Blue-Grace I.P. LLC v. Blue Grace Logistics
Claim Number: FA1211001473533
Complainant is Blue-Grace I.P. LLC (“Complainant”), represented by Robert F. Beckmann, Florida, USA. Respondent is Blue Grace Logistics (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bluegracelogistics.com>, registered with Tucows, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 29, 2012; the National Arbitration Forum received payment on November 29, 2012.
On November 30, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <bluegracelogistics.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 December 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@bluegracelogistics.com. Also on December 5, 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 January 7, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <bluegracelogistics.com> domain name is confusingly similar to Complainant’s BLUE GRACE LOGISTICS mark.
2. Respondent does not have any rights or legitimate interests in the <bluegracelogistics.com> domain name.
3. Respondent registered and used the <bluegracelogistics.com> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant, Blue-Grace I.P. LLC, provides freight and transportation management and logistics services domestically and internationally. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BLUE GRACE LOGISTICS & Design mark (Reg. No. 3,748,784, registered February 16, 2010) and for the BLUEGRACE mark (Reg. No. 3,997,591, registered July 19, 2011).
Respondent registered the disputed domain name on May 24, 2010, which resolves to a parked page with links to other businesses.
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.”).
The Panel finds that Complainant’s registration of the BLUE GRACE LOGISTICS and BLUEGRACE marks are sufficient to establish its rights in the marks under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i).) The Panel notes that, although Respondent appears to reside in China, Policy ¶ 4(a)(i) only requires that Complainant establish its rights in the BLUE GRACE LOGISTICS and BLUEGRACE marks in any jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <bluegracelogistics.com> domain name is identical to Complainant’s registered BLUE GRACE LOGISTICS trademark, since Respondent merely removes the spaces between the words in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.” These changes do not distinguish Respondent’s disputed domain name from Complainant’s marks under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Thus, the Panel finds that Respondent’s <bluegracelogistics.com> domain name is identical to Complainant’s BLUE GRACE LOGISTICS trademark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 argues that Respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name identifies “Blue Grace Logistics” as the domain name registrant. The Panel notes that, while Respondent appears to be commonly known by the disputed domain name, Respondent fails to provide additional evidence that it is commonly known by the disputed domain name. Complainant provides evidence that Respondent admits that it had not been commonly known by the domain name when it said “We actually just purchased this domain recently from another party for a new venture we are starting.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent is engaged in “domain parking” and has never shown demonstrable preparations to use the domain name. Complainant asserts that Respondent is using the disputed domain name to misleadingly divert consumers or to tarnish the Complainant’s mark. Complainant further asserts that Respondent has admitted that it intends to make “commercial use” of the disputed domain name. Respondent’s disputed domain name connects to a website that lists advertisements that compete with Complainant’s business titled “Help Desk Software,” “Truck Driving Jobs, “Warehousing,” and others. The Panel finds that Respondent’s use of the disputed domain name to feature competing advertisements is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. Complainant argues that Respondent initially registered the disputed domain name with the Moniker domain registrar under the false name “Gray Matters” and provided a false address of “10777 Santa Monica Boulevard, Los Angeles, CA 90025-4718,” which is the address of the Church of Jesus Christ of Latter-Day Saints temple in Los Angeles. Complainant states that after inquiry by Complainant, the address was subsequently changed to an address in Hong Kong, and that the telephone number listed was also changed. Complainant contends that it then engaged Respondent in an e-mail exchange where Respondent requested payment of $250 for the transfer of the disputed domain name. The Panel accepts Complainant’s uncontroverted arguments and finds that Respondent’s offer to sell the disputed domain name to Complainant indicates bad faith registration and use of the domain name under Policy ¶ 4(b)(i). See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).
Further, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location through the use of “domain parking.” Respondent’s disputed domain name connects to a website providing links to various transportation services offered by Complainant in an attempt to profit from the use of Complainant’s mark, showing bad faith registration and use under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
The Panel finds that Complainant has satisfied 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 <bluegracelogistics.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 11, 2013
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