YRC Worldwide Inc. v. John Mendoza
Claim Number: FA1211001473436
Complainant is YRC Worldwide Inc. (“Complainant”), represented by Patrick J. Gallagher of Fulbright & Jaworski L.L.P., Minnesota, USA. Respondent is John Mendoza (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yrcworld.com>, registered with HOSTOPIA.COM INC. d/b/a APLUS.NET.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 28, 2012; the National Arbitration Forum received payment on November 29, 2012.
On November 30, 2012, HOSTOPIA.COM INC. D/B/A APLUS.NET confirmed by e-mail to the National Arbitration Forum that the <yrcworld.com> domain name is registered with HOSTOPIA.COM INC. D/B/A APLUS.NET and that Respondent is the current registrant of the name. HOSTOPIA.COM INC. D/B/A APLUS.NET has verified that Respondent is bound by the HOSTOPIA.COM INC. D/B/A APLUS.NET 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 November 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 2012 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@yrcworld.com. Also on November 30, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <yrcworld.com> domain name is confusingly similar to Complainant’s YRC mark.
2. Respondent does not have any rights or legitimate interests in the < yrcworld.com> domain name.
3. Respondent registered or used the <yrcworld.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant, YRC Worldwide Inc., is a business in connection with domestic and international common carrier freight transportation by means of truck, air, or sea, and domestic and international freight forwarding services; business management services, namely, managing logistics, reverse logistics, supply chain services, supply chain visibility and synchronization, supply and demand forecasting and product distribution processes for others; providing electronic tracking of freight information to others; arranging for pickup, delivery, storage and transportation of documents, packages, freight and parcels via ground and air carriers; and other related services. Complainant has registered and is using the domain names <yrc.com>, <yrcworldwide.com> and <yrcw.com>.
2. Complainant owns and shows evidence of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the YRC mark (Reg. No. 3,272,882, registered July 31, 2007), for the YRC WORLDWIDE mark (e.g., Reg. No. 3,174,011, registered November 21, 2006), and for the YRCW mark (Reg. No. 3,393,133, registered March 4, 2008).
3. Respondent’s <yrcworld.com> domain name is nearly identical and confusingly similar to Complainant’s YRC and YRC WORLDWIDE marks as it incorporates the marks in their entirety and adds the generic term “world.” Moreover, the addition of a generic top-level domain (“gTLD”), such as “.com,” is irrelevant in determining similarity between Respondent’s disputed domain name and Complainant’s marks.
4. Respondent has no rights or legitimate interests in the disputed domain name.
i. Respondent has never been commonly known by the disputed domain name or by any of the YRC marks and has never acquired any trademark rights in the same. Respondent has no relationship with Complainant.
ii. Respondent’s disputed domain name connects to a parking page and directory website providing a listing of hyperlinks leading to popular categories for business, business management, sales, marketing, and online business.
5. Respondent has registered and is using the disputed domain name in bad faith.
i. Respondent is using the disputed domain name in connection with efforts to perpetuate fraud on various third parties.
ii. Respondent is using the disputed domain name to direct Internet users to a commercial website featuring services that compete with Complainant or are related to Complainant’s services.
iii. Respondent had constructive knowledge of Complainant’s trademark rights at the time Respondent registered and began using 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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant, YRC Worldwide Inc., contends that it is a business in connection with domestic and international common carrier freight transportation by means of truck, air, or sea, and domestic and international freight forwarding services; business management services, namely, managing logistics, reverse logistics, supply chain services, supply chain visibility and synchronization, supply and demand forecasting and product distribution processes for others; providing electronic tracking of freight information to others; arranging for pickup, delivery, storage and transportation of documents, packages, freight and parcels via ground and air carriers; and other related services. Complainant argues that it has registered and is using the domain names <yrc.com>, <yrcworldwide.com> and <yrcw.com>. Complainant asserts that it owns and shows evidence of trademark registrations with the USPTO for the YRC mark (Reg. No. 3,272,882, registered July 31, 2007), for the YRC WORLDWIDE mark (e.g., Reg. No. 3,174,011, registered November 21, 2006), and for the YRCW mark (Reg. No. 3,393,133, registered March 4, 2008). See Complainant’s Exhibit B. The Panel finds that Complainant’s registration of the YRC, YRC WORLDWIDE, and YRCW marks with the USPTO is sufficient to establish its rights in the marks under Policy ¶ 4(a)(i). See AOL LLC v. Integrate, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”).
Complainant contends that Respondent’s <yrcworld.com> domain name is nearly identical and confusingly similar to Complainant’s YRC and YRC WORLDWIDE marks as it incorporates the mark in its entirety and adds the generic term “world.” Complainant contends that the only difference from Complainant’s YRC WORLDWIDE mark and Respondent’s disputed domain name is the removal of the term WIDE from the WORLDWIDE portion of the mark. The Panel notes that, when compared with the YRC mark, the disputed domain name simply adds the term “World” to the mark. The Panel finds that Respondent’s addition of the generic term “world” does not distinguish Respondent’s disputed domain name from Complainant’s marks under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Complainant also argues that the addition of a gTLD, such as “.com,” is irrelevant in determining similarity between Respondent’s disputed domain name and Complainant’s marks. The Panel notes that Respondent removes the spaces between the words “YRC” and “WORLD” in the disputed domain name. The Panel finds that the addition of a gTLD and removal of spaces does not eliminate confusing similarity between Respondent’s disputed domain name and Complainant’s marks under Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel concludes that Respondent’s <yrcworld.com> domain name is nearly identical and confusingly similar to Complainant’s YRC and YRC WORLDWIDE marks under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent has never been commonly known by the disputed domain name or by any of the YRC marks and has never acquired any trademark rights in the same. The Panel notes that the WHOIS information for the disputed domain name identifies “John Mendoza” as the registrant. See Complainant’s Exhibit A. Complainant argues that Respondent has no relationship with Complainant. The Panel notes that Respondent fails to provide evidence showing that it is known by the disputed domain name. Thus, the Panel determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant contends that Respondent’s disputed domain name connects to a parking page and directly website providing a listing of hyperlinks leading to popular categories for business, business management, sales, marketing, and online business. The Panel notes that Respondent’s <yrcworld.com> domain name features links titled “Business,” “Sales,” “Marketing,” and other links. See Complainant’s Exhibit E. Complainant argues that an Internet user viewing a website located at Respondent’s <yrcworld.com> domain name would be likely to assume that the domain name was somehow sponsored by or affiliated with Complainant. Complainant contends that Respondent’s use of the disputed domain name is commercial because the various companies linked to the directory site have benefitted from the subsequent interest and purchases resulting from those searches. The Panel finds that Respondent’s such use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant asserts that Respondent is using the disputed domain name to direct Internet users to a commercial website featuring services that compete with Complainant or are related to Complainant’s services. The Panel notes that Respondent’s <yrcworld.com> domain name features links titled “Business,” “Sales,” “Marketing,” and other links which may be related to Complainant’s services. See Complainant’s Exhibit E. The Panel finds that Respondent’s use of the disputed domain name to provide links to websites that directly compete with Complainant disrupts Complainant’s business, showing bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Complainant argues that Respondent had constructive knowledge of Complainant’s trademark rights at the time Respondent registered and began using the disputed domain name. Complainant contends that Respondent’s constructive knowledge of Complainant’s rights in the YRC and YRC WORLDWIDE marks is evidenced by Complainant’s multiple federal registrations and applications. The Panel finds that Respondent had actual notice of Complainant’s rights in the marks based on Respondent’s use of the disputed domain name to conduct services similar to Complainant. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
Complainant argues that Respondent is using the disputed domain name in connection with efforts to perpetuate fraud on various third parties. Complainant argues that Respondent has been distributing e-mails emanating from the disputed domain name wherein the e-mail sender has been portraying himself as being affiliated with Complainant, advising others that he is authorized to act on behalf of Complainant and attempting to perpetuate fraud on others. Complainant contends that an e-mail emanating from “danc@yrcworld.com,” using the names “Dan Cambra” and “Dan Cambri”, contacted NFS Leading, a business and technology equipment leasing company not affiliated with Complainant, to inquire about the potential lease of 30 computers, where the e-mail communications indicated that the inquiry was being made on behalf of Complainant or its Yellow Transportation subsidiary. See Complainant’s Exhibit F. Complainant asserts that the person sending e-mails from “danc@yrcworld.com” is not authorized to act on behalf of Complainant, and Complainant has not otherwise been in contact with NFS Leasing concerning the possible lease of computer equipment. The Panel finds that Respondent’s use of the disputed domain name to perpetuate fraud on third parties demonstrates bad faith registration and use under Policy 4(a)(iii). See Smiths Group plc v. Snooks, FA 1372112 (Nat. Arb. Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of 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 <yrcworld.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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