Mark's Work Wearhouse Ltd. v lu sha

WIPO Case No. D2025-2770

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Mark’s Work Wearhouse Ltd. v. lu sha

Case No. D2025-2770

1. The Parties

The Complainant is Mark’s Work Wearhouse Ltd., Canada, represented by Norton Rose Fulbright Canada

LLP, Canada.

The Respondent is lu sha, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <marksca.shop> (the “Disputed Domain Name”) is registered with West263

International Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2025. On
July 15, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On July 16, 2025, 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 (Redacted for Privacy) and contact information in the Complaint.
The Center sent an email communication to the Complainant on July 16, 2025, 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 July 18, 2025.

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 July 24, 2025. In accordance with the Rules, paragraph 5,
the due date for Response was August 13, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on August 18, 2025.

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The Center appointed Douglas M. Isenberg as the sole panelist in this matter on August 21, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant states that it “has been operating for over forty years,” is “a famous Canadian retailer of goods” with more than 380 stores in Canada, employs (directly or via dealers and franchisees) “thousands of people” and had approximate annual revenue in 2024 of 1.52 billion Canadian Dollars. The Complainant states that it is the registrant of the domain name <marks.com>, which it uses in connection with a website, since the year 2000, to sell clothing.

The Complainant states, and provides documentation in support thereof, that it is the owner of 16 trademark registrations for trademarks that consist of or incorporate the word MARK’S (the “MARK’S Trademark”), including Canadian Reg. No. TMA823396 for MARK’S (registered May 4, 2012) for use in connection with, inter alia, clothing; and U.S. Reg. No. 6,222,243 for MARK’S (registered December 15, 2020) for use in connection with “retail stores featuring clothing, footwear, headwear, and outerwear.”

The Disputed Domain Name was created on April 17, 2025. The Complainant states, and provides a screenshot in support thereof, that “[a]s at June 29, 2025, the website hosted at the Disputed Domain Name is no longer available and leading to an error message.” The Complainant does not state anything about how, if at all, the Disputed Domain Name may have been used at an earlier date.

The Complainant also states that Respondent is the registrant of the domain name <marksonlineca.com>, which is the subject of WIPO Case No. D2025-2789 (in which this Panel has also been appointed). As set forth in the decision in WIPO Case No. D2025-2789, the domain name <marksonlineca.com> had been used

in connection with a website that “wrongfully attempt[ed] to pass itself off to internet users and customers as being the Complainant and/or affiliated with the Complainant” by “showing the same or similar products that the Complainant sells in its stores and online such as clothing.”

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name. Notably, the Complainant contends that:

- The Disputed Domain Name is confusingly similar to the MARK’S Trademark because the Disputed
Domain Name “incorporates the entirety” of the MARK’S Trademark and that the “addition of the element
‘ca’, a well-known acronym of Canada, does not mitigate or preclude a finding of confusion.”

- The Respondent has no rights or legitimate interests in the Disputed Domain Name because, inter alia,
“Respondent has not been authorized or licensed by the Complainant to use the [MARK’S] Trademark[] in
any way, including in respect of the Disputed Domain Name, and has no connection or affiliation with the
Complainant”; “[t]here is no evidence that the Respondent that registered the Disputed Domain Name as
recent as April 2025, has become commonly known by such a name”; and “Respondent did not register
the Disputed Domain Name until decades after the Complainant had begun using and promoting the
Trademarks in association with its goods and services in Canada and as a result had created widespread
recognition of the Trademarks.”

- The Disputed Domain Name was registered and is being used in bad faith because, inter alia,
Respondent did not register the Disputed Domain Name until the MARK’S Trademark “had been both

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D2025-2789) “has established a pattern of bad faith conduct.”

registered and extensively known in Canada (and internationally) for decades,” making it “highly further supports that the Respondent was targeting the Complainant and its [MARK’S] Trademark;’”; “Respondent’s non-use of the domain name, which is currently parked on a blank page, constitutes bad faith” given “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good- faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”; and the Respondent’s registration and use of the domain name <marksonlineca.com> (WIPO Case No.

improbable that the Respondent was not aware of Trademarks when it registered the Disputed Domain

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by the Complainant, it is apparent that the Complainant has rights in and to the MARK’S Trademark.

As to whether the Disputed Domain Name is identical or confusingly similar to the MARK’S Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “marksca”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.11.1.

As set forth in section 1.7 of WIPO Overview 3.0: “in cases where a domain name incorporates the entirety
of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain
name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP
standing.” The absence of an apostrophe from the Complainant’s MARK’S Trademark in the Disputed
Domain Name (an impermissible character in any domain name) is irrelevant for purposes of the Policy.
See, e.g., Trader Joe’s Company v. Trader Joe’s / John Murray of Trader Joes Inc., d/b/a Trader Joes
Furniture, WIPO Case No. D2016-0591 (“[t]he omission of the apostrophe, a character not permitted in
domain names, is irrelevant for analysis of whether the Disputed Domain Name is confusingly similar to
Complainant’s mark”).

Further, as set forth in section 1.8 of WIPO Overview 3.0: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” Clearly, the letters “ca” are an abbreviation for Canada, where Complainant is located and has 380 stores.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

The Complainant has argued that the Respondent has no rights or legitimate interests in respect of the
Disputed Domain Name because, inter alia, “Respondent has not been authorized or licensed by the
Complainant to use the [MARK’S] Trademark[] in any way, including in respect of the Disputed Domain
Name, and has no connection or affiliation with the Complainant”; “[t]here is no evidence that the
Respondent that registered the Disputed Domain Name as recent as April 2025, has become commonly

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known by such a name”; and “Respondent did not register the Disputed Domain Name until decades after the Complainant had begun using and promoting the Trademarks in association with its goods and services in Canada and as a result had created widespread recognition of the Trademarks.”

WIPO Overview 3.0, section 2.1, states: “[w]hile 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Panel finds that Complainant has established its prima facie case and without any evidence from
Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the

Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the complainant who is the owner of the trademark or service
mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s
documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the
domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a
corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii)
the registrant has registered the domain name primarily for the purpose of disrupting the business of a
competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for
commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of
confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the
registrant’s website or location or of a product or service on the registrant’s website or location. Policy,
paragraph 4(b).

As stated above, the Respondent is also the registrant of the domain name <marksonlineca.com>, which is the subject of WIPO Case No. D2025-2789 (in which this Panel has also been appointed). In that case, this Panel found bad faith under paragraph 4(b)(iv) of the Policy because the Respondent had used the domain name to “wrongfully attempt[] to pass itself off to Internet users and customers as being the Complainant

and/or affiliated with the Complainant” by displaying the MARK’S Trademark and “showing the same or
similar products that the Complainant sells in its stores and online such as clothing.” Accordingly, by also
registering the Disputed Domain Name, the Respondent “has engaged in a pattern of […] conduct” targeting
the Complainant, which constitutes bad faith pursuant to paragraph 4(b)(ii) of the Policy. See, e.g., Inter-
Continental Hotels Corporation v. James Alex, Design Factory, WIPO Case No. D2010-0974 (finding bad
faith where complainant alleged that “two domain names[…] indicate[] a ‘pattern’ of conduct by

Respondent”).

The Panel finds that the Complainant has established the third element of the Policy.

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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 <marksca.shop> be transferred to the Complainant.

/Douglas M. Isenberg/
Douglas M. Isenberg
Sole Panelist
Date: August 25, 2025