United Parcel Service of America, Inc. v. Łukasz Kosiński / netd.pl
Claim Number: FA1908001856359
Complainant is United Parcel Service of America, Inc. (“Complainant”), represented by Sabina A. Vayner of Greenberg Traurig, LLP, Georgia, USA. Respondent is Łukasz Kosiński / netd.pl (“Respondent”), Pologne, Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is <coyote-sg.com>, registered with OVH sas.
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.
Fernando Triana, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 8, 2019; the Forum received payment on August 8, 2019.
On August 12, 2019, OVH sas confirmed by e-mail to the Forum that the disputed domain name <coyote-sg.com> is registered with OVH sas and that Respondent is the current registrant of the name. OVH sas has verified that Respondent is bound by the OVH sas 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 August 20, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 2019 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@coyote-sg.com. Also on August 20, 2019, 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.
A timely Response was received and determined to be complete on August 30, 2019.
An Additional Submission was received on September 4, 2019 and was filed in a timely manner according to the Forum's Supplemental Rule #7.
On September 4, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Fernando Triana, Esq., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
a. Complainant and its wholly-owned subsidiary, Coyote Logistics LLC, offer for sale and provide a variety of services and goods, including freight services, transportation, and logistics under the COYOTE mark.
b. Complainant has registered the trademark COYOTE with the United States Patent and Trademark Office (“USPTO”) in international classes 35 and 39: i) Registration No. 5,305,160 registered on December 5, 2017, first use in commerce: April 7, 2006; ii) Registration No. 4,221,250 registered on October 9, 2012, first use in commerce: November 7, 2011.
c. Complainant has registered the trademark COYOTE LOGISTICS with the United States Patent and Trademark Office (“USPTO”) in international classes 35 and 39: Registration No. 3,523,958 registered on October 28, 2008, first use in commerce: April 20, 2007.
d. Complainant has registered the trademark COYOTEGO with the United States Patent and Trademark Office (“USPTO”) in international classes 9 and 39: Registration No. 5,351,601 registered on December 5, 2017, first use in commerce: April 8, 2013.
e. Complainant has registered the trademark COYOTEHOWL with the United States Patent and Trademark Office (“USPTO”) in international classes 9 and 39: Registration No. 5,356,369 registered on December 12, 2017, first use in commerce: November 2, 2016.
f. Complainant owns the domain names <coyote.com> and <coyotelogistics.com>.
g. The disputed domain name <coyote-sg.com> completely incorporates Complainant’s trademarks COYOTE with the mere addition of the geographical indicator for Singapore: SG.
h. Respondent must have known Complainant’s trademarks when registering the disputed domain name as it is highly unlikely that Respondent would register a nearly-identical domain name (adding only a hyphen and the geographic country code abbreviation for Singapore) without first checking the availability of the domain name <coyote.com>.
i. Respondent’s knowledge of Complainant’s trademark can be observed on the font type and design use by Respondent in the website to which the disputed domain name resolves, which concords exactly with Complainant’s trademark registration and use.
j. The disputed domain name is confusingly similar to Complainant’s trademarks COYOTE, as it incorporates the trademarks, along with the geographic indicator “sg” (for “Singapore”), a hyphen, and a “.com” generic top-level domain (“gTLD”).
k. Respondent has no rights or legitimate interests in the disputed domain name <coyote-sg.com>.
l. Respondent is using the disputed domain name to unfairly promote its own business, creating confusion (due to the likeliness of the letter design and similar silhouette drawing of a coyote) to attract consumers.
m. Respondent’s use of the Infringing Domain Name to promote its own e-commerce business is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.
n. Respondent is not permitted or authorized to use Complainant’s trademarks.
o. Respondent is not commonly known by the disputed domain name.
p. Respondent registered and uses the disputed domain name <coyote-sg.com> in bad faith.
q. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name where it offers its own e-commerce services.
r. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the trademark COYOTE.
B. Respondent
a. Respondent operates an e-commerce company that is active in the sale of goods to businesses and consumers.
b. Respondent’s use of the disputed domain name does not infringe Complainant’s trademark rights.
c. Complainant’s trademark is registered for transportation and logistics services, while Respondent’s business is a trade business for the buying and selling of office, garden and home products.
d. Respondent has rights and legitimate interests in the disputed domain name <coyote-sg.com>.
e. The disputed domain name is related to the company name of the Respondent, “Coyote Internet Enterprise LLP.”
f. Respondent does not attempt to attract or divert Complainant’s customers.
g. Respondent did not register or use the disputed domain name <coyote-sg.com> in bad faith.
h. Respondent did not attempt to attract or divert Complainant’s users. Rather, users who seek logistic services from Complainant would not benefit Respondent in any way if redirect to the disputed domain name.
C. Complainant’s Additional Submissions
a. Respondent did not file a response to the Complaint as Respondent forwarded the response from Coyote Internet Enterprise who is not a party to the proceeding.
b. Respondent does not provide evidence supporting the assertion of operating the disputed domain name as an outsourcer.
c. Respondent did not dispute the similarity between the disputed domain name and the trademarks.
d. Respondent’s statements are entirely unsupported by evidence and the information provided by Respondent concerning the resolving website, does not correspond to the information that Complainant found and proved during the proceeding.
e. Respondent’s statements concerning the design of the logos are not true.
f. Respondent fails to provide evidence to show that it is actually offering any bona fide goods and services.
g. The website to which the disputed domain name resolves, is vague and its links redirect to email of other companies with no apparent relationship with Respondent.
1. Complainant owns the trademark COYOTE, COYOTE LOGISTICS, COYOTEGO, COYOTEHOWL in the United States of America, since before the disputed domain name was registered by Respondent.
2. Respondent was aware of Complainant’s rights in the trademark COYOTE, as Respondent uses the exact same font type in the website to which the disputed domain name resolves.
3. The disputed domain name incorporates Complainant’s trademark.
4. Complainant has never authorized, licensed or otherwise permitted Respondent to use the trademark COYOTE.
5. Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services.
With the Complaint, Complainant requested for the language of this administrative proceeding to be English pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Polish language Registration Agreement.
Paragraph 11 of the Rules estates that: “(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
Complainant arguments are:
1. Respondent is conversant in, and capable of understanding, English.
2. The active website to which the Infringing Domain Name resolves is written entirely in English.
3. The fact that the language of the Registration Agreement for the Infringing Domain Name is Polish does not preclude this proceeding from being conducted in English under the circumstances, particularly as Complainant is not proficient in Polish.
Moreover, Respondent file the Response in English, which allows the Panel to conclude that Complainants assertions concerning Respondent’s capability and proficiency in English are accurate.
Considering Complainant’s request for English to be the language governing this dispute, Respondent’s proven knowledge of the English language, and the discretion granted to the Panel by paragraph 11 of the Rules, this Panel determines English to be the language of this proceeding.
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.
This discussion, based on the evidentiary support submitted by the parties, will be developed as follows: First of all, the Panel will determine whether or not the disputed domain name is identical or confusingly similar to the trademark in which Complainant has rights. Secondly, the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain name; and finally, the Panel will establish whether or not the disputed domain name has been registered and is being used in bad faith by Respondent.
Complainant contends to be the owner of the trademark COYOTE LOGISTICS in the United States of America, since October 28, 2008 and the trademark COYOTE since December 5, 2017, which has been continuously used since 2006 to identify goods and services of international classes 9, 35 and 39.
a) Existence of a trademark or service mark in which Complainant has rights
Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in many jurisdictions of the world.
The worldwide accepted definition of a trademark involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.
However, the UDRP does not discriminate between registered and unregistered trademarks[i] and thus, it is well established that a Complainant does not require owning a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.
In this case, Complainant proved its rights in the trademark COYOTE (Annexes 7 to 11 of the Complaint).
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademark and the exclusive right to use them in connection with the stated goods. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive[ii].
Thus, Complainant established its rights in the trademark COYOTE[iii].
Respondent does not contest Complainant’s rights.
Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark COYOTE for purposes of Paragraph ¶ 4(a)(i) of the Policy.
b) Identity or confusing similarity between the Disputed Domain Name and Complainant’s trademark
Complainant alleges that the disputed domain reproduces entirely the trademark COYOTE.
On the first place, before establishing whether or not the disputed domain name <coyote-sg.com> is confusingly similar to Complainant’s trademark COYOTE, the Panel wants to point out that the addition of generic top-level domain (“gTLD”), i.e., “.com,” “.biz,” “.edu,” “.org”, cannot be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark[iv].
UDRP Panels have unanimously accepted that the inclusion of the “.com” (gTLD), in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000), the Panel stated that:
“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.”
Furthermore, the Panel considers that the reproduction of the trademark COYOTE, by the disputed domain name <coyote-sg.com>, is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark[v], mainly since the disputed domain name reproduces entirely Complainant’s trademark without any other distinctive elements. Consequently, consumers will assume that the owner of the disputed domain name is Complainant. Thus, by registering the disputed domain name, Respondent creates a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the domain names.
In addition, the Panel agrees with the Complainant on the conclusion that including the term “sg” is not sufficient to make the disputed domain name different from the trademark COYOTE.
In fact, “sg” is the geographical indicator for Singapore, thus it is a descriptive element. Considering Complainant’s worldwide presence, the disputed domain name is likely to be understood by consumers as a Singapore division of Complainant’s business. Respondent merely adds a descriptive expression “sg” to the distinctive trademark COYOTE. This addition rather than distinguishing the disputed domain name from Complainant’s trademark makes it confusingly similar to the trademark. Hence, the disputed domain name should be deemed as confusingly similar to the registered trademark[vi].
In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademark and thus, the requirement set forth in Paragraph ¶ 4(a)(i) of the Policy is duly complied with.
a) Prima Facie Case.
Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of Respondent[vii].
In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:
“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.
Therefore, a Complainant is required to make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests[viii]. If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name <coyote-sg.com> because of the following: i) Respondent is not permitted or authorized to use Complainant’s trademarks; ii) Respondent is not commonly known by the disputed domain name; iii) Respondent’s use of the Infringing Domain Name to promote its own e-commerce business is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name; and iv) Respondent is using the disputed domain name to unfairly promote its own business, creating confusion (due to the likeliness of the letter design and similar silhouette drawing of a coyote) to attract consumers.
The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.
b) Respondent’s rights or legitimate interests in the disputed Domain Name.
Paragraph 4(c) of the Policy includes an enunciative listing of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent 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.
Respondent states that, Respondent has rights and legitimate interests in the disputed domain names as COYOTE is Respondent’s company name i.e. COYOTE INTERNET ENTERPRISE LLP., and Respondent’s business is a trade business consisting of buying and selling office, garden and home products.
However, Respondent does not provide any evidence to support its claims.
Moreover, Complainant shows how Respondent has used the same font type and a very similar design of a coyote in the website to which the disputed domain name resolves.
Given the above, the Panel considers the following:
1. Respondent did not provide any evidence concerning use or demonstrable preparations to use the disputed domain name.
2. The use of the disputed domain name proved by Complainant, cannot be qualified as bona fide offering of goods or services as the reproduction of the font type and the inclusion of a similar coyote silhouette, clearly intended to mislead consumers.
3. It is not possible to legitimate any deceiving conduct as a bona fide offering of goods or services.
4. Respondent did not provide any evidence to support its statements concerning the alleged activity performed with the disputed domain name.
5. Respondent use of Complainant’s trademark as part of the disputed domain name also misleads visitors into thinking that Complainant is somehow connected to Respondent.
6. Moreover, there is no evidence to support that Respondent is and/or has been commonly known by the disputed domain name. The mere assertion within the Response is not enough for the Panel to be convinced that Respondent acts on behalf of COYOTE INTERNET ENTERPRISE LLP.
7. Finally, Respondent is not 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, since the use of the same font type and coyote silhouette is misleading and Respondent’s use of Complainant’s trademark as part of the disputed domain name also misleads visitors into thinking that Complainant is somehow connected to Respondent.
This Panel believes that Respondent failed to prove his rights or legitimate interests in the disputed domain names.
Furthermore, Respondent never explained the reason for choosing the expression COYOTE to be part of its domain name.
Consequently, Respondent knew or should have known of Complainant’s trademarks COYOTE since Complainant’s trademarks are included in the resolving website. Yet Respondent incorporated said trademarks in the disputed domain name. Thus, Respondent used the trademarks COYOTE to create a likelihood of confusion aimed to divert consumers to Respondent’s offered services.
Therefore, the second requirement of paragraph 4(c) of the Policy is met.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has 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 Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent 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 Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.
Complainant asserts that Respondent registered the disputed domain name in bad faith, since Respondent knew or should have known of the trademark COYOTE[ix].
The Panel agrees with Complainant. The fact that Respondent chose the word “COYOTE” to make up the disputed domain name is, in this Panel’s view evidence per se of bad faith. The Panel finds this selection was deliberate and not product of chance since the logo use in the resolving websites corresponds completely to Complainant’s font type.
Respondent simply could not have been unaware of Complainant’s rights. Thus, the Panel finds Respondent deliberately took someone else’s trademark to register a domain name and to create a business around it.
Thus, this Panel considers that the mere fact of knowingly incorporating a third-party’s trademark in a domain name constitutes registration in bad faith[x]. See Compagnie Générale des Etablissements Michelin v. Above.com Domain Privacy / Direct Navigation Data Inc., WIPO Case No. D2012-1448, where the panel found: “The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.
In addition, the Panel considers that Respondent must have known that the word “coyote” within the disputed domain name would attract Internet users seeking Complainant’s trademark, to the website from which expected to earn money. Thus, Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with Complainant’s mark.
Furthermore, Respondent intentionally attempted to attract, for commercial gain, Internet users to its website due to the inclusion of Complainant’s trademark in the disputed domain name and its design in the website. Hence, consumers would not able to differentiate the source of origin, creating a likelihood of confusion with Complainant’s mark and making consumers believe there was a relationship of sponsorship, affiliation, or endorsement between Complainant and Respondent, is indicative of bad faith registration and use pursuant to Policy ¶ 4(b).
Finally, the incorporation of Complainant’s trademark in the disputed domain name and the use of Complainant’s trademarks within the website can to disrupt Complainant’s business, which is indicative of bad faith registration and use pursuant to Policy ¶ 4(b).
Therefore, the three elements of the Policy ¶ 4 are satisfied in the present case in respect to Respondent of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coyote-sg.com> domain name be TRANSFERRED from Respondent to Complainant.
Fernando Triana, Esq., Panelist
Dated: September 13, 2019
[i] See MatchNet PLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO March 23, 2000).
[ii] See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO May 5, 2002).
[iii] See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Royal Bank of Scot. Group plc & Nat. Westminster Bank plc v. Soloviov, FA 787983 (Forum Nov. 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i)”.); see also Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world”).
[iv] See Altec Industries, Inc. v. I 80 Equipment, FA 1437753 (Forum May 18, 2012).
[v] See ER Marks, Inc. and QVC, Inc. v. Hansmann, FA 1381755 (Forum May 6, 2011); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).
[vi] See Forest Laboratories, Inc. v. candrug, D2008-0382 (WIPO April 24, 2008) (“when a respondent merely adds generic or descriptive terms to a distinctive trademark, the domain name should be considered confusingly similar to the registered trademark”.); see also Bayer Aktiengesellschaft v. Monseen, D2003-0275 (WIPO May 30, 2003).
[vii] See Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyProtect.org, D2012-0875 (WIPO June 7, 2012); see also F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Servs., D2012-0474 (WIPO April 24, 2012).
[viii] See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 1, 2000).
[ix] See F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services, WIPO Case No. D2012-0474.
[x] See F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services, supra.
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