Marshalls of Nevada, Inc. v. Kim Jongsub
Claim Number: FA0506000495434
PARTIES
Complainant
is Marshalls of Nevada, Inc. (¡°Complainant¡±),
represented by Larry C. Jones of Alston & Bird, LLP,
Bank of America Plaza, 101 S. Tryon Street, Suite 4000, Charlotte, NC
28280-4000, USA. Respondent is Kim Jongsub (¡°Respondent¡±), 960-1,
Jisan 1-dong, Suseong-gu, Daegu, 706841, KR.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <marshals.com>,
registered with Cydentity, Inc. d/b/a Cypack.com.
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.
Kyung Jik Kwak
is
the Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
13, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 15, 2005.
On
June 14, 2005, Cydentity, Inc. Dba Cypack.com confirmed by e-mail to the
National Arbitration Forum that the domain name <marshals.com> is registered with Cydentity, Inc. d/b/a
Cypack.com and that Respondent is the current registrant of the name. Cydentity, Inc. d/b/a Cypack.com has
verified that Respondent is bound by the Cydentity, Inc. d/b/a Cypack.com
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN¡¯s Uniform Domain Name Dispute
Resolution Policy (the ¡°Policy¡±).
On
June 27, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the ¡°Commencement Notification¡±), setting a deadline of July 18,
2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent¡¯s registration as technical, administrative and billing
contacts, and to postmaster@marshals.com by e-mail.
A
timely Response was received and determined to be complete on July 18, 2005.
As noted below, additional submissions by both parties were made in a timely
manner according to the Forum¡¯s Supplement Rule 7.
On July 21, 2005, Complainant submitted a Complainant¡¯s
Reply in Further Support of its Complaint (¡°Complainant¡¯s Reply¡±) to the National
Arbitration Forum. On the same date, Complainant¡¯s Reply along with its Korean
translation was sent to Respondent via email.
On July 25, 2005, Respondent submitted Additional Response against Complainant¡¯s
Reply in Further Support of its Complaint in Korean (¡°Respondent¡¯s Additional
Response¡±), which was sent to Complainant via email.
On July 27, 2005, pursuant to
Complainant¡¯s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kyung Jik Kwak as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES¡¯ CONTENTIONS
A.
Complainant
1. Complainant
states: (1) that it is a corporation duly organized and existing under the laws
of the State of Nevada, having a principal place of business in North Las
Vegas, Nevada, (2) that it has offered retail store services in the United
States under the MARSHALLS mark since at least as early as 1966, (3) that there
are more than 700 MARSHALLS stores operating in 42 states and Puerto Rico, (4)
that it owns several registrations for the MARSHALLS mark, either as a singular
word mark or combined with other terms, including U.S. Trademark Registration
No. 1,978,509 for the MARSHALLS mark issued June 4, 1996, that covers ¡°retail
department store services,¡± (5) that it owns valid and enforceable common law
rights in its MARSHALLS mark in the United States by virtue of its continuous
use of such mark for several years as well as valid statutory rights in its
MARSHALLS mark in the United States by virtue of its longstanding use and
registration of that mark with the United States of Patent and Trademark
Office, and (6) that its affiliate, The TJX Companies, Inc., owns the <marshallsonline.com>
domain name, which is used to direct users to Complainant¡¯s website.
2. Complainant
adds: that (1) Respondent is the owner of the <marshals.com> domain name, (2) that
Respondent is using <marshals.com> to provide links to numerous third party websites that
purport to offer a variety of goods and services, and that such links are
identified by such items as ¡°Online shopping,¡± ¡°Womens [sic] Clothing,¡± ¡°Shoes,¡±
etc.
3. Complainant
argues that Respondent¡¯s <marshals.com> domain name is
strikingly similar to Complainant¡¯s MARSHALLS mark. Complainant points out that
<marshals.com> is identical to
MARSHALLS except that the former contains a typographic error by omitting the
second ¡°l¡± in the latter. Complainant argues that the former differs from the
latter only by one letter and is likely to result from a typographical error or
misspelling by an Internet user who intuitively enters <marshals.com> in seeking
Complainant¡¯s website
4. Complainant
argues that Respondent has no rights or legitimate interests in <marshals.com> as a domain
name. Complainant notes that Respondent does not allege that he is commonly
known as MARSHALS or that he has operated a business under this name.
5. Complainant
points out that Respondent did not register <marshals.com> until January
11, 2000, long after Complainant¡¯s MARSHALLS mark had acquired its fame.
Complainant argues that without any preexisting rights in <marshals.com> as a trademark
or a service mark, it may be assumed that Respondent adopted, registered, and
is using the <marshals.com> domain name
because of the fame and goodwill associated with Complainant¡¯s MARSHALLS mark.
6. Complainant
also notes that Respondent is permitting another entity to use the <marshals.com> domain name to
direct Internet traffic to a website that promotes the ¡°Online shopping¡±
services of others and the ¡°Womens [sic] clothing,¡± ¡°Shoes,¡± and ¡°Jewelry¡±
merchandise of other businesses. Complainant argues that such promotional
activities are clear evidence of the sort of bad faith under Policy ¢Ò¢Ò 4(b)(ii)
and (iv).
B. Respondent
1. Respondent
states: (1) that he is a professional web designer conducting active internet
business, (2) that he needed to secure domain names to be used in his web
design business, (3) and that he is now operating a number of websites for
business. Respondent states that he is operating websites at <worldmovie.com>,
<mana1004.net>, <budongsan.net>, <buydomain.com> and <buddhakorea.net>
for movies, cartoons, real property, domain registration and Korean Buddhism
images, respectively.
2. Respondent
argues that there is no possibility that Respondent was aware of the
registrations of Complainant¡¯s MARSHALLS mark and that he did not know and need
not know where Complainant is located or even whether it has ever been
established. Respondent further argues that there are few among people in Korea
who know about the existence of Complainant.
3. Respondent
argues that his <marshals.com> domain name is
neither identical nor confusingly similar to Complainant¡¯s MARSHALLS mark.
Respondent argues there is a distinct difference between <marshals.com> and MARSHALLS,
because ¡°marshal¡± is a common noun that means a police officer or a highest ranking military
officer while ¡°MARSHALL¡± is a word not found in a dictionary.
4. Respondent
adds that since ¡°marshal¡± is a common noun, it (or its plural form marshals) is
not registrable as a trademark or service mark in Korea. Respondent emphasizes
that Complainant does not have trademark or service mark rights in either ¡°marshal¡± or ¡°marshals.¡± Respondent alleges that he was not aware of the existence of Complainant
let alone its MARSHALLS trademark or service mark.
5. Respondent
argues that he has rights and legitimate interests in <marshals.com>. Respondent
argues that in case of a domain name that consists of a common noun, the first
registrant obtains rights and legitimate interests by only expressing his/her
intent to use such domain name.
6. Respondent
argues that he intends to conduct the business of the provision of online
services for checking and curing virus and network security in the future and
that he will use <marshals.com> website for such
business. Respondent admits that he is not currently running such business and
that he permits a ¡°domain sponsor¡± (www.domainsponsor.com) to use <marshals.com> to direct Internet traffic to a website
that promotes, among other things, ¡°Online shopping,¡± ¡°Womens [sic] clothing,¡±
and ¡°Shoes.¡± Respondent argues that such permission is temporary until he will have
secured enough capital to launch the business of virus checking and network
security.
7. Respondent
argues that <marshals.com> has neither been
registered nor is being used in bad faith. Respondent argues that he has
registered and is holding <marshals.com> not to sell but
to use for his future business himself. Respondent argues that he has never
proposed to sell <marshals.com> to Complainant
and that he does not intend to sell it to a third party. Respondent explains
that the reason why he permits ¡°domain sponsor¡± to provide links is because he
is postponing the construction of his website (for his intended business) due
to his financial situation. Respondent adds that if he finds financial
solutions, he will immediately construct and operate the website.
C. Additional Contentions
The contentions by the parties restated respectively in the above section A and
B reflect not just Complaint and Reply but also additional submissions by the
parties, Complainant¡¯s Reply and Respondent¡¯s Additional Response, except the
following:
Respondent extensively argues that there is a distinct difference between <marshallsonline.com>
and <marshals.com>. Respondent also argues that <marshallsonline.com>
has not become distinctively known yet throughout the world.
To this, Complainant responds that the proper comparison is between the subject
name, here <marshals.com> and the mark to
which Complainant has rights, here MARSHALLS under Policy ¢Ò 4(a)(i), and thus
any similitude between <marshals.com> and <marshallsonline.com>
is irrelevant for purpose of the UDRP, as is the relative fame of the <marshallsonline.com>
domain name.
FINDINGS
The Panelist
finds the following facts based on statements and documents submitted by the
parties.
Complainant is a corporation duly organized and existing under the laws of the
State of Nevada, having a principal place of business in North Las Vegas,
Nevada. It has offered retail store services in the United States under the
MARSHALLS mark since at least as early as 1966 and there are more than 700
MARSHALLS stores operating in 42 states and Puerto Rico. Complainant owns
several registrations for the MARSHALLS mark, either as a singular word mark or
combined with other terms, including U.S. Trademark Registration No. 1,978,509
for the MARSHALLS mark issued June 4, 1996, that covers ¡°retail department
store services.¡±
The services of Complainant have been and are being advertised and promoted
extensively under the MARSHALLS mark, among other things, on the Internet.
Complainant¡¯s affiliate, The TJX Companies, Inc., owns the <marhsallsonline.com>
domain name, which is used to direct users to Complainant¡¯s website.
Respondent is a Korean citizen residing in Daegu, Korea. He is currently
operating a number of websites for business, including <worldmovie.com>, <mana1004.net>
and <budongsan.net> for movies, cartoons and real property, respectively,
in the Korean language, and <buydomain.com> and <buddhakorea.net>
for domain registration and Korean Buddhism, respectively, in the English
language.
On January 11, 2000, Respondent registered the <marshals.com> domain name. While
Respondent states that he intends to conduct the business of the provision of
online services for checking and curing virus and network security in the
future and that he will use <marshals.com> website for such
business; as a matter of fact he is not currently conducting such business and
is not using the domain name for such business.
Rather Respondent permits a ¡°domain sponsor¡± (www.domainsponsor.com) to use <marshals.com> to direct
Internet traffic to a website that promotes, among other things, ¡°Online
shopping,¡± ¡°Womens [sic] clothing,¡± and ¡°Shoes.¡±
Further, the said webpage at <marshals.com>, as of April 5, 2005,
attached as Complainant¡¯s evidence Exhibit 2 of Exhibit B, shows the link ¡°Make
this your homepage.¡±
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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.
Complainant
has established that it has rights in mark MARSHALLS by its registration of the
mark with the United States Patent and Trademark Office (Reg. No. 1,978,509).
The fact that ¡°marshals¡± is a common noun and is not a registered mark either
in Korea or in the United States does not affect Complainant¡¯s legitimate
rights in the mark MARSHALLS. See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (¡°Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.¡±).
Respondent¡¯s <marshals.com> domain name differs from Complainant¡¯s
mark MARSHALLS by the omission of only one letter, ¡°l.¡± With the exact same
pronunciation and sequence of letters of the two, such difference is
insufficient to distinguish Respondent¡¯s domain name from Complainant¡¯s mark. See Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25,
2002) (finding that the domain name <compq.com> is confusingly similar to
the complainant¡¯s COMPAQ mark because the omission of the letter ¡°a¡± in the
domain name does not significantly change the overall impression of the mark).
It is established that Respondent¡¯s domain name and Complainant¡¯s mark are
confusingly similar to each other.
A marshal is a
common noun, the meaning of which is found in a dictionary. Respondent is the
first registrant of the <marshals.com> domain name, which consists
of that common noun. Respondent argues that the expression of his intent to use
such domain name should establish that Respondent has rights or legitimate
interests in the domain name. The panelist disagrees with Respondent¡¯s argument
for the following reasons.
It is clear that Respondent is not commonly known by the <marshals.com> domain name. While Respondent states that he
intends to conduct the business of the provision of online services for
checking and curing virus and network security in the future and that he will
use <marshals.com> website for such business, as a
matter of fact he admits that he is not currently conducting such business and
is not using the domain name for such business. Moreover, Respondent fails
to provide any evidence of demonstrable preparations to use the domain
name in connection with such business or any other bona fide offering of
goods or services in the future.
Respondent alleges that he is postponing the construction of the website and
provision of virus checking and network security services using the domain name
due to his financial situation. That allegation, coupled with the fact that he
now diverts Internet users to third-party websites via Respondent¡¯s website
only leads to the conclusion that he is neither preparing to conduct such
business using the domain name in any meaningful way in any foreseeable future
nor making a legitimate noncommercial or fair use of the domain name. See Am. Online, Inc. v. Advanced
Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (¡°Respondent's
registration and use of the <gayaol.com> domain name with the intent to
divert Internet users to Respondent's website suggests that Respondent has no
rights to or legitimate interests in the disputed domain name pursuant to
Policy Paragraph 4(a)(ii).¡±).
It is established that Respondent has no rights or legitimate interests in
respect of the domain name.
Respondent
registered <marshals.com> on January 11,
2000, long after Complainant had acquired rights in MARSHALLS mark.
While not conducting any business himself using it, Respondent is permitting
another entity to use the <marshals.com> domain name to direct Internet traffic to a website that promotes
the ¡°Online shopping¡± services of others and the ¡°Womens [sic] clothing,¡± ¡°Shoes,¡±
and ¡°Jewelry¡± merchandise of other businesses. Such promotional activities
clearly overlap the business activities of Complainant in terms of goods and
services as well as methods.
Such overlap of promotional activities along with such similarity between
Respondent¡¯s domain name and Complainant¡¯s mark lead to the conclusion that
there are circumstances that Respondent has allowed a third party to
intentionally attempt to attract, for commercial gain, Internet users to the
said website or other on-line location, by creating a likelihood of confusion
with Complainant¡¯s mark as to the source, sponsorship, affiliation, or
endorsement of the said website. See H-D Michigan, Inc. v. Petersons Auto., FA 135608
(Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was
registered and used in bad faith pursuant to Policy ¢Ò 4(b)(iv) through the
respondent¡¯s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using the complainant¡¯s famous marks and likeness).
Moreover, while Respondent argues that he does not intend to sell it to the
third party, the link ¡°Make this your homepage¡± shown in the said
webpage <marshals.com> as of April 5, 2005, attached as
Complainant¡¯s evidence Exhibit 2 of Exhibit B, clearly indicates that
Respondent has a willingness to sell the domain name to any high bidder.
Thus, Complainant has successfully established that Respondent¡¯s domain name
has been registered and is being used in bad faith.
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 <marshals.com>
domain name be TRANSFERRED from Respondent to Complainant.
Kyung Jik Kwak, Panelist
Dated: August 10, 2005
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