Marucci Sports, LLC v tu hu

WIPO Case No. D2025-0105

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Marucci Sports, LLC v. tu hu

Case No. D2025-0105

1. The Parties

The Complainant is Marucci Sports, LLC, United States of America (“United States”), represented by Jones

Walker LLP, United States.

The Respondent is tu hu, United States.

2. The Domain Name and Registrar

The disputed domain name <maruccibaseballgearhub.shop> (the “Disputed Domain Name”) is registered with Sav.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2025. On January 13, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 13, 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 January 14, 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 amendment to the Complaint on January 20, 2025.

The Center verified that the Complaint together with the amendment to the 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 January 21, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 10, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 11, 2025.

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The Center appointed Lynda M. Braun as the sole panelist in this matter on February 13, 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 manufacturer and developer of baseball bats, baseball gloves, and other baseball equipment and baseball-related accessories. For the last 22 years, baseball equipment bearing the MARUCCI trademark has been distributed throughout the United States, as well as in jurisdictions worldwide.

The Complainant is the owner of the following trademark registrations through the United States Patent and Trademark Office (“USPTO”): MARUCCI, United States Registration No. 3,957,838, registered on May 10, 2011, with a date of first use in commerce of September 28, 2001, in International Class 28; and MARUCCI,

United States Registration No. 5,155,640, registered on March 27, 2017, with a first use in commerce of

June 11, 2002, in International Class 28 (hereinafter collectively referred to as the “MARUCCI Mark”).

The Complainant owns the domain name <maruccisports.com>, which resolves to its official website at
“

The Disputed Domain Name was registered on July 13, 2024, and resolves to a website which promotes and sells unauthorized baseball equipment bearing the MARUCCI Mark.

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 Complainant’s MARUCCI Mark because the and “hub”, and then followed by the generic Top-Level Domain (“gTLD”) “.shop”, which do not prevent a finding of confusing similarity;

- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because,
among other things, the Complainant has not authorized the Respondent to register a domain name
containing the MARUCCI Mark, and the Respondent has never been commonly known by the Disputed

Domain Name; and

- the Disputed Domain Name was registered and is being used in bad faith because, among other things, the
Respondent uses the Disputed Domain Name to feature goods on its website identical to the goods sold by
the Complainant on its official website for the purpose of deceiving unsuspecting consumers, and the

Respondent must have been aware of the MARUCCI Mark when it registered the Disputed Domain Name.

B. Respondent

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

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6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii)       the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii)      the Disputed Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold inquiry: a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark. The Panel concludes that in the present case, the Disputed Domain Name is confusingly similar to the MARUCCI Mark as explained below.

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. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

It is uncontroverted that the Complainant has established rights in the MARUCCI Mark based on its years of use as well as its registered trademarks for the MARUCCI Mark for baseball equipment in the United States. The consensus view of panels is that “[w]here the complainant holds a nationally or regionally registered

trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for
purposes of standing to file a UDRP case”. See WIPO Overview 3.0, section 1.2.1. Therefore, the Panel

finds that the Complainant has rights in the MARUCCI Mark.

The Disputed Domain Name consists of the Complainant’s registered MARUCCI Mark in its entirety followed
by the terms “baseball”, “gear”, and “hub”, and then followed by the gTLD “.shop”. The test for confusing
similarity involves a side-by-side comparison of the domain name and the textual components of the relevant
trademark to assess whether the mark is recognizable within the disputed domain name. Here, the
MARUCCI Mark is recognizable within the Disputed Domain Name. As stated 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”. Thus, the addition of the terms “baseball”,
“gear”, and “hub” to the Complainant’s MARUCCI Mark in the Disputed Domain Name does not prevent a
finding of confusing similarity. See e.g., Allianz Global Investors of America, L.P. and Pacific Investment
Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; and Hoffmann-La Roche

Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.

Finally, the addition of a gTLD such as “.shop” in a domain name is a technical requirement. As such, it is
well established that a gTLD may typically be disregarded when assessing whether a disputed domain name
is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO
Case No. D2012-0182 and WIPO Overview 3.0, section 1.11.1. Thus, the Panel finds that the Disputed

Domain Name is confusingly similar to the Complainant’s MARUCCI Mark.

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

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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. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving that a respondent lacks rights or

legitimate interests in a domain name may result in the difficult 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 (although the burden of proof always remains on the
complainant). 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.

In this case, given the facts as set out above, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its MARUCCI Mark. Nor does the Complainant have any type of business relationship with the Respondent. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any similar name, nor any evidence that the Respondent was using or making demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. See Policy, paragraph 4(c).

The Disputed Domain Name resolves to a website displaying and selling unauthorized baseball equipment bearing the MARUCCI Mark, and thus, the Respondent does not have rights or legitimate interests in the Disputed Domain Name. When Internet users arrive at the Respondent’s website, they will find a site in which the Respondent attempts to pass off as the Complainant, purportedly offering (potentially counterfeit) products to customers, including products bearing the trademarks of well-known third parties, which products compete with those offered by the Complainant on its official website. The Panel thus determines that the Respondent is not making a bona fide offering of goods nor a legitimate noncommercial or fair use of the Disputed Domain Name but rather is using the Disputed Domain Name for commercial gain with the intent to mislead the Complainant’s customers into believing that they had arrived at the Complainant’s website. The Panel also determines that the use of the Disputed Domain Name to pass off as the Complainant to offer competing or potentially counterfeit goods does not confer rights or legitimate interests on the Respondent. See WIPO Overview 3.0, section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods […] impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”).

In sum, the Panel finds that the Complainant has established an unrebutted prima facie case that the

Respondent lacks rights or legitimate interests in the Disputed Domain Name.

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

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

The Panel finds that based on the record, the Complainant has demonstrated the existence of the
Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of
the Policy. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate
that a domain name was registered and used in bad faith, but other circumstances may be relevant in
assessing whether a respondent’s registration and use of a domain name is in bad faith.
WIPO Overview 3.0, section 3.2.1.

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Panels have held that the use of a domain name for illegitimate activity, here, at least passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the Disputed Domain Name constitutes bad faith under the Policy due to the Respondent’s passing off of the Complainant to offer competing or counterfeit goods to unwitting customers.

The Respondent attempted to pass off as the Complainant by creating a similar website offering faith may be made where the respondent ‘knew or should have known’ of the registration and/or use of the trademark prior to registering the domain name”). In this regard, the fact that the Respondent featured goods bearing the MARUCCI Mark on its website also indicates that the Respondent was aware of the Complainant and its branded goods. Rather, the Panel notes that the composition of the Disputed Domain Name, together with its use, affirms the Respondent’s intention to take unfair advantage of the likelihood of confusion between the Disputed Domain Name and the Complainant as to the origin or affiliation of the website at the resolving Disputed Domain Name. In sum, the Panel finds that the Respondent had the Complainant’s MARUCCI Mark in mind when registering the Disputed Domain Name, another example of bad faith.

MARUCCI-branded products, demonstrating bad faith. Therefore, it strains credulity to believe that the
Respondent had not known of the Complainant or its MARUCCI Mark when registering the Disputed Domain

The use of a domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location for commercial gain demonstrates registration and use in bad faith. Here, the Respondent’s registration and use of the Disputed Domain Name indicates that such registration and use had been done for the specific purpose of trading upon and targeting the name, mark, and goodwill of the Complainant. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”).

Moreover, the Panel concludes that the Respondent’s registration of the Disputed Domain Name was an attempt to disrupt the Complainant’s business. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. The Respondent’s use of the Disputed Domain Name was also likely to

confuse Internet users into incorrectly believing that the Respondent was authorized by or affiliated with the

Complainant.

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

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 <maruccibaseballgearhub.shop> be transferred to the Complainant.

/Lynda M. Braun/
Lynda M. Braun
Sole Panelist
Date: February 27, 2025