YRC Worldwide Inc. v. Dan Knudtson / Dan Knudtson
Claim Number: FA2002001885773
Complainant is YRC Worldwide Inc. (“Complainant”), represented by Barnes & Thornburg LLP, United States. Respondent is Dan Knudtson / Dan Knudtson (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hnrylogistic.com> and <hnryslogistics.com>, registered with Tucows Domains Inc. (collectively, the “Disputed Domain Names”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 26, 2020; the Forum received payment on February 26, 2020.
On February 26, 2020, Tucows Domains Inc. confirmed by e-mail to the Forum that the <hnrylogistic.com> and <hnryslogistics.com> Disputed Domain Names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the Disputed Domain Names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 March 5, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 2020 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@hnrylogistic.com, postmaster@hnryslogistics.com. Also on March 5, 2020, 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 March 30, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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.
Complainant requests that the Disputed Domain Names be transferred from Respondent to Complainant.
A. Complainant
Complainant, YRC Worldwide Inc, is in the business of providing warehousing services such as storage, distribution, and packing. Complainant has rights in the HNRY LOGISTICS mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,908,961, registered Nov. 12, 2019) (hereinafter referred to as the “HNRY LOGISTICS Mark”). Respondent’s <hnrylogistic.com> and <hnryslogistics.com> Disputed Domain Names are nearly identical variants of Complainant’s mark and adds a generic top-level domain (“gTLD”) to create a domain name.
According to Complainant, Respondent lacks rights or legitimate interests in the Disputed Domain Names. Respondent is not authorized to use the Complainant’s mark and is not commonly known by the Disputed Domain Names. Respondent fails to use the Disputed Domain Names in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent fails to make any active use the Disputed Domain Names. In addition, Respondent uses the Disputed Domain Names to masquerade as Complainant and fraudulently sell goods.
Further, says Complainant, Respondent registered and uses the Disputed Domain Names in bad faith. Respondent uses the Disputed Domain Names to impersonate Complainant in a fraudulent e-mail phishing scheme. Respondent attracts users for commercial gain through fraudulent email solicitations. Additionally, Respondent passively holds the Disputed Domain Names. Finally, Respondent should have been aware of Complainant’s rights in the HNRY LOGISTICS Mark based on the circumstances.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights in the HNRY LOGISTICS Mark. The Disputed Domain Names are confusingly similar to Complainant’s HNRY LOGISTICS Mark. Further, Complainant has established that Respondent lacks rights or legitimate interests in the use of the Disputed Domain Names and that Respondent registered and is using the Disputed Domain Names in bad faith.
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 Disputed Domain Names registered by Respondent are 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 Disputed Domain Names; and
(3) the Disputed Domain Names have been registered and are 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”).
Complainant asserts rights in the HNRY LOGISTICS Mark based upon registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 5,908,961, registered Nov. 12, 2019). Therefore, the Panel may find that Complainant has rights in the HNRY LOGISTICS Mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <hnrylogistic.com> and <hnryslogistics.com> Disputed Domain Names are nearly identical variants of Complainant’s mark that merely add a gTLD. Slight variations to a mark caused by addition and/or deletion of letters and addition of a gTLD are generally insufficient to overcome confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). An addition of an extra letter and a gTLD is not sufficient to distinguish a disputed domain name for purposes of Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). See also Western Alliance Bancorporation v. James Brandon, FA 1783001 (Forum June 5, 2018) (“Respondent’s <westernalliancebcorporation.info> domain name is confusingly similar to Complainant’s WESTERN ALLIANCE BANCORPORATION mark because it merely appends the gTLD ‘.info’ to a misspelled version of Complainant’s mark.”). Here, the <hnrylogistic.com> Disputed Domain Name incorporates the mark in its entirety, removes the letter ”s”, and adds the “.com” gTLD. The <hnryslogistics.com> Disputed Domain Name incorporates the mark in its entirety and adds the “.com” gTLD.
The Disputed Domain Names are identical and/or confusingly similar to the HNRY LOGISTICS mark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
Complainant argues that Respondent does not have rights or legitimate interests in the <hnrylogistic.com> and <hnryslogistics.com> Disputed Domain Names because Respondent is not commonly known by the Disputed Domain Names and is not authorized or permitted to use Complainant’s HNRY LOGISTICS Mark. Where a response is lacking, WhoIS information and lack of authorization can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The WhoIS information of record lists the registrant as “Dan Knudson,” and Complainant contends that it did not authorize Respondent’s use of the HNRY LOGISTICS Mark. Therefore, the Panel finds that Respondent is not commonly known by the Disputed Domain Names under Policy ¶ 4(c)(ii).
Additionally, Complainant claims that Respondent fails to use the Disputed Domain Names in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent fails to make any active use the Disputed Domain Names. Failure to make active use of a domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant provides a screenshot of the Disputed Domain Names, which resolves to an error message. The Panel finds that this use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant also argues that Respondent’s use of the Disputed Domain Names to masquerade as Complainant and fraudulently sell goods is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Use of a domain name to pass off as a complainant through emails is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”). Here, Complainant claims that Respondent uses the Disputed Domain Names to masquerade as Complainant’s employee through emails to Complainant’s potential business partners in furtherance of a phishing scam. Complainant provides copies of the fraudulent emails sent to a third-party company.
Therefore, the Panel finds that Respondent’s use of the Disputed Domain Names indicates that it lacks rights and legitimate interests in the Disputed Domain Names per Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered and is using the Disputed Domain Names in bad faith because Respondent attracts users for commercial gain through fraudulent email solicitation. Use of a disputed domain name to capitalize on a complainant’s reputation for commercial gain is evidence of bad faith under Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Complainant claims that Respondent masquerades as Complainant to fraudulently solicit warehousing contracts from third-party businesses. Complainant provides copies of Respondent’s emails as an example of Respondent’s bad faith activity. Therefore, the Panel finds that Respondent registered and is using the Disputed Domain Names in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant claims that Respondent should have been aware of Complainant’s rights in the HNRY LOGISTICS mark based on the circumstances. While constructive knowledge is insufficient, actual knowledge of a complainant’s rights in a mark is sufficient for a finding of bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Actual knowledge can be shown by a respondent’s use of a domain name to pass off as a complainant. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). The Panel finds that Respondent should have been aware of Complainant’s rights in the HNRY LOGISTICS Mark based on the similarities between Respondent’s Disputed Domain Names and Complainant’s mark and domain names.
Accordingly, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hnrylogistic.com> and <hnryslogistics.com> Disputed Domain Names be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: April 10, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page