Mackcotodays.shop

The timeline behind mackcotodays.shop

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Mack Weldon, Inc. v. Kelci Thornburgh Claim Number: FA2110001968648 PARTIES Complainant is Mack Weldon, Inc. (“Complainant”), represented by Shane Rumbaugh, Pennsylvania, USA. Respondent is Kelci Thornburgh (“Respondent”), Ohio, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <mackcotodays.shop>, registered with NameSilo, LLC. 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 Honourable Neil Anthony Brown QC as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the Forum electronically on October 12, 2021; the Forum received payment on October 12, 2021. On October 12, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <mackcotodays.shop> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 October 13, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 2021 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@mackcotodays.shop. Also on October 13, 2021, 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, the Forum transmitted to the parties a Notification of Respondent Default. On November 8, 2021, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the 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. Complainant, Mack Weldon Inc., uses its marks in connection with a wide variety of clothing merchandise, apparel accessories, and online retail store services. Complainant submits that it has rights in the MACK WELDON mark based upon the registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,207,789, registered Sep. 11, 2012). See Compl. Ex. 5. Respondent’s <mackcotodays.shop> domain name is confusingly similar to Complainant’s MACK WELDON mark because it begins with the distinctive first part of the two-word mark and adds the terms “co” and “todays,” as well as the “.shop” generic top-level domain (“gTLD”). Respondent does not have rights or legitimate interests in the <mackcotodays.shop> domain name. Respondent is not licensed or authorized to use Complainant’s MACK WELDON mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent mimics Complainant’s webpage and purports to sell goods under Complainant’s mark. Respondent registered and uses the <mackcotodays.shop> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by passing off as Complainant at the disputed domain name to collect personal and financial information from users. B. Respondent Respondent failed to submit a Response in this proceeding. PANEL NOTE: IDENTITY OF RESPONDENT Complainant supports its case by submitting an executed Declaration by Kelcie Thornburgh from which it appears that the domain name was registered and used by a person or persons unknown who took and used Kelcie Thornburgh’s identity without permission. It is also noted that the name “Kelcie” has not been spelt correctly in the Complaint. Accordingly, when it is submitted that the Respondent committed the acts alleged in the Complaint, it appears that those acts were committed by the person or persons who registered and used the domain name and not by Kelcie Thornburgh. No liability therefore attaches to Kelcie Thornburgh for any of the acts attributed to the Respondent. FINDINGS 1. Complainant is a United States company that provides a wide variety of clothing merchandise, apparel accessories, and online retail store services. 2. Complainant has established its rights in the MACK WELDON mark based upon the registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,207,789, registered Sep. 11, 2012). 3. Respondent registered the disputed domain name on July 19, 2021. 4. Respondent has caused the domain name to be used to mimic Complainant’s webpage and to purport to sell goods under Complainant’s mark. DISCUSSION Paragraph 15(a) of 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 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 WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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 submits that it has rights in the MACK WELDON mark based upon the registration of the mark with the USPTO (e.g., Reg. No. 4,207,789, registered Sep. 11, 2012). See Compl. Ex. 5. Registration of a mark with the USPTO is generally sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the MACK WELDON mark with the USPTO, the Panel finds that 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 MACK WELDON mark. Complainant argues that Respondent’s <mackcotodays.shop> domain name is confusingly similar to Complainant’s MACK WELDON mark because it begins with the distinctive first part of the two-word mark and merely adds the terms “co” and “todays,” as well as the “.shop” gTLD. A domain name may still be confusingly similar to a mark under Policy ¶ 4(a)(i), even where it only uses part of the mark. See Panco Men’s Products, Inc. v. LEN PETERSON / LEONARD L PETERSON, FA 1613409 (Forum May 26, 2015) (finding Respondent’s <genesvitamine.com> domain name is confusingly similar to the GENES VITAMIN E CREME mark pursuant to Policy ¶ 4(a)(i).). Similarly, addition of generic or descriptive terms and a gTLD is generally insufficient to distinguish a domain name from a mark. See AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”). As the Panel agrees that the changes do not distinguish the disputed domain name from the mark, it finds that the domain name is identical or confusingly similar to the MACK WELDON mark under Policy ¶ 4(a)(i). 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 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)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). 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 MACK WELDON mark and to use it in its domain name adding the words “co” and “todays,” as well as the “shop” gTLD, which do not negate the confusing similarity between the domain name and the trademark; (b) Respondent registered the disputed domain name on July 19, 2021; (c) Respondent has caused the domain name to be used to mimic Complainant’s webpage and to purport to sell goods under Complainant’s mark; (d) Respondent has engaged in these activities without the consent or approval of Complainant; (e) Complainant argues that Respondent does not have rights or legitimate interests in the <mackcotodays.shop> domain name since Respondent is not licensed or authorized to use Complainant’s MACK WELDON mark and is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record lists “Kelci Thornburgh” as the registrant and no information suggests that Complainant has authorized Respondent to use the MACK WELDON mark in any way. See Compl. Ex. 8. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii); (f) Complainant argues that Respondent does not use the <mackcotodays.shop> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent mimics Complainant’s webpage and purports to sell goods under Complainant’s mark. Replication of a complainant’s website to promote confusion and further a competing use is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Here, Complainant argues that Respondent creates a false impression of affiliation with Complainant by displaying Complainant’s marks and images of Complainant’s products on the resolving webpage. Complainant provides a screenshot of its own webpage and the resolving webpage at the disputed domain. See Compl. Exs. 6 & 7. Thus, the Panel agrees with Complainant and finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a 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 It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression. 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, Complainant argues that Respondent registered and uses the <mackcotodays.shop> domain name in bad faith because Respondent disrupts Complainant’s business for commercial gain by passing itself off as Complainant at the disputed domain name to collect personal and financial information from users. Passing off as a complainant to capitalize on the complainant’s goodwill or to perpetrate fraud suggests bad faith per Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudulently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Here, Complainant provides screenshots of Respondent’s webpage, which directly copies information from Complainant’s webpage. See Compl. Ex. 7. Respondent purports to offer products for sale at its webpage, but Complainant submits that Respondent actually attempts to retrieve personal and financial information from customers who mistakenly land at the copy-cat webpage. Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv). Secondly, 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 MACK WELDON 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 <mackcotodays.shop> domain name be TRANSFERRED from Respondent to Complainant. The Honourable Neil Anthony Brown QC Panelist Dated: November 9, 2021 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.