Identical and/or Confusingly Similar
The first question that arises is whether Complainant has rights in a
trademark or service mark on which it may rely. Complainant has established its rights in the MARINE LAYER mark through its registration of the mark, including, but not confined to, the following registrations that it uses in its business, namely:
(a) the trademark registered for MARINE LAYER with the United States Patent and Trademark Office ("USPTO"), registration No. 4,200,867, registered on September 4, 2012; and
(b) the trademark registered for MARINE LAYER with the USPTO, registration No. 5,570,741, registered on September 25, 2018.
Complainant is also the registered owner of trademarks for MARINE LAYER in several foreign jurisdictions (collectively "the MARINE LAYER mark").
The MARINE LAYER mark has been established by Complainant's Exhibits A and B which the Panel has examined and finds to be in order. Thus, the Complainant has proved by evidence that the MARINE LAYER mark has been registered nationally in the United States and internationally. Registration of a trademark with a recognized authority such as the USPTO is sufficient to demonstrate rights in a mark under 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)."). Since Complainant has registered and has established its rights in the MARINE LAYER mark through its registration of the mark, the Panel finds that the Complainant has rights in the 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 MARINE LAYER mark. Complainant argues that the disputed domain name is confusingly similar to the MARINE LAYER mark because it includes the mark in the domain name in its entirety, it urges internet users to shop at the business known as Marine Layer and purports to use its online presence to sell products of the same genre as the Complainant's legitimate MARINE LAYER products, adding only the word "shop" and the gTLD "shop". The Panel agrees with that submission in every respect as the domain name includes the whole of the MARINE LAYER mark, it is clearly included to attract the kudos associated with that name, it is clearly included in the domain name to give the impression that it actually is a domain name of or associated with the MARINE LAYER mark and because it exhorts internet users to "shop" for MARINE LAYER products. It is therefore clear that the domain name is similar to the mark and confusingly so, meaning that it generates the confusing possibility that it is an official domain name referring to official MARINE LAYER products.
Under Policy ¶ 4(a)(i), the addition of a generic or descriptive word to a trademark, such as "shop", does not negate the confusing similarity which is otherwise present between the domain name thus created and a trademark, as it is in the present case. Also, adding a generic Top Level Domain cannot negate the confusing similarity that is otherwise present between a domain name and the trademark, as it is in the present case. Taken as a whole, the domain name means and would be interpreted by internet users to mean that it is invoking the Complainant's MARINE LAYER mark and is using it legitimately to enhance the notion of the mark being used in connection with a shop and with the items of apparel understood by the expression MARINE LAYER. See, Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD '.com' and the letter 'l' to create a common misspelling of the word 'bank.'). In the present case, the domain name is similar to the trademark and confusingly so.
The Panel therefore finds that Respondent's domain name is confusingly similar to Complainant's MARINE LAYER mark under Policy ¶ 4(a)(i).
The Complainant has thus made out the first of the three elements that it must establish.
Rights or Legitimate Interests
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 such 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)).
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 MARINE LAYER mark and to use it in its domain name, adding only the word "shop" and the gTLD ".store", which do not negate the confusing similarity between the domain name and the mark, and which generate the clear impression that it is referring to and legitimately invoking the MARINE LAYER mark and is authorized to do so, neither of which is true.
(b) Respondent registered the disputed domain name <shopmarinelayer.shop> on June 23, 2023.
(c) The evidence shows that Respondent has caused the disputed domain name to resolve to a website where the Respondent is using the MARINE LAYER mark to sell clothing and items of apparel of the same genre as those of the Complainant, using Complainant's copyrighted artwork and other promotional content, including repeated used of the expression MARINE LAYER; purporting falsely to assert that the goods are authentic and affiliated with the Complainant when they are not; and engaging by that means in conduct that is tantamount to misleading customers into believing that the goods are authentic when they are not. By that means, Respondent is typosquatting on Complainant's MARINE LAYER trademark and official domain name, impersonating Complainant and displaying, by means of extensive text and photographs, material of the same type as is displayed on the Complainant's own website. The Complainant has supported its case by extensive references to its own genuine products and comparing them with the contents of the Respondent's website, showing an intention to copy the Complainant and its products and the way in which those products are presented to give the false impression that they are genuine MARINE LAYER products which they clearly are not.
(d) Thus, there is no evidence that the Respondent is making a bona fide offering of goods or services within the meaning of Policy 4(c)(i) and the evidence shows clearly that it is not.
(e)Respondent is clearly passing off its own counterfeit products as genuine and official products of the Complainant.
(f) Complainant argues that Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its mark in the disputed domain name. There is no evidence that Respondent is so known and the only inference that can be drawn from the evidence is that it is not commonly known by the domain names, within the meaning of Policy 4(c)(ii) or otherwise.
(g) The evidence is that Complainant has not authorized Respondent to use a confusingly similar domain name, which Respondent has done and which therefore shows that Respondent is not affiliated with Complainant.
(h) There is no evidence that the Respondent is engaged in a legitimate non-commercial or fair use of the domain name within the meaning of Policy 4(c)(iii) and all the evidence shows that it is not. The evidence shows that the Respondent's conduct is illegitimate in every sense, purely commercial, not a fair use of the domain name and which in any event do not entitle the Respondent to use the domain name at all.
(j) the Respondent had an opportunity to show circumstances to the contrary of the above conclusions but has not done so.
(k) Respondent has engaged in the foregoing conduct without the consent or approval of Complainant.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
Registration and Use in Bad Faith
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, the circumstances in the present case all show that the Respondent has been engaged in the improper registration and use of the disputed domain name in bad faith.
Secondly, the evidence shows that the disputed domain name was registered well after the registration of the aforesaid MARINE LAYER trademarks of the Complainant. Indeed, the evidence shows that the Respondent must have had knowledge of the MARINE LAYER mark at the time it registered and whilst it has been using the mark.
Thirdly, the evidence shows that the Respondent has caused the disputed domain name to resolve to a website where the Respondent is using the MARINE LAYER mark to advertise and sell very similar items of apparel to those of the Complainant that contain Complainant's copyrighted artwork; is purporting falsely to assert that the goods are authentic MARINE LAYER products of the Complainant and thereby affiliated with the Complainant when they are not; and engaging by that means in conduct that is tantamount to misleading customers into believing that the goods are authentic when they are not.
Fourthly, those facts show that the Respondent registered the disputed domain name with the intention of attracting internet users to the website to which the disputed domain name resolves by creating a likelihood of confusion with the MARINE LAYER mark as to the source, sponsorship, affiliation and endorsement of the products offered for sale, within the meaning of ¶Policy 4(b)(iv).
Fifthly, by that means, and as already found, Respondent is typosquatting on Complainant's MARINE LAYER trademark and official domain name, impersonating Complainant and displaying, by means of extensive text and photographs, products of the same genre as are displayed on the Complainant's own website. Thus, there is no evidence that the Respondent is offering to sell the products displayed on its website in good faith and the evidence shows clearly that they are being offered for sale in bad faith.
Sixthly, the evidence shows that the Respondent is using the Complainant's MARINE LAYER mark, brand and name to trade on the Complainant's business and reputation and to disrupt it.
Seventhly, the whole modus operandi of the Respondent is commercial and designed to obtain revenue by deception, which clearly demonstrates bad faith. The Panel particularly notes that the Respondent's website, to which the disputed domain name resolves, adds after illustrations of the products purportedly for sale, the expression "Marine Layer" which is an assertion that the products are genuine MARINE LAYER goods which they are not. This is deceptive and in bad faith. These and other statements are clear and, on the evidence, false assertions that the products offered for sale are genuine articles produced under the MARINE LAYER mark.
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 MARINE LAYER mark and in view of the conduct that Respondent has engaged in when using the 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.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shopmarinelayer.shop> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: September 28, 2023
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