XPO Logistics, Inc. v. FakeBills / Michael Mbah
Claim Number: FA2206002000464
Complainant is XPO Logistics, Inc. (“Complainant”), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, New York, USA. Respondent is FakeBills / Michael Mbah (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xpofreightlogistics.com>, registered with NameSilo, LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 15, 2022; the Forum received payment on June 15, 2022.
On June 15, 2022, NameSilo, LLC confirmed by e-mail to the Forum that the <xpofreightlogistics.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 June 16, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 2022 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@xpofreightlogistics.com. Also on June 16, 2022, 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 July 12, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is a provider of transportation and logistics solutions. Since 2011, Complainant has delivered customized transportation solutions to the most successful companies in the world using massive capacity and cutting-edge technology. Complainant’s services are primarily focused on what is known as (i) Less-Than-Truckload (LTL), a shipping service for relatively small loads or quantities of freight, and (ii) Truck Brokerage, a service that connects independent road carriers with companies that need to ship materials, parts, or finished goods. Currently, Complainant is the second largest freight broker worldwide with approximately 98,000 registered carriers globally and among the top three LTL providers in North America with approximately 7,900 tractors and 25,800 trailers. Complainant has been recognized as one of the largest and most-watched transportation companies in the world. Since 2016, Complainant has been included in the Fortune 500 list of the largest U.S. corporations based on revenue and in 2021 ranked 190th on the Fortune 500 list. Complainant has also been listed amongst the top performing US companies (No. 1184) in the Forbes Global 2000 Report for 2021. Complainant has rights in the XPO and XPO LOGISTICS marks through their registration in the United States in, respectively, 2014 and 2012.
Complainant alleges that the disputed domain name is identical or confusingly similar to its XPO and XPO LOGISTICS marks as it incorporates the marks in their entirely, merely adding one or both of the generic/descriptive terms “freight” and “logistics” along with the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent lacks rights and legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name and is neither an authorized user nor licensee of the XPO LOGISTICS mark. Additionally, Respondent does not use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass itself off as Complainant to conduct a fraudulent invoicing scheme to obtain commercial gain.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. First, Respondent uses the disputed domain name to pass itself off as Complainant primarily for the purpose of attracting commercial gain through a fraudulent invoicing scheme. Complainant also contends that Respondent’s provided false or misleading contact information to the WHOIS database, along with initially concealing its identity through a privacy service. Finally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the XPO LOGISTICS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the marks XPO and XPO LOGISTICS and them to provide logistics and transportation services.
Complainant’s rights in its marks date back to at least 2014 and 2012, respectively.
The disputed domain name was registered in 2021.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The resolving website mimics Complainant’s legitimate website (displaying Complainant’s XPO mark and logo); Respondent issued fraudulent invoices that included references to the disputed domain name.
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.
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”).
The disputed domain names incorporate Complainant’s XPO and XPO LOGISTICS marks in their entirely, merely adding one or both of the generic/descriptive terms “freight” and “logistics” along with the “.com” generic top-level domain (“gTLD”). Merely adding generic terms and a gTLD does not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). Thus the Panel finds that the <xpofreightlogistics.com> domain name is confusingly similar to Complainant’s XPO and XPO LOGISTICS marks under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its marks. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), Panels may look to relevant WHOIS information to determine whether a Respondent is commonly known by an infringing domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, the WHOIS information of record identifies “FakeBills / Michael Mbah” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name to pass itself off as Complainant for commercial gain through a fraudulent invoicing scheme: Complainant presents evidence showing that the resolving website mimics Complainant’s legitimate website, and it presents fraudulent invoices from Respondent. Past Panels have found that passing off as a trademark holder does not qualify as either a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”); see also Ranbaxy Laboratories Inc. v. Johnny Carpela, FA0810001231644 (Forum Dec. 10, 2008) (finding that a website which fraudulently purported to be a reference site for a brand name medication was not bona fide or legitimate.); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA95407 (Forum Sept. 27, 2000) (“[U]nauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”). The Panel therefore finds that Respondent fails to use the disputed domain name to make a bona fide offer of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to pass itself off as Complainant in furtherance of a fraudulent invoicing scheme. Passing off in furtherance of a fraudulent scheme may demonstrate both bad faith disruption and attraction to commercial gain within the meaning of Policy ¶¶ 4(b)(iii) and (iv). See United Parcel Service of America, Inc. v. Jamie Hans FA1901001826973 (Forum Feb. 25, 2019) (“Respondent registered two domain names that combine Complainant's well-known mark with generic terms relating to Complainant's business, and is using them to impersonate Complainant, presumably for fraudulent purposes. Such conduct is indicative of bad faith registration and use under the Policy.”); see also Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). Therefore the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and/or (iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website mimics Complainant’s legitimate website, displaying Complainant’s XPO mark and logo. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also 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 Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith 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 <xpofreightlogistics.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: July 12, 2022
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