Case number | CAC-UDRP-105793 |
---|---|
Time of filing | 2023-09-29 09:46:32 |
Domain names | marshallstore.click, official-marshall.com, marshall-th.online, marshallshop.asia, marshall-global.online, marshall-official.site, marshall-ash.online, marshall-global.asia, marshallheadphone.online, marshall-legit.com, marshallheadphonesmalaysia.click, marstore.site, marshallphilippines.online, marstore.website, marshall-ash.click, marshall-thailand.asia, marshall-shobpro.online, marshallminor3.online, marshall-auth.shop, marshall-store.shop, official-marshall.asia, official-marshall.online, marshall-official.asia, marshall-th.asia, marshall-official.online, marshall-outlet.online, marshall-store.asia, marshallstore-th.tech, marshallstore.tech, marshallstore.asia, marshallstore-th.online, marshallstore.online, marshall-headphone.online, marshall-online.click, marshall-legit.online, marshallmode2.click , marshall-mode-2.site, marshall-mode-2.online, marshall-mode-2.click, marshall-willen.click, marshall-auth.click, marshall-store.click, marshall-sound.click, marshall-original.click, marshallofficial.asia, marshallstoreinviet.online, marshall-official.store, official-marshall1.click, official-marshall2.click, marshall-headphone.click, marshall-inc.click, marshall-retails.click, marshall-thailand.click, marshall-uk.click, official-marshall.click, official-marshall1.asia, ash-marshall.asia, marshall-ash.asia, marshall-shop.click, marshall-sale.asia, marshall-offiicial.asia, shop-marshall.asia, marshall-storee.asia, marshall-store.online, marshallthailand.website, marshallviet.com, marshallvn.online, marshallvietnam.shop, marshallvn.shop, officialmarshall.com, marshallphilippines.com, marshallthailand.com, marshallphilippines.shop, marshallph.com, marshallph.online, marshallph.store, marshallvietnam.top, marshallonlineshopping.com, marshallofficial.com, marshallshops.xyz, marshallshops.site, marshall-th.shop, marshall- lifestyle.com, marshallstorevietnam.click, marshallstoreviet.com, marshallvn.store |
Case administrator
Name | Olga Dvořáková (Case admin) |
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Complainant
Organization | Marshall Amplification plc |
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Complainant representative
Organization | Stobbs IP (Stobbs IP) |
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Respondents
Organization | Pham Manh Hung |
---|---|
Organization | official-marshall.com |
Organization | huy cong |
Organization | Nong Duc Manh |
Organization | TRAN THI BICH NGOC |
Organization | Nguyen Dinh Khai |
Organization | Vu Dinh Manh |
Organization | Tran Trung Dung |
Organization | Nong Thi Le |
Organization | Hoang Ngoc Hung |
Organization | Pham Nam Anh |
Organization | Pham Van Xuyen |
Organization | DONG NGOC LINH |
Organization | VU DINH TRUNG |
Organization | Do Trung Nguyen |
Organization | Xuan 27 To Vinh Dien, Phuong Khuong Trung, Quan Thanh |
Organization | Hoang Nghia Duc |
Organization | PHAM TUAN ANH |
Organization | Do Van Huynh |
Organization | Hoang Van Minh |
Organization | Mac Van Cuong |
Organization | Hoang Thi Tam |
Organization | Dang Quang Trong |
Organization | Nguyen The Huyen |
Organization | Nguyen Van Liem |
Organization | Nguyen Tien Anh |
Organization | Trinh Thanh Tai |
Organization | Trinh Ngoc Khoa |
Organization | VU QUANG TUNG |
Organization | Ho Huu Ngoc |
Organization | Nguyen Tien Anh |
Organization | hoang van ha |
Organization | Pham Long |
Organization | Be Van Vuong (Mr) |
Organization | WANG RUI |
Organization | Ta Hung |
Organization | Anh Do |
Organization | Vu Van Duong |
Organization | Hoàng Ánh Dương |
Organization | 宁顺政 |
The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.
The Complainant has submitted what appears to be an internal list of trademark registrations in numerous jurisdictions for the mark MARSHALL, including UK trademark registration number 00001227945, registered on 9 October 1984. The Complainant has not filed a copy of any official record such as a certificate of trademark registration or an extract from a trademark registry database.
In the interests of efficiency, the Panel made an independent search of the UKIPO database and the EUIPO database, which has confimed that the Complainant owns numerus UK trademark registrations for MARSHALL, including registration number 000238936, registered 6 January 2006, and numerous EU trademarks for MARSHALL, including registration number 000058065, registered 1 April 1996.
The Complainant is an English company incorporated in 1964. It is well-known for designing music amplifiers, speaker cabinets, personal headphones and earphones. The Complainant is the registered proprietor of the well-known MARSHALL trademark, which predates the registration of the disputed domain names. The Complainant sells its products in more than 100 countries and is heavily active on social media, such as Instagram, Facebook, YouTube and Twitter.
Details of the disputed domain names are set out below.
No. |
Domain name |
Registrar |
Registrant |
Date registered |
Country |
Registrant’s email address |
1. |
marshallstore.click |
GMO Internet, Inc |
Pham Manh Hung |
10.07.2023 |
VN |
pmh3599@gmail.com |
2. |
official-marshall.com |
GMO Internet, Inc |
official-marshall.com |
16.07.2023 |
VN |
tuananh.mf@gmail.com |
3. |
marshall-th.online |
GMO Internet, Inc |
huy cong |
18.07.2023 |
VN |
zimzunsoan@gmail.com |
4. |
marshall-global.online |
GMO Internet, Inc |
Tran Thi Bich Ngoc |
26.08.2023 |
VN |
ngoct5528@gmail.com |
5. |
marshall-official.site |
GMO Internet, Inc |
Nguyen Dinh Khai |
26.07.2023 |
VN |
tomhadned@gmail.com |
6. |
marshall-ash.online |
GMO Internet, Inc |
Vu Dinh Manh |
28.07.2023 |
VN |
vudinhmanh22@gmail.com |
7. |
marshall-global.asia |
GMO Internet, Inc |
Tran Trung Dung |
26.06.2023 |
VN |
octieu251295@gmail.com |
8. |
marshallheadphone.online |
GMO Internet, Inc |
Tran Trung Dung |
26.06.2023 |
VN |
octieu251295@gmail.com |
9. |
marshall-legit.com |
GMO Internet, Inc |
Tran Trung Dung |
07.09.2023 |
VN |
octieu251295@gmail.com |
10. |
marshallheadphonesmalaysia.click |
GMO Internet, Inc |
Tran Trung Dung |
26.06.2023 |
VN |
octieu251295@gmail.com |
11. |
marstore.site |
GMO Internet, Inc |
Nong Thi Le |
25.05.2023 |
VN |
macvietnam.store@gmail.com |
12. |
marshallphilippines.online |
GMO Internet, Inc |
Nong Thi Le |
14.06.2023 |
VN |
macvietnam.store@gmail.com |
13. |
marstore.website |
GMO Internet, Inc |
Nong Thi Le |
11.06.2023 |
VN |
macvietnam.store@gmail.com |
14. |
marshall-ash.click |
GMO Internet, Inc |
Hoang Ngoc Hung |
22.06.2023 |
VN |
hoangngochung2401@gmail.com |
15. |
marshall-thailand.asia |
GMO Internet, Inc |
Pham Nam Anh |
22.06.2023 |
VN |
namanh9917@gmail.com |
16. |
marshall-shobpro.online |
GMO Internet, Inc |
Pham Van Xuyen |
23.06.2023 |
VN |
xuyenpham99tb@gmail.com |
17. |
marshallminor3.online |
GMO Internet, Inc |
Pham Van Xuyen |
23.06.2023 |
VN |
xuyenpham99tb@gmail.com |
18. |
marshall-auth.shop |
GMO Internet, Inc |
DONG NGOC LINH |
24.06.2023 |
VN |
donglinh2808@gmail.com |
19. |
marshall-store.shop |
GMO Internet, Inc |
DONG NGOC LINH |
21.06.2023 |
VN |
donglinh2808@gmail.com |
20. |
official-marshall.asia |
GMO Internet, Inc |
VU DINH TRUNG |
24.06.2023 |
VN |
trungvd15@gmail.com |
21. |
official-marshall.online |
GMO Internet, Inc |
VU DINH TRUNG |
24.06.2023 |
VN |
trungvd15@gmail.com |
22. |
marshall-official.asia |
GMO Internet, Inc |
VU DINH TRUNG |
24.06.2023 |
VN |
trungvd15@gmail.com |
23. |
marshall-th.asia |
GMO Internet, Inc |
Do Trung Nguyen |
24.06.2023 |
VN |
dotrungnguyen0311@gmail.com |
24. |
marshall-official.online |
GMO Internet, Inc |
Nguyen Van Huy |
22.06.2023 |
VN |
huynv.ptit@gmail.com |
25. |
marshall-outlet.online |
GMO Internet, Inc |
Nguyen Van Huy |
22.06.2023 |
VN |
huynv.ptit@gmail.com |
26. |
marshall-store.asia |
GMO Internet, Inc |
Nguyen Van Huy |
22.06.2023 |
VN |
huynv.ptit@gmail.com |
27. |
marshallstore-th.tech |
GMO Internet, Inc |
Nguyen Van Huy |
27.06.2023 |
VN |
huynv.ptit@gmail.com |
28. |
marshallstore.tech |
GMO Internet, Inc |
Nguyen Van Huy |
27.06.2023 |
VN |
huynv.ptit@gmail.com |
29. |
marshallstore.asia |
GMO Internet, Inc |
Nguyen Van Huy |
27.06.2023 |
VN |
huynv.ptit@gmail.com |
30. |
marshallstore-th.online |
GMO Internet, Inc |
Nguyen Van Huy |
27.06.2023 |
VN |
huynv.ptit@gmail.com |
31. |
marshallstore.online |
GMO Internet, Inc |
Nguyen Van Huy |
22.06.2023 |
VN |
huynv.ptit@gmail.com |
32. |
marshall-headphone.online |
GMO Internet, Inc |
Hoang Nghia Duc |
27.06.2023 |
VN |
duc210998@gmail.com |
33. |
marshall-online.click |
GMO Internet, Inc |
Hoang Nghia Duc |
21.06.2023 |
VN |
duc210998@gmail.com |
34. |
marshall-legit.online |
GMO Internet, Inc |
Hoang Nghia Duc |
19.06.2023 |
VN |
duc210998@gmail.com |
35. |
marshallmode2.click |
GMO Internet, Inc |
PHAM TUAN ANH |
28.06.2023 |
VN |
hoahumgk596@gmail.com |
36. |
marshall-mode-2.site |
GMO Internet, Inc |
PHAM TUAN ANH |
28.06.2023 |
VN |
hoahumgk596@gmail.com |
37. |
marshall-mode-2.online |
GMO Internet, Inc |
PHAM TUAN ANH |
28.06.2023 |
VN |
hoahumgk596@gmail.com |
38. |
marshall-mode-2.click |
GMO Internet, Inc |
PHAM TUAN ANH |
28.06.2023 |
VN |
hoahumgk596@gmail.com |
39. |
marshall-willen.click |
GMO Internet, Inc |
Do Van Huynh |
08.07.2023 |
VN |
dovanhuynh36@gmail.com |
40. |
marshall-auth.click |
GMO Internet, Inc |
Do Van Huynh |
25.06.2023 |
VN |
dovanhuynh36@gmail.com |
41. |
marshall-store.click |
GMO Internet, Inc |
Do Van Huynh |
25.06.2023 |
VN |
dovanhuynh36@gmail.com |
42. |
marshall-sound.click |
GMO Internet, Inc |
Do Van Huynh |
04.07.2023 |
VN |
dovanhuynh36@gmail.com |
43. |
marshallthailand.website |
GMO Internet, Inc |
Trinh Thanh Tai |
11.11.2022 |
VN |
trinhthanhtaihg@gmail.com |
44. |
marshallviet.com |
GMO Internet, Inc |
Trinh Ngoc Khoa |
25.11.2022 |
VN |
ngockhoamedia@gmail.com |
45. |
marshallvn.online |
GMO Internet, Inc |
VU QUANG TUNG |
25.11.2022 |
VN |
vutungvutung@gmail.com |
46. |
marshallvietnam.shop |
GMO Internet, Inc |
Ho Huu Ngoc |
22.03.2023 |
VN |
huungoc286@gmail.com |
47. |
marshallvn.shop |
GMO Internet, Inc |
Ho Huu Ngoc |
17.03.2023 |
VN |
huungoc286@gmail.com |
48. |
officialmarshall.com |
GMO Internet, Inc |
Nguyen Tien Anh |
04.04.2023 |
VN |
nguyentienanh18t91998@gmail.com |
49. |
marshallphilippines.com |
GMO Internet, Inc |
hoang van ha |
07.05.2023 |
VN |
hoangsonha.1618@gmail.com |
50. |
marshallthailand.com |
GMO Internet, Inc |
hoang van ha |
06.04.2023 |
VN |
hoangsonha.1618@gmail.com |
51. |
marshallshop.asia |
MatBao |
Nguyen The Huyen |
08.07.2023 |
Viet Nam |
thehuyennguyen121@gmail.com |
52. |
marshall-original.click |
MatBao |
Hoang Van Minh |
21.08.2023 |
Viet Nam |
hminh98nd@gmail.com |
53. |
marshallofficial.asia |
MatBao |
Hoang Thi Tam |
12.08.2023 |
Viet Nam |
tranduchang216@gmail.com |
54. |
marshallstoreinviet.online |
MatBao |
Hoang Thi Tam |
12.08.2023 |
Viet Nam |
tranduchang216@gmail.com |
55. |
marshall-official.store |
MatBao |
Dang Quang Trong |
26.07.2023 |
Viet Nam |
quangtrong122@gmail.com |
56. |
official-marshall1.click |
MatBao |
Nguyen The Huyen |
26.07.2023 |
Viet Nam |
thehuyennguyen121@gmail.com |
57. |
official-marshall2.click |
MatBao |
Nguyen The Huyen |
26.07.2023 |
Viet Nam |
thehuyennguyen121@gmail.com |
58. |
marshall-headphone.click |
MatBao |
Nguyen The Huyen |
07.07.2023 |
Viet Nam |
thehuyennguyen121@gmail.com |
59. |
marshall-inc.click |
MatBao |
Nguyen The Huyen |
08.07.2023 |
Viet Nam |
thehuyennguyen121@gmail.com |
60. |
marshall-retails.click |
MatBao |
Nguyen The Huyen |
08.07.2023 |
Viet Nam |
thehuyennguyen121@gmail.com |
61. |
marshall-thailand.click |
MatBao |
Nguyen The Huyen |
08.07.2023 |
Viet Nam |
thehuyennguyen121@gmail.com |
62. |
marshall-uk.click |
MatBao |
Nguyen The Huyen |
08.07.2023 |
Viet Nam |
thehuyennguyen121@gmail.com |
63. |
official-marshall.click |
MatBao |
Nguyen The Huyen |
25.07.2023 |
Viet Nam |
thehuyennguyen121@gmail.com |
64. |
official-marshall1.asia |
MatBao |
Nguyen The Huyen |
26.07.2023 |
Viet Nam |
thehuyennguyen121@gmail.com |
65. |
ash-marshall.asia |
MatBao |
Nguyen Tien Liem |
26.06.2023 |
Viet Nam |
nvliem1012@gmal.com |
66. |
marshall-ash.asia |
MatBao |
Nguyen Tien Anh |
26.06.2023 |
Viet Nam |
anhnt.mtk12@gmal.com |
67. |
marshall-shop.click |
MatBao |
Nguyen Tien Anh |
26.06.2023 |
Viet Nam |
anhnt.mkt12@gmail.com |
68. |
marshall-sale.asia |
MatBao |
Nguyen Tien Anh |
26.06.2023 |
Viet Nam |
anhnt.mkt12@gmail.com |
69. |
marshall-offiicial.asia |
MatBao |
Mac Van Cuong |
12.05.2023 |
Viet Nam |
maccuong1312@gmail.com |
70. |
shop-marshall.asia |
MatBao |
Nguyen Tien Anh |
10.07.2023 |
Viet Nam |
anhnt.mkt12@gmail.com |
71. |
marshall-storee.asia |
MatBao |
Nguyen Tien Anh |
23.06.2023 |
Viet Nam |
anhnt.mkt12@gmail.com |
72. |
marshall-store.online |
MatBao |
Nguyen Tien Anh |
26.06.2023 |
Viet Nam |
anhnt.mkt12@gmail.com |
73. |
marshallstorevietnam.click |
MatBao |
Vu Van Duong |
19.08.2023 |
Viet Nam |
vvduong123@gmail |
74. |
marshallphilippines.shop |
GoDaddy.com LLC |
Pham Long |
18.09.2023 |
VN |
mrmelody395979@gmail.com |
75. |
marshallph.com |
iNET |
Be Van Vuong (Mr) |
05.05.2023 |
Viet Nam |
delyvn.store@gmail.com |
76. |
marshallph.online |
iNET |
Be Van Vuong (Mr) |
17.05.2023 |
Viet Nam |
delyvn.store@gmail.com |
77. |
marshallph.store |
iNET |
Be Van Vuong (Mr) |
17.05.2023 |
Viet Nam |
delyvn.store@gmail.com |
78. |
marshallvietnam.top |
iNET |
Be Van Vuong (Mr) |
12.08.2023 |
Viet Nam |
delyvn.store@gmail.com |
79. |
marshallonlineshopping.com |
Gname 007 Inc |
WANG RUI |
22.06.2023 |
Hong Kong |
ckseo0004@gmail.com |
80. |
marshallofficial.com |
Namecheap, Inc |
Ta Hung |
07.06.2023 |
Viet Nam |
tahung2309@gmail.com |
81. |
marshallshops.xyz |
Namecheap, Inc |
Jayhind Pal |
26.07.2023 |
India |
jayhindp16@gmail.com |
82. |
marshallshops.site |
Namecheap, Inc |
Jayhind Pal |
26.07.2023 |
India |
jayhindp16@gmail.com |
83. |
marshall-th.shop |
NameSilo |
Anh Do |
15.07.2023 |
Viet Nam |
doanh123hup@gmail.com |
84. |
marshall-lifestyle.com |
NameSilo |
Vu Van Duong |
03.06.2023 |
Viet Nam |
vvduong123@gmail.com |
85. |
marshallstoreviet.com |
Nhan Hoa Software Company Ltd. |
Hoàng Ánh Dương |
Not given |
Viet Nam |
duonghoang0011@gmail.com |
86. |
marshallvn.store |
Dynadot |
Name: 宁顺政 |
03 06 2023 |
China |
COMPLAINANT:
The Complainant asserts that the disputed domain names are identical or confusingly similar to its trademark MARSHALL. It relies on previous Panel decisions regarding the validity of its rights, in particular, Marshall Amplification PLC v. Wen Zhou Rui Xiang Jian Zhi You Xian Gong Si, Wen Zhou Rui Xiang, WIPO Case No. D2018-0715; Marshall Amplification PLC v. Registration Private, Domains By Proxy, LLC / I S, ICS Inc. WIPO Case No. D2017-187 ; Marshall Amplification PLC v. Linzhi Mao. Case No. DCN-1600703; Marshall Amplification PLC v. Wen Zhou Rui Xiang Paper Cutting. Co. Ltd. DCN-1800811.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names and asserts that:
- there is no realistic reason for the Respondent to register the disputed domain names other than to take advantage Complainant’s rights and reputation in the MARSHALL brand;
- while some of the 86 disputed domain names resolve to live sites, 80 of 86 of the disputed domain names do not resolve to webpages. The Respondent has used the disputed domain names and the MARSHALL trademark on the active websites for the purpose of imitating the Complainant’s genuine website, which cannot constitute a bona fide offering of goods or services;
- previous Panels have held that in the absence of any license or permission from the Complainant to use such a widely-known trade mark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed;
- the Respondent has never legitimately been known as MARSHALL; and
- nothing about the disputed domain names suggests that the Respondent is using them legitimately or for non-commercial and fair use.
The Complainant submits that the disputed domain names have been registered and used in bad faith and submits that:
- the MARSHALL trademarks are well-known and significantly pre-date the registration of the disputed domain names;
- the Respondent knew of the Complainant’s brand, and the disputed domain names were registered with the sole purpose of creating an association with the Complainant;
- by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to their 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 their website or location or of a product or service on their website or location;
- the Respondent is phishing where websites falsely advertise the sale of MARSHALL products and users are presented with “ORDER NOW” or “BUY” icons that subsequently link to pages where they can enter their financial details;
- even if the goods are merely offered for re-sale purposes, the disputed domain names will fail the re-seller test laid out in WIPO Overview 3.0, Paragraph 2;
- the Respondent has engaged in a pattern of bad faith conduct through the registration of the disputed domain names in order to prevent the Complainant from reflecting the mark in corresponding domain names, in accordance with Policy, Paragraph 4(b)(ii);
- the Respondent has registered multiple confusingly similar domain names between 25 November 2022 and 7 September 2023 with a variety of generic terms and symbols as either a prefix or a suffix, and where the disputed domain names resolve to the websites they contain identical or highly similar use of the Complainant’s intellectual property rights. A pattern of bad faith registration was found similarly in Alexa Internet/Amazon Technologies, Inc./eBay Inc./Elance, Inc./PayPal, Inc. v. duan xiangwang CAC Case No. 100614; and
- as to the 80 disputed domain names that do not resolve to live content, the Complainant requests the Panel to find the domains were registered and used in bad faith, and regarding passive holding cites Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
RESPONDENT:
No administratively compliant Response has been filed.
The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).
The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
Preliminary issues:
This case involves 86 disputed domain names, 40 respondents, 9 registrars and 4 languages. Inevitably, this gives rise to procedural issues. The Complainant has requested that the proceedings be consolidated, that the language of the proceedings be in English and that the mutual jurisdiction be the country of the registrar. None of the 40 named Respodents have responded to the Complaint, nor challenged the Complainant’s request regarding consolidation, the language of the proceedings, and mutual jurisdiction. The procedural issues are dealt with below.
- Consolidation and identity of the respondent
A Complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder (paragraph 3(c) of the UDRP Rules). The preliminary gatekeeper for admitting a Complaint against multiple respondents is the administrative provider (see Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIP Case No. D2010-0281). Once a Complaint has been admitted to the administrative proceeding on a preliminary basis, the Panel makes the final decision to consolidate the disputes or order the separation of a filed Complaint, in accordance with paragraph 10(e) of the UDRP Rules.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition at paragraph 4.11 deals with how panels address consolidation scenarios. Where a complaint is filed against multiple respondents, panels consider whether the domain names or corresponding websites are subject to common control, whether the consolidation would be fair and equitable to all parties, and would be procedurally efficient. The party seeking consolidation has the burden of providing evidence in support of its request.
The Complainant submits that the disputed domain names are under the control of a common operator, based on commonalities between the disputed domain names, and the websites to which they resolve, and their overall use, which shows they are interconnected as part of an organised infringement network. The Complainant, asserts that:
- the Whois details for the disputed domain names show the registrant has been redacted from the public Whois records, though all domains are noted to have Vietnam (VN) as their registrant country on the Whois records; the registrant being potentially from Vietnam is also supported by their choice of registrars, which include Mat Bao Corporation and Nhan Hoa Software Company Ltd., both of which are headquartered in Vietnam;
- the disputed domain names were registered in a notable pattern: between 25 November 2022 and 7 September 2023 there were 86 domain name registrations, which apart from two registered in November 2022, all other 84 domain names were registered in short bursts between March and September 2023;
- the disputed domain names share a common use of registrars, 50 of which are registered with GMO Internet Group, Inc., and 23 with Mat Bao Corporation;
- the disputed domains names feature a common naming convention using the MARSHALL mark together with an adjective, noun, or country name;
- the disputed domain names are registered with great similarity, such as <marshall-official.asia>, <marshall-official.online>, and <marshall-official.site>, all of which are registered with the same registrar, between June and August 2023; and
- the identical registrant country, pattern of registration dates; common use of registrars, highly similar resolving webpages and the common naming convention of the domains, mean that it would be fair and equitable to all parties for the complaint to be consolidated.
GMO Internet, Inc is the registrar of the 50 disputed domain names, of which 48 show similarities in the naming pattern of the MARSHALL mark, a generic English word, sometimes separated from the mark by a hyphen and TLD. The registrants are all located in Vietnam and have a <gmail.com> email address. The exceptions are <marstore.website> and <marstore.site>, which have the letters “mar” followed by the word “store” and TLD, but do not incorporate the entire MARSHALL trademark.
MatBao is the registrar of 23 disputed domain names. All follow the same naming pattern of the trademark MARSHALL, a generic English word, sometimes separated from the mark by a hyphen, and top-level domain (TLD). All the registrants are located in Vietnam and have a <gmail.com> email address, which follow the pattern of name or initials, numbers and <@gmail.com>. All are registered in a relatively short period between 12 May 2023 and 21 August 2023. Many were registered on the same day or within a few days of each other.
GoDaddy .com LLC is the registrant of <marshallphilippines.shop>. It follows a similar naming pattern of the mark MARSHALL, a country name plus TLD. The registrant is also located in Vietnam and uses a <gmail.com> email address.
iNET is the registrar of the disputed domain names, <marshallph.com>, <marshallph.online>, <marshallph.store> and <marshallvietnam.top>. They follow a similar naming pattern of the MARSHALL mark, a country name or abbreviation, such as “ph” for the Philippines plus the TLD. The registrant is located in Vietnam and uses a <gmail.com> email address. All were registered in a short period between 5 May 2023 and 12 August 2023.
NameSilo is the registrar of the disputed domain names <marshall-th.shop> and <marshal-th.shop>. They follow the same naming pattern of the MARSHALL mark, a country abbreviation of “th” for the Thailand plus the TLD. The registrant is located in Vietnam and has a <.gmail.com> email address.
Nhan Hoa Software Company Ltd is the registrar of the disputed domain name <marshallstoreviet.com>. Again the naming pattern is the MARSHALL mark, the words “store”, the country abbreviation “viet” for Vietnam, plus the TLD. Again, the registrant is located in Vietnam and has a <gmail.com> email address.
Gname.Com Pte Ltd is the registrar of the disputed domain name <marshallonlineshopping.com>. It has same naming pattern of the MARSHALL mark, generic words "online shopping”, and the registrant has a <.gmail.com> email address . However, there are differences from the other disputed domain names where the registrant is located in Vietnam and has a Vietnamese name. The registrant of <marshallonlineshopping.com> is WANG RUI who does not appear to be Vietnamese and is located in Hong Kong.
Namecheap, Inc is the registrar of the disputed domain names <marshallofficial.com>, <marshallshops.site> and <marshallshops.xyz>. They follow the naming pattern of the trademark MARSHALL, a generic word, and TLD and use <gmail.com> for its email. Only the registrant of <marshallofficial.com> appears to be Vietnamese is located in Vietnam. By contrast, in the registrar verification the registrant of <marshallshops.site> and <marshallshops.xyz> is Jayhind Pal who is located in India and there is nothing to indicte that he might be Vietnamese.
Dynadot is the registrar of <marshallvn.store>. While the registration date is within the window of dates of other disputed domain name registrations and the disputed domain name follows the naming pattern of the trademark MARSHALL,country abbreviation "vn" and TLD, there are significant differences. By contrast with the disputed domain names where the registrants are located in Vietnam, the registrant of <marshallvn.store>is located in China, the registrant’s name is in Chinese characters not Latin script, and the email address follows a different format <260564555@qq.com> , and not a <gmail.com> email address, which is common to other registrants.
The Complainant asserts that all domains have Vietnam (VN) as their registrant country on the Whois records. The analysis of the disputed domain names above indicate otherwise. While most registrants are located in Vietnam, WANG RUI is located in Hong Kong, Jayhind Pal is located in India, and宁顺政 is located in China.
The Complaint asserts that 73 of the disputed domain names share a common use of registrars: 50 with GMO Internet Group, Inc., and 23 with Mat Bao Corporation. The Panel notes that the remaining 13 disputed domain names do not share a common use of registrars but are registered with 7 other registrars.
While most of the disputed domain names use the pattern of the trademark MARSHALL plus a noun or country name or its abbreviation, two of the disputed domain names ,<marstore.website> and <marstore.site>, do not include the MARSHALL mark but only the first three letters “mar”. The Complainant does not address this discrepancy in its submissions on consolidation, nor in its submission on confusing similarity between its trademark MARSHALL and the disputed domain names.
The Panel finds that on the balance of probabilities it is unlikely that many supposedly different registrants would share so many common features in that they are based in Vietnam, share the same email provider, use Latin script, English words and common naming pattern.
In deciding to consolidate proceedings where the registrants are located in Vietnam and have Vietnamese names, the Panel is persuaded by the common naming pattern for the disputed domain names, the common use of <gmail.com> for an email address and the use of Latin script, which demonstrates common control sufficient to justify consolidation. The exception is Nong Thi Le, the registrant of <marstore.site>, <marshallphilippines.online> and <marstore.website>, where two of the disputed domain names have the letters “mar” not the entire MARSHALL mark, and only one follows of the common naming pattern incorporating the MARSHALL mark. The naming pattern of the registrant’s <.gmail.com> email also has significant differences. Instead of name or initials, sometimes followed by numbers, the registrant Nong Thi Le uses “mac” followed by “vietnam” , and the generic word “store”.
For the reasons set out above and pursuant to paragraph 10(e) of the Rules, the Panel orders:
- The consolidation of the filed Complaint in respect of the following 80 disputed domain names: <marshallstore.click>, <official-marshall.com>, <marshall-th.online>, <marshallshop.asia>, <marshall-global.online>, <marshall-official.site>, <marshall-ash.online>, <marshall-global.asia>, <marshallheadphone.online>, <marshall-legit.com>, <marshallheadphonesmalaysia.click>,<marshall-ash.click>, <marshall-thailand.asia>, <marshall-shobpro.online>, <marshallminor3.online>, <marshall-auth.shop>, <marshall-store.shop>, <official-marshall.asia>, <official-marshall.online>, <marshall-official.asia>, <marshall-th.asia>, <marshall-official.online>, <marshall-outlet.online>, <marshall-store.asia>, <marshallstore-th.tech>, <marshallstore.tech>, <marshallstore.asia>, <marshallstore-th.online>, <marshallstore.online>, <marshall-headphone.online>, <marshall-online.click>, <marshall-legit.online>, <marshallmode2.click>, <marshall-mode-2.site>, <marshall-mode-2.online>, <marshall-mode-2.click>, <marshall-willen.click>, <marshall-auth.click>, <marshall-store.click>, <marshall-sound.click>, <marshall-original.click>, <marshallofficial.asia>, <marshallstoreinviet.online>, <marshall-official.store>, <official-marshall1.click>, <official-marshall2.click>, <marshall-headphone.click>, <marshall-inc.click>, <marshall-retails.click>, <marshall-thailand.click>, <marshall-uk.click>, <official-marshall.click>, <official-marshall1.asia>, <ash-marshall.asia>, <marshall-ash.asia>, <marshall-shop.click>, <marshall-sale.asia>, <marshall-offiicial.asia>, <shop-marshall.asia>, <marshall-storee.asia>, <marshall-store.online>, <marshallthailand.website>, <marshallviet.com>, <marshallvn.online>, <marshallvietnam.shop>, <marshallvn.shop>, <officialmarshall.com>, <marshallphilippines.com>, <marshallthailand.com>, <marshallphilippines.shop>, <marshallph.com>, <marshallph.online>, <marshallph.store>, <marshallvietnam.top>, <marshallonlineshopping.com>, <marshallofficial.com>, <marshall-th.shop>, <marshall- lifestyle.com>, <marshallstorevietnam.click>, <marshallstoreviet.com>.
- The separation of the filed Complaint in respect of the respondent Nong Thi Le and the disputed domain names , <marstore.site>, <marshallphilippines.online> and <marstore.site>.
- The separation of the filed Complaint in respect of the respondent Jayhind Pal and the disputed domain names <marshallshops.xyz> and <marshallshops.site>.
- The separation of the filed Complaint in respect of the respondent 宁顺政 and the disputed domain name <marshallvn.store>.
2. Language
The languages involved in this multiple dispute proceeding are English, Japanese, Vietnamese and Chinese. The Complainant has requested that the language of the proceedings be English for the following reasons:
- Paragraph 10 of the Rules requires proceedings to be conducted with due expedition and panellists must ensure that a fair balance is struck between the Parties in deciding how proceedings are to be conducted most expeditiously;
- the website content of all disputed domain names is entirely in English, which is sufficient to determine that the proceedings be conducted in the common language (see PaySendGroup Limited v Quan Zhongjun, Quan Zhong Jun, CAC Case No. CAC 104808); and
- translating this Complaint into another language would lead to undue delay and substantial expense the Complainant, and would go against the spirit of the Policy.
While many of the registration agreements are in English, the language of GMO Internet Group, Inc’s registration agreements is Japanese and iNET B.V’s registration agreements is Vietnamese. Under paragraph 11 of the UDRP Rules, the language of the proceedings is the language of the registration agreement, subject to the authority of the Panel to determine otherwise. The Panel must ensure that the parties are treated with equality and given a fair opportunity to present its case (UDRP Rule 10, General Powers of the Panel). The Panel notes that each of the disputed domain names in the consolidated Complaint uses the trademark MARSHALL plus:
- an English word or combination of English words, such as “shop”, “online” “sound”, “official”, “global”, “mode”, “ash”, “headphone”, “outlet” “ retails”, “sale”, “lifestyle”, “shopping”, “original”; or a geographical term in English, such as “philippines”, “thailand”, “vietnam”, “malayasia”; or
- an English abbreviation, such as “legit”, “pro”, “auth”, “tech”; or country abbreviation, such as “th” for Thailand,” “ph” for the Phillipines, “uk” for the United Kingdom, and “viet” or “vn” for Vietnam; or
- a misspelling of an English word, such as “storee”, and “shobpro”.
There is clear targeting of the MARSHALL brand by the Respondent who has not challenged the request for the proceedings to be in English. The disputed domain names use English words and Latin script, not Chinese or Japanese characters. Most of the webpages linked to the disputed domain names are either blank or state in English “Access Restricted”. Any active websites use English words. Considering these factors the Panel finds that the Respondent has sufficient knowledge of English for English to be the language of the proceeding.
To require the Complaint to be re-filed in another language would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and unnecessarily delay the proceeding. The Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding and the decision delivered in English.
3. Mutual jurisdiction
The Complaint must state that the Complainant will submit to the courts of at least one mutual jurisdiction for challenges to a UDRP decision cancelling or transferring the disputed domain name. The UDRP Rules sets out that mutual jurisdiction means a court jurisdiction at the location of either:
(a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or
(b) the domain-name holder's address as shown for the registration of the domain name in Registrar's Whois database at the time the complaint is submitted to the Provider.
The Complainant has chosen the mutual jurisdiction where the Registrar is located. That option is available if the domain name holder has agreed to submit to that jurisdiction in its registration agreement. This will not be an issue if the Registrar and the domain name holder is located in the same jurisdiction. But where the Registrar and domain name holder are located in different jurisdictions, such as where the Registrar is based in Japan and domain name holder is located in Vietnam, it can have serious practical implications.
The Registrar Verifications do not specify if the domain name holder has agreed to the mutual jurisdiction where the Registrar is located. The domain name holder can object to the Complainant’s choice of mutual jurisdiction, but has not done so. The Complainant has submitted to the mutual jurisdiction of the Registrar and the Complaint should not be seen as deficient if neither the Registrar nor the domain name holder has clarified that a different mutual jurisdiction would be preferred.
4. Complaint to ICANN
The CAC filed an official complaint at ICANN on 4 October 2023 as the registrar, GMO Internet Group, Inc. d/b/a Onamae.com had failed to provide registrar verifications requested by the CAC.
5. Respondents
One the respondents named in the Complaint, Xuan 27 To Vinh Dien, Phuong Khuong Trung, Quan Thanh, is not named any of the registrar verifications. This may be an administrative oversight when some disputed domain names were removed from the Complaint.
The registrar, GMO internet inc, duplicates the domain name <official-marshall.com> for the name of the domain name holder.
The registrar verifications for the diputed domain names<marshallshops.xyz> and <marshallshops.site> give the registrant's name as Jayhind Pal but he is not listed as a Respondent in this Complaint. In any event those two domain names are severed from the consolidated Complaint under Panel Order 3.
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.
Decision
Paragraph 4 (a) of the Policy requires the Complainant to prove each of the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and used in bad faith.
The standard of proof to be applied by the Panel in a UDRP case is the balance of probabilities, that is, it is more likely than not that a claimed fact is true. Under paragraph 14 of the UDRP Rules, the Panel shall draw such inferences from a party’s default or failure to comply with Rules, or any request from the Panel as the Panel considers appropriate.
1. Identical or confusingly similar
The Complainant holds numerous trademark registrations that predated the registration of the disputed domain names. Given the global nature of the Internet and Domain Name System, where a trademark is valid is not considered relevant to the assessment of whether the disputed domain names are confusingly similar to the Complainant’s mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, paragraph 1.1.1).
All the disputed domain names in the consolidated proceeding fully incorporate the MARSHALL trademark. Adding a hyphen, a generic word or geographic indicator to that mark does nothing to avoid the conclusion that the disputed domain names that incorporate MARSHALL are confusingly similar to the Complainant's trademark MARSHALL.
The addition of the top-level suffix, such as “.com”, ‘”.click”; “.store:, “.shop”. “.online”, “.asia”, “site”, “.tech”. “.top” and “.website” is a standard registration requirement. It adds no distinctiveness to a domain name and can be disregarded when assessing whether the disputed domain name is confusingly similar to a trademark.
The Panel finds that the disputed domain names in this consolidated proceeding are confusingly similar to the Complainant’s trademark, MARSHALL and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
2. No rights or legitimate interests
Under paragraph 4(c) of the Policy, a Respondent can establish rights or legitimate interests in a disputed domain name by demonstrating that:
(i) before any notice of the dispute, the Respondent has used or has demonstrable preparations to use the disputed domain name or a name corresponding with it in connection with a bona fide offering of goods or services; or
(ii) has been commonly known by the domain name; or
(ii) is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has longstanding rights in the MARSHALL trademark. The Respondent has no obvious connection with the Complainant, is not commonly known by the name MARSHALL, nor licenced to use the Complainant’s trademark. The Complainant has established a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name. The burden of proof now shifts to the Respondent to show relevant rights or a legitimate interest. The Respondent has not filed a Response nor challenged any of the Complainant’s assertions, nor submitted any evidence to show that the disputed domain names are being used in connection with a bona fide offering of goods and services or for legitimate noncommercial or fair use purposes.
The Panel finds on the balance of probabilities that the Respondent has no right or legitimate interest in the disputed domain names and that the requirements of paragraph 4(a)(ii) of the Policy have been met.
3. Registered and used in bad faith
The Complainant’s trademark, MARSHALL, predates the registration of the disputed domain names. The most likely reason for the Respondent to registered the disputed domain names that incorporate the Complainant’s well-known trade mark, is to create a likelihood of confusion with that mark. The Respondent is targeting the MARSHALL brand by registering over 80 domain names incorporating the MARSHALL trademark. The Respondent clearly knew of the Complainant’s trademarks and reputation when registering the disputed domain names and registered them in bad faith.
Most of the disputed domain names are being held passively. It is possible that in certain circumstances a passive holding can amount to use in bad faith (for example, see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Complainant believes that the Respondent registered active websites for phishing purposes to divert the Complainant’s legitimate customers to the Respondent’s website. The Respondent has not disputed this assertion.
The Panel notes that the Complainant’s trademark registrations MARSHALL are distinctive and well-known and were registered well before the disputed domain names, the Respondent has targeted the MARSHALL brand, has provided no evidence of any actual or contemplated good faith use of the disputed domain names, and has used a privacy service to conceal the Respondent’s identity. Any good faith use appears implausible.
Considering all the above factors, the Panel concludes that the disputed domain names were registered and are being used in bad faith and that the requirements of paragraph 4(a)(iii) of the Policy have been met.
- marshallstore.click: Transferred
- official-marshall.com: Transferred
- marshall-th.online: Transferred
- marshallshop.asia: Transferred
- marshall-global.online: Transferred
- marshall-official.site: Transferred
- marshall-ash.online: Transferred
- marshall-global.asia: Transferred
- marshallheadphone.online: Transferred
- marshall-legit.com: Transferred
- marshallheadphonesmalaysia.click: Transferred
- marstore.site: Remaining with the Respondent
- marshallphilippines.online: Remaining with the Respondent
- marstore.website: Remaining with the Respondent
- marshall-ash.click: Transferred
- marshall-thailand.asia: Transferred
- marshall-shobpro.online: Transferred
- marshallminor3.online: Transferred
- marshall-auth.shop: Transferred
- marshall-store.shop: Transferred
- official-marshall.asia: Transferred
- official-marshall.online: Transferred
- marshall-official.asia: Transferred
- marshall-th.asia: Transferred
- marshall-official.online: Transferred
- marshall-outlet.online: Transferred
- marshall-store.asia: Transferred
- marshallstore-th.tech: Transferred
- marshallstore.tech: Transferred
- marshallstore.asia: Transferred
- marshallstore-th.online: Transferred
- marshallstore.online: Transferred
- marshall-headphone.online: Transferred
- marshall-online.click: Transferred
- marshall-legit.online: Transferred
- marshallmode2.click : Transferred
- marshall-mode-2.site: Transferred
- marshall-mode-2.online: Transferred
- marshall-mode-2.click: Transferred
- marshall-willen.click: Transferred
- marshall-auth.click: Transferred
- marshall-store.click: Transferred
- marshall-sound.click: Transferred
- marshall-original.click: Transferred
- marshallofficial.asia: Transferred
- marshallstoreinviet.online: Transferred
- marshall-official.store: Transferred
- official-marshall1.click: Transferred
- official-marshall2.click: Transferred
- marshall-headphone.click: Transferred
- marshall-inc.click: Transferred
- marshall-retails.click: Transferred
- marshall-thailand.click: Transferred
- marshall-uk.click: Transferred
- official-marshall.click: Transferred
- official-marshall1.asia: Transferred
- ash-marshall.asia: Transferred
- marshall-ash.asia: Transferred
- marshall-shop.click: Transferred
- marshall-sale.asia: Transferred
- marshall-offiicial.asia: Transferred
- shop-marshall.asia: Transferred
- marshall-storee.asia: Transferred
- marshall-store.online: Transferred
- marshallthailand.website: Transferred
- marshallviet.com: Transferred
- marshallvn.online: Transferred
- marshallvietnam.shop: Transferred
- marshallvn.shop: Transferred
- officialmarshall.com: Transferred
- marshallphilippines.com: Transferred
- marshallthailand.com: Transferred
- marshallphilippines.shop: Transferred
- marshallph.com: Transferred
- marshallph.online: Transferred
- marshallph.store: Transferred
- marshallvietnam.top: Transferred
- marshallonlineshopping.com: Transferred
- marshallofficial.com: Transferred
- marshallshops.xyz: Remaining with the Respondent
- marshallshops.site: Remaining with the Respondent
- marshall-th.shop: Transferred
- marshall- lifestyle.com: Transferred
- marshallstorevietnam.click: Transferred
- marshallstoreviet.com: Transferred
- marshallvn.store: Remaining with the Respondent
PANELLISTS
Name | Veronica Bailey |
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