Mark's Work Wearhouse Ltd. v lu sha

WIPO Case No. D2025-2215

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Mark’s Work Wearhouse Ltd. v. lu sha

Case No. D2025-2215

1. The Parties

The Complainant is Mark’s Work Wearhouse Ltd., Canada, represented by Gowling WLG (Canada) LLP,

Canada.

The Respondent is lu sha, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <marksworkwearhouse.shop> 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 June 5, 2025. On June 6, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 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 June 20, 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 June 25, 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 June 26, 2025. In accordance with the Rules, paragraph 5, the due date for Response was July 16, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2025.

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The Center appointed Peter Burgstaller as the sole panelist in this matter on July 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 is a member of the Canadian Tire Group of Companies; it offers clothing and footwear specializing in both casual and industrial wear in more than 380 stores and online through its website under the domain name <marks.com> (Annex 2 - 5 to the Complaint).

The Complainant has a strong Internet presence on the social media platforms Facebook, X, Instagram and

YouTube (Annex 6 to the Complaint).

The Complainant owns numerous trademark registrations consisting of the mark MARK’S WORK

WEARHOUSE or MARK’S, inter alia:

- Canadian trademark registration for MARK’S WORK WEARHOUSE (word), Reg. No. TMA248,049,
registered on June 11, 1980;

- Canadian trademark registration for MARK’S WORK WEARHOUSE (word), Reg. No. TMA677,424,
registered on November 21, 2006;

- United States trademark registration for MARK’S WORK WEARHOUSE (word), Reg. No. 6,709,236,
registered on April 26, 2022; and

- Canadian trademark registration for MARK’S (word), Reg. No TMA823,396, registered on May 4,
2012;

The disputed domain name was registered on April 26, 2025 (Annex 1 to the Complaint). At the time of filing the Complaint, the disputed domain name resolved to a website offering clothing items (dresses, sweater, cardigan, autumn fashion and new arrivals) payable especially in CA dollars and US dollars (Annex 9 to the Complaint).

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 MARK’S WORK WEARHOUSE and MARK’S trademarks are well known in the field of clothing since many years. The Complainant notes that the disputed domain name contains the MARK’S WORK WEARHOUSE and MARK’S trademarks in its entirety, simply omitting the apostrophe in the sign MARK’S and adding the Top Level-Domain “shop”. Hence, the disputed domain name is at least confusingly similar to the Complainant’s trademarks.

The Complainant asserted that it has never assigned, granted, licensed, sold, transferred, or in any way authorized the Respondent to register or use its trademarks in any manner and the Complainant is not commonly known under the disputed domain name – it is to the contrary: The Respondent’s business appears to be known as “Puhuozhan1111” and the website and online store hosted at the disputed domain name selling clothing is apparently known as “dollargenearsale”. Therefore, there is no right or legitimate reason for the Respondent to use the disputed domain name featuring the Complainant’s MARK’S WORK WEARHOUSE trademark, other than to cause confusion about whether the Respondent’s website is affiliated with the Complainant and its clothing retailer business.

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The Complainant further notes that the disputed domain name is actively used by resolving to a website where clothing was offered; it is therefore clear for the Complainant, that the disputed domain name has been acquired by the Respondent for the express purpose of attempting to attract Internet users through the

choice of the disputed domain name and redirect traffic to its own online clothing retail website which
constitutes bad faith registration and use under the Policy.

Hence, the Complainant contends, that based on the totality of these factors, it is clear that the Respondent is acting in bad faith with the intent to create a likelihood of confusion with the Complainant’s mark and legitimate e-commerce website.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i)        the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii)       the Respondent has no rights or legitimate interests with respect to the disputed domain name; and

(iii)      the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0“), section 1.7.

The Complainant submitted evidence, which incontestably and conclusively establishes rights in the marks

MARK’S WORK WEARHOUSE and MARK’S.

In the present case the disputed domain name is highly confusingly similar to the MARK’S WORK only omits the apostrophe in the mark MARK’S.

It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name, the mere omission of a letter or sign will not prevent a finding of confusing similarity under the first element of the Policy (WIPO Overview 3.0, section 1.8). This is the case at present.

Finally, it has also long been held that generic Top Level-Domains (“gTLDs”) (in this case “.shop”) are
generally disregarded when evaluating the confusing similarity of a disputed domain name. WIPO Overview

3.0, section 1.11.1.

Based on the available record, the Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible

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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. WIPO Overview 3.0, section 2.1.

Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant focuses on the fact that its trademark is well known and provides suitable evidence of its reputation, adding that it is inconceivable that the Respondent would not have been aware of this when registering the disputed domain name. The Complainant also notes that the disputed domain name is not being used for a bona fide offering of goods or services, it rather resolves to a website with competing products to those offered by the Complainant.

The nature of the disputed domain name, comprising the Complainant’s mark in its entirety, cannot be considered fair use as these, in the Panel’s view, signal the Respondent’s intention to confuse users seeking or expecting the Complainant and its company and clothing items.

The Respondent did not reply to the Complainant’s contentions and hence has not rebutted the

Complainant’s prima facie showing.

Based on the available record, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

As stated in many decisions rendered under the Policy both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainant must show that:

- the disputed domain name was registered by the Respondent in bad faith; and

- the disputed domain name is being used by the Respondent in bad faith.

The Complainant has established rights in the registered trademarks MARK’S WORK WEARHOUSE and
MARK’S, long before the registration of the disputed domain name. Further, the trademark MARK’S WORK
WEARHOUSE is distinctive and well known in the field of clothing items.

It is therefore inconceivable for this Panel that the Respondent has registered and used the disputed domain name without knowledge of the Complainant’s rights, which leads to the necessary inference of bad faith. This finding is supported by the fact that the disputed domain name entirely incorporates the Complainant’s well known trademark.

Finally, the disputed domain name uses the gTLD “.shop” which also strongly indicates that the Respondent was aware of the Complainant’s online business/shop at the time of registration of the disputed domain name.

All of these facts indicate that the Respondent must have been aware of the Complainant’s business and trademark when registering the disputed domain name.

Therefore, the Panel is convinced that the disputed domain name was registered in bad faith by the
Respondent.

Moreover, the Complainant put forward evidence that the disputed domain name resolved to a website where the Respondent offered products similar to those offered by the Complainant in stores and on its website under the domain name <marks.com>.

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In doing so, the Respondent has intentionally attempted to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its website according to paragraph 4(b)(iv) of the Policy which constitutes bad faith registration and use of the disputed domain name.

Based on the available record, the Panel finds that the Complainant has established the third element of the

Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <marksworkwearhouse.shop> be transferred to the Complainant.

/Peter Burgstaller/
Peter Burgstaller
Sole Panelist
Date: July 29, 2025