Averitt Express, Inc. v. DI
S.A. c/o Domain Admin
Claim Number: FA1006001332938
PARTIES
Complainant is Averitt Express, Inc (“Complainant”), represented by Travis
B.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <averitt.com>, registered with FABULOUS.COM
PTY
PANEL
The undersigned certify that they have acted independently and impartially
and to the best of their knowledge have no known conflict in serving as
Panelists in this proceeding.
Hon. Sir Ian Barker, Professor David Sorkin, Judge Daniel B. Banks, Jr
as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On July 8, 2010, the Forum served
the Complaint and all Annexes, including a Written Notice of the Complaint,
setting a deadline of July 28, 2010 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@averitt.com. Also on
A timely Response was received and determined to be complete on
Complainant submitted an Additional Submission on
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant is an operator of transportation services, including
pick-up and delivery of freight and cargo by land and air. It also provides air and ground
transportation services for passengers and cargo, aircraft charter services and
aircraft storage facilities. As a
The Complainant owns
The disputed domain name, which was first registered on September 1,
1996, is identical to the trademark AVERITT in which the Complainant has
rights.
The Respondent’s business is buying, selling, developing and monetizing
internet domain names with the goal of profit generation through resale.
A snapshot of the webshot accessed through the disputed domain name on
The Respondent has made no attempt to offer any services or register
the AVERITT mark with any authority. The
Respondent had no authorization from the Complainant to use its trademark in a
domain name.
The Respondent’s registration is in bad faith and is abusive and must
have been made with the knowledge and awareness of the Complainant and its
business. The registration was primarily
to block the Complainant’s use of the disputed domain name being a domain name
which incorporates a trademark over which the Complainant has rights.
The Respondent must also have known that its use of the disputed domain
name to attract a substantial number of users to the website who would confuse
them into thinking that the website was related to the Complainant. By placing erroneous links in this website,
the Respondent contributes to this misapprehension. So long as the disputed domain name is in the
Respondent’s hands the Complainant has no control, ownership or use.
B. Respondent
The Respondent, which operates in
The disputed domain name was acquired as one of a large portfolio. This particular domain name was acquired
because it consists of a short surname, suitable for various purposes, and
represents an investment in the Respondent’s portfolio of first and last name
domain names.
The disputed domain name was included in a purchase agreement dated
The administrative proceeding under the Policy began on or about
The screen shot taken by the Complainant on
The surname “Averitt” ranks in the top 25% of all surnames in the
The disputed domain name was first registered in 1996 and has been
continuously registered. The prior owner
was a lumber company which sold the disputed domain name to a third party. Since 2009 it was used in pay-per-click.
The Complainant has made no attempt to contact the Respondent who has
received no prior demands.
Investing in generic or descriptive domain names is a legitimate and bona fide business. The Respondent has not registered domain
names in order to profit unfairly from trademarks or other person’s rights.
The Respondent contests the assertion that the disputed domain name is
identical or confusingly similar to the Complainant’s marks because internet
users hearing the term Averitt would not be confused into thinking the name
refers to the Complainant or its services.
The Complainant has not proved that the Respondent has no rights or
legitimate interests in the disputed domain name. The prima
facie case standard only creates a presumption that will succeed only if uncontested. The Panel must resolve the issue on the basis
of all the evidence with the Complainant carrying the ultimate burden of proof.
The Respondent is using the disputed domain name in conjunction with a bona fide offering of goods and
services. A surname search on Google
shows 106,000 references to Averitt.
The Respondent was formed only 3 years ago but has collected several surname
domain names. Several were exhibited to the Response, although only <averitt.com> could be said to be
an Anglo-Saxon type of name. An
investment or speculation in generic or descriptive domain names without intent
to benefit unfairly from another’s trademark is legitimate under the Policy.
Before acquiring the disputed domain name, a European trademark search
was conducted by the Respondent which failed to show any trademark registrations. There is no requirement that the Respondent
needed authorization or a licence to register the disputed domain name
consisting of a generic term. The
Respondent is making a fair use of the disputed domain name without intent
misleadingly to divert customers.
The Respondent has not acted in bad faith. The parties are in different
jurisdictions. There is no evidence of
the fame of the Complainant’s mark outside of the
A search in both
The Respondent did not register the disputed domain name in order to
sell it to the Complainant or its competitors, nor to preclude the Complainant
from reflecting in its asserted marks the domain name. The Respondent did not register the disputed
domain name primarily for the purpose of disrupting the business of the
Complainant or to attract users by creating a likelihood of confusion. The Respondent should not have had
constructive knowledge of the Complainant’s mark because the Respondent had
never heard of it.
The purpose of the Policy is to provide a remedy against abuse of
domain names but it was not intended to preclude registration as a domain of a
term in a manner consistent with a generic or descriptive meaning.
The Respondent’s submissions were supported by a declaration made under
penalty by Frederik Schiwek, the General Manager of the Respondent who claimed
personal knowledge of the facts.
He confirmed that the disputed domain name was acquired as part of a
large portfolio by a contract dated
C. Additional Submissions of
Complainant
The Complainant has no way of disputing the Respondent’s assertions
about the timing of the acquisition by the Respondent of the disputed domain
name but submits that the Respondent’s argument is misleading and crafted in
order to justify deceptive advertising and infringement in bad faith. The Complainant rejects the Respondent’s submission
relating to its trademark rights and repeats the submission that the disputed
domain name is identical to the Complainant’s mark.
The Complainant rejects the Respondent’s assertion that the disputed
domain name is used in connection with a bona
fide offering of goods and services.
Averitt is the only surname listed of English derivation in the list of
domain names relating to alleged surnames proposed by the Respondent. Of these 14 domain names only 5 connect an
internet user with Respondent’s <lastname.com>, whilst 8 of the 15 are
being used in deceptive advertising hubs and are not connected with the
Respondent’s use.
In other words, the Respondent’s assertion that all its surname domains
are placed into service with relation to <lastname.com> is untrue and
provides a convenient excuse.
As to the contention that the website was blocked before the Respondent
could implement its use, that contention rings hollow in light of the fact that
8 of the remaining surname domain names are currently being used in deceptive
advertising sites. Therefore, the
Respondent had no intention of connecting the domain name to
<lastname.com>. The Respondent “…clearly uses the vehicle to legitimize its
pilfering of Averitt Express goodwill.”
As to the Respondent’s assertion about the Averitt generic surname, the
Respondent’s list points to the relative sparseness of persons in the
As to the assertion that the Respondent had no knowledge of the
Complainant before registering the disputed domain name because it is based in
In fact, had the Respondent searched “PublicProfiler” better, it would
have learnt that
It is likely that the Respondent acquired the disputed domain name with
the intent of profiting off the Complainant’s prior rights and the surname
domain name argument provides a convenient front. Whilst a trademark search of the United
States Patent and Trademark Office (“USPTO”) would have demonstrated the
Complainant’s rights to the trademark, such a search would not have been
necessary to determine the existence of such rights.
A Google search for the term Averitt provides the Respondent with
search results relating to the Complainant’s business. If the term “
Accordingly, it follows that the Respondent is using or intends to use
the disputed domain name in bad faith.
FINDINGS
(a) The disputed domain name is identical to
trademarks in which the Complainant has rights.
(b) The Complainant has not demonstrated that the
Respondent had both registered the disputed domain name in bad faith and is
using the disputed domain name in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
(2)
the
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.
The disputed domain name is identical to the Complainant’s
registered
The Complainant has satisfied the threshold
requirement of having the trademark rights.
The location of a registered trademark and of the goods and services for
which it is registered are irrelevant when finding rights in a mark. See
WIPO Overview of WIPO Panel Views on Selected UDRP Questions 1.1.
Accordingly, Paragraph 4(a)(i) of the Policy
is satisfied.
In view of the Panel’s finding on
registration and use in bad faith, it is unnecessary for the Panel to consider
this limb of the Complaint because the Complaint must fail for lack of proof
and registration and use in bad faith.
The onus of proving both registration and use
in bad faith is on the Complainant. The
Panel is required to look at the totality of the evidence.
The Panel takes into account the declaration
made under penalty by the General Manager of the Respondent, which states
categorically that the Respondent did not know of the Complainant at the time
it acquired the disputed domain name.
In some cases the fact that the Complainant
and the Respondent are located in different and distant jurisdictions does not provide
a defence to a claim of registration and use in bad faith. Those cases usually relate to domain names
which reflect trademarks which have a worldwide reputation. In the present case, the Complainant has
offered no evidence to show what outreach its services have outside of the
The Panel must accept the evidence of the
Respondent that it did not acquire the right to place content on the website
until
Mere suspicion from the Respondent’s conduct
in relation to other surname-type domain names is not sufficient proof that
there is actual use in bad faith. There
is no evidence of use at all.
The snapshot taken on June 24, 2010 shows a
website which was not then under the control of the Respondent but under the
control of the previous registrant who, it seems, represented to the Respondent
that none of the domain names being sold violated any rights. It is difficult to see how this
representation could have been made in view of the use of the Complainant’s
trademark and references to competitors on the website. However, that cannot be held to the account
of the Respondent.
Accordingly, the Panel considers that the
Complainant has failed to prove Paragraph 4(a)(iii) of the Policy. In other words, it has failed to prove that
the disputed domain name was registered in bad faith and is being used in bad
faith.
It is settled jurisprudence under the Policy
that, in the case of a transferred domain name, good faith, etc, must be
considered at the time of registration of the transfer. However, the Panel notes that this disputed
domain name was registered first in 1996.
There appears to have been abusive use of the domain name since that
time, and yet it has taken the Complainant 14 years to assert its rights. Whilst the equitable doctrine of laches does not apply to the Policy, one
might have thought that the Complainant might have taken action before now.
DECISION
The Panel concludes that relief shall be DENIED.
Hon. Sir
Dated: August 23, 2010
Professor David Sorkin & Judge
Daniel B. Banks, Jr
Panelist
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