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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Marshall Amplification PLC v. Domain Administrator, See PrivacyGuardian.org / jingfu li

Case No. D2021-2795

1. The Parties

The Complainant is Marshall Amplification PLC, United Kingdom, represented by Stobbs IP Limited, United Kingdom.

The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / jingfu li, China.

2. The Domain Name and Registrar

The disputed domain name <marshallchina.net> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2021. On August 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 26, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 29, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 2, 2021.

The Center verified that the Complaint together with the amended 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 September 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2021. An initial Response was filed with the Center on October 14, 2021, and then a formal Response was filed on October 17, 2021.

The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on November 14, 2021. 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

Over the past few decades, the Complainant has been selling audio equipment under the trademark Marshall globally.

The Complainant is the owner of numerous trademarks including the term “Marshall”, among them

- wordmark MARSHALL European Union Trademark Registration No. 010357201, registered on April 10, 2012, in respect of goods in classes 9 and 11; and
- figurative mark MARSHALL European Union Trademark Registration No. 000058065, registered on February 17, 1998, in respect of goods in class 9; and
- wordmark MARSHALL Chinese Registration No. 1247696, registered on August 11, 2017, in respect of goods in class 9.

The Complainant has also acquired domain names, which incorporate the MARSHALL mark and which are used as active websites. Examples include <marshall.com>, <marshallheadphones.com>, and <marshallamps.com>.

According to the Registrar’s WhoIs records, the disputed domain name was registered on July 26, 2021.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name wholly incorporates its MARSHALL trademark and that it is therefore confusingly similar to it. The addition of the geographical term “China” does nothing to distinguish the disputed domain name in the eyes of an unsuspecting Internet user and, in fact, reinforces a connection between the disputed domain name and the Complainant’s trademarks.

The Complainant alleges the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the Policy. The disputed domain name resolves to a website featuring content directly taken from the official website of the Complainant, including the Complaint’s figurative MARSHALL mark. Therefore, it is evident that the Respondent’s intention is to use the disputed domain name to deceive the Complainant’s customers, which cannot amount to a bona fide offering of goods and services.

The Complainant claims that the disputed domain name was registered and is being used in bad faith since it is clearly designed to trade on the reputation and goodwill of the Complainant’s marks for financial gain by diverting potential users to its websites and deceiving said users into believing the disputed domain name resolves to the official website of the Complainant.

The Complainant requests that the disputed domain name be transferred from the Respondent to the Complainant.

B. Respondent

The Respondent disputes that the disputed domain name resolves to a website featuring content directly taken from the official website of the Complainant. Also, the MARSHAL mark is not exclusively used by the Complainant. Lastly, the evidence submitted by the Complainant is insufficient and the Complainant’s submissions are merely based on rumor.

6. Discussion and Findings

Paragraph 15(a) of the Rules requires that the Panel’s decision be made “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”.

A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s MARSHALL mark, in which the Complainant has established rights through registration and use.

The Complainant’s MARSHALL mark is clearly recognizable in the disputed domain name. The inclusion of the term “China” in the disputed domain name does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy (see section 1.8 of the WIPO Overview 3.0). Top-level domains (“TLDs”) are generally disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD (see section 1.11 of the WIPO Overview 3.0).

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the Complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (see section 2.1 of the WIPO Overview 3.0).

The Complainant makes its prima facie case by demonstrating without contradiction that it has not authorized the Respondent to use its marks and that the Respondent has not been commonly known by the disputed domain name.

Furthermore, the Chinese language website to which the disputed domain name resolves displays the Complainant’s trademarks, offers for sale the Complainant’s goods, and falsely claims that the owner of the copyright in the website is “Marshall speaker”. The Respondent’s factual assertion to the contrary is easily disproven by a visit to the website linked to the disputed domain name. Therefore, it is clear to the Panel that the disputed domain name is used to impersonate the Complainant’s website by deceiving Internet users into believing the disputed domain name resolves to the official Chinese website of the Complainant. This conduct cannot be considered as a bona fide offering of goods or services, or as a legitimate noncommercial or fair use of the disputed domain name (see for example Ebel International Limited v. Alan Brashear, WIPO Case No. D2017-0001, <cyzoneperu.com> and <esikaperu.com>)

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Given the circumstances of the case, particularly the reputation and the distinctive nature of the mark and the current use of the disputed domain name, it is clear to the Panel that the Respondent registered the disputed domain name with prior knowledge of the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware that the disputed domain name it chose could attract Internet users in a manner that is likely to create confusion for such users.

The Panel therefore finds that the disputed domain name was registered in bad faith.

The websites to which the disputed domain name resolves closely copies the websites of the Complainant. This site displays the Complainant’s trademarks, including their figurative elements, features products of the Complainant, and contains a copyright notice naming “Marshall speaker” as the copyright holder. This clearly gives Internet users the impression that the website is an official website of the Complainant or a website that is authorized by the Complainant, which is not the case. The Panel therefore finds that the Respondent by its registration and use of the disputed domain name intentionally creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name with the purpose of attracting Internet users to the website for commercial gain as per paragraph 4(b)(iv) of the Policy.

Furthermore, the Complainant has provided evidence that the Respondent appears to be directly connected to the respondents in a previous decision under the Policy that found bad faith registration and use of domain names that were identical or confusingly similar to the Complainant’s trademarks (Marshall Amplification PLC v. Wen Zhou Rui Xiang Jian Zhi You Xian Gong Si, Wen Zhou Rui Xiang, WIPO Case No. D2018-0715). Also, the Complainant has provided evidence that the Respondent is connected to registrations for other domain names which contain the Complainant’s and other famous trademarks. Both circumstances provide further evidence of the pattern of bad faith behavior in which the Respondent is engaging.

For these reasons, the Panel considers that the Respondent registered and is using the disputed domain name in bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 name, <marshallchina.net> be transferred to the Complainant.

Christian Gassauer-Fleissner
Sole Panelist
Date: November 28, 2021

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