The Complainant is Marshall Amplification PLC, United Kingdom, represented by Stobbs IP Limited, United Kingdom.
The Respondent is Carl Linch, Harris Luke, United States of America. 2. The Domain Names and Registrars
The disputed domain name Wild West Domains, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2020. On April 15, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On April 16, 2020, each Registrar transmitted by email to the Center its verification response confirming that the corresponding 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 Complaint, and the proceedings commenced on April 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2020. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on May 15, 2020. 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. 4. Factual Background The Complainant is an English company founded in 1962 (and incorporated in 1964) that specializes in the amplifying industry, designing, amongst other products, music amplifiers, speaker cabinets, personal headphones and earphones. It is the owner of, amongst others, the following registrations (Annex 9 to the Complaint): - European Union Trademark Registration No. 010357201 for the word mark MARSHALL, registered on April 10, 2012; - European Union Trademark Registration No. 013972039 for the word mark MARSHALL HEADPHONES, registered on August 28, 2016; and - China Trademark Registration No. 216918 for the word mark MARSHALL, registered on December 15, 1984. The disputed domain names, The Complainant contends that the disputed domain names are under common control as they were registered within one month, with the same registrant address, sharing the same IP address and previously resolving to the same content (Annex 3 to the Complaint). The Complainant asserts to be a renowned company in the amplification industry, having well-known products used by established bands and musicians, such as Kimi Hendrix, Joe Perry and Kurt Cobain. The Complainant also states to be heavily active on social media, counting with over one million followers at Instagram and more than half a million followers at its Facebook page, what has already been recognized in past UDRP panel where the “extensive use of the mark around the world” was found (Marshall Amplification PLC v. Wen Zhou Rui Xiang Jian Zhi You Xian Gong Si, Wen Zhou Rui Xiang,WIPO Case No. D2018-0715). According to the Complainant the disputed domain names are identical to its MARSHALL HEADPHONES trademark, not taking into account the Top-Level Domain (“TLD”) suffixes “.com” and “.info”, as indicated by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), Paragraph 1.11. As to the absence of rights or legitimate interests, the Complainant submits that: i. the Respondent has used the disputed domain names in connection with a website (Annexes 3 and 10) which has the same look and feel of an official website, displaying official copyright images of the Complainant’s products, in an intentional attempt to deceive the Complainant’s customers; ii. the Respondent is offering suspected counterfeit goods on the second disputed domain name as established in customer reviews on the Respondent’s accompanying Facebook page (Annex 11 to the Complaint) and as a result of physical enquiries made by the Complainant (Annex 12), thus clearly seeking to financially gain from the deception caused by unsuspecting Internet users; iii. the Respondent is not commonly known by the disputed domain names, not holding established rights or legitimate interests in them; and iv. the Respondent, to the best of Complainant’s knowledge, has never legitimately been known as MARSHALL or MARSHALL HEADPHONES at any point in time. As to bad faith registration of the disputed domain names the Complainant submits that the Respondent had actual knowledge of the Complainant’s brand, what is evident from the content on the website that resolved from the disputed domain names which were intentionally registered to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website at the disputed domain names. Furthermore, the Complainant submits that it attempted to contact the Respondent prior to starting this procedure, having the letters sent returned due to insufficient address information (Annex 14) and the emails sent (Annex 13) were not replied, what further support a finding of the Respondent’s bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Consolidation of multiple respondents in a single administrative proceeding The Complainant requests under paragraph 3(c) and 10(e) of the Rules that this Panel accept multiple respondents in a single proceeding in view of the facts enumerated at paragraph 5.A. above. Section 4.11 of the WIPO Overview 3.0 establishes that “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.” All of the aforementioned criteria are present in this case and therefore this Panel accepts such request considering that it would be more procedurally efficient to have the two disputed domain names dealt with at the same procedure given that they relate to the same trademark and reverted to the same website. This Panel is satisfied, in view of the evidence submitted and on balance that the disputed domain names are indeed subject to a common control. B. Identical or Confusingly Similar The Complainant has established rights in the MARSHALL and MARSHALL HEADPHONES trademarks. The Panel finds that the disputed domain names The first element of the Policy has therefore been established. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are: (i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it has not acquired trademark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. According to the evidence submitted, the Respondent has used both of the disputed domain names and is still using one of them to intentionally mislead and confuse the public into believing that there might be some connection or affiliation with the Complainant given the same look and feel of the Complainant’s official websites and reproduction of official copyright images of the Complainant’s products. Making the Respondent’s lack of a legitimate interest even more resonant is the evidence submitted further which indicates that the Respondent is offering suspected counterfeit goods on the second disputed domain name, thus clearly seeking to financially gain from the deception caused by unsuspecting Internet users. The Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names. D. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. In this case, both the registration and use of the disputed domain names in bad faith can be found in view of the use of the disputed domain names seeking to create a direct affiliation with the Complainant and its business, as seen above. Other factors that corroborate the Panel’s finding of bad faith of the Respondent are: a. the reproduction of the Complainant’s products on the website that resolved from the disputed domain names; b. the indication of what appears to be false or incorrect WhoIs information, not being the Center able to contact the Respondent at the address indicated; c. the Respondent’s lack of reply to the warning letter sent and d. the absence of a formal Response by the Respondent. For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain names pursuant to paragraph 4(b)(iv) 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 names, Wilson Pinheiro Jabur
Sole Panelist
Date: May 22, 2020
Full & Egal Universal Law Academy