Swift Transportation Co., LLC v. Domain Admin / High Tech Investments LTD
Claim Number: FA1506001624050
Complainant is Swift Transportation Co., LLC (“Complainant”), represented by Ryan D. Ricks of SNELL & WILMER L.L.P, Arizona. Respondent is Domain Admin / High Tech Investments LTD (“Respondent”), Seychelles.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <swifttransportation.com> (' the Domain Name'), registered with Key-Systems GmbH.
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.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 11, 2015; the Forum received payment on June 11, 2015.
On June 12, 2015, Key-Systems GmbH confirmed by e-mail to the Forum that the <swifttransportation.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 2015 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@swifttransportation.com. Also on June 12, 2015, 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 10, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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
The Complainant’s contentions can be summarised as follows:
The Complainant is a leading provider of transportation solutions. It generates nearly $4B in annual revenue in connection with its operations throughout North America. The Complainant owns federal registrations in the USA for SWIFT. It has used the mark continuously since 1968 and has operated a web site at www.swifttrans.com since at least 1999. SWIFT has secondary meaning and is distinctive of the Complainant’s transportation services. Under the common law of Arizona and the federal Lanham Act the Complainant has rights in the SWIFT mark and those rights were established more than three decades before the Domain Name was registered.
The Domain Name is identical/and/or confusingly similar to Complainant’s SWIFT marks. The addition of .com is irrelevant in determining confusing similarity.
Given the Complainant’s core business, visitors to any site connected with the Domain Name would reasonably believe the web site was associated with the Complainant. The fact that the generic term added to the Complainant’s mark has an obvious relationship to Complainant’s goods and services makes a finding of confusing similarity even more appropriate.
Respondent use of the Domain Name is likely to cause confusion or mistake. The Respondent attempts to deceive by attract consumers to Respondent's web site in violation of Complainant’s trade mark rights.
Complainant has never authorised Respondent to use and has not consented to Respondent's use of the SWIFT mark. Respondent is not commonly known by the Domain Name or by the SWIFT mark. It does not appear to use the Domain Name other than as a placeholder in an attempt to derive link-based revenue. Using the Complainant's mark in the domain name of a web site that links to various third party sites is not a bona fide offering of goods and services. The respondent has no rights or legitimate interests in the Domain Name
Respondent uses the Domain Name to direct consumers to other commercial sites and admits that it does so in return for click through fees as the parking page indicates the links are 'sponsored listings'. Earning referral fees by linking to other web sites resulting in commercial gain to the Respondent is indubitable evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 Domain Name consists of the Complainant’s mark, the generic term 'transportation' indicating the business in which the Complainant operates and the gTLD .com.
See Miller Brewing Co. v Domain Active Pty. Ltd, FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that millerbeers.com was confusingly similar to the Complainant’s MILLER mark because the addition of a descriptive term relating to the Complainant’s business does not avoid confusing similarity with regard to Policy 4 (a)(i).)
The gTLD .com does not serve to distinguish the Domain Name from the Complainant's SWIFT mark, which is the distinctive component of the Domain Names. See Red Hat Inc. v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Complainant maintains that the Respondent is not commonly known by the Domain Name and is not using it to offer bona fide goods and services. The Complainant contends that the site is set up for commercial benefit to compete with the Complainant using the latter's intellectual property rights to make a profit by pointing to third party links competing with the complainant's services. See ALPITOUR SpA v Albloushi FA 888651 (Nat. Arb Forum. Feb 26, 2007) (rejecting the Respondent's contentions of rights and legitimate interests because the respondent was merely using the domain name to operate a web site containing links to various competing web sites which the panel did not find to be bona fide use in relation to goods and service under the Policy.) The links on the web site attached to the Domain Name include competing trucking services not connected with the Complainant.
As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Complainant also alleges that the Respondent's use of the site is commercial and he is using it to make profit from linking to third party web sites that compete with the Complainant in a confusing manner. The use is confusing in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it offers competing trucking services under a Domain Name which is confusingly similar to the Complainant’s trade marks. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site. (See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Nat. Arb Forum May 29, 2007) finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use).
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <swifttransportation.com> domain name be TRANSFERRED from Respondent to Complainant.
<<Dawn Osborne>>, Panelist
Dated: <<July 16, 2015>>
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