Brambles Limited v. Domain Admin / Private Registrations Aktien Gesellschaft
Claim Number: FA1701001712121
Complainant is Brambles Limited (“Complainant”), represented by Shannon McCue of Baker & Hostetler LLP, Ohio, USA. Respondent is Domain Admin / Private Registrations Aktien Gesellschaft (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chepusa.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 12, 2017; the Forum received payment on January 12, 2017.
On January 13, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <chepusa.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 January 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 2, 2017 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@chepusa.com. Also on January 13, 2017, 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 February 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
1. Complainant is a supply-chain logistics company, operating in more than sixty countries. Complainant acquired CHEP Technology Limited, a supplier of pallets and containers, as a subsidiary in 1958. Complainant owns the CHEP and CHEP USA marks (“CHEP marks”) in conjunction with its business practices and that of its subsidiary. The CHEP and CHEP USA marks were registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. Nos. 2,045,156, registered Mar. 11, 1997; Reg. No. 2,186,116, registered Sept. 1, 1998; respectively). See Compl., at Attached Ex. 3. Respondent’s <chepusa.com> is identical to the CHEP USA mark because it incorporates the mark in its entirety, merely eliminating the space and adding the “.com” generic top level domain (“gTLD”).
2. Respondent has no rights or legitimate interests in <chepusa.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the CHEP marks in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domain name. Respondent’s <chepusa.com> currently resolves to a website with click-through links to products and services unrelated to Complainant and an offer to sell the domain name for $150.00 USD. See Compl., at Attached Ex. 9.
3. Respondent registered and is using <chepusa.com> in bad faith. Prior to December 2016, the disputed domain name resolved to links to products in direct competition to Complainant. See Compl., at Attached Ex. 8. Following a letter written by Complainant to Respondent requesting a voluntary transfer, <chepusa.com> began resolving to click-through links to unrelated sites and an advertisement that the domain name is for sale. Respondent registered <chepusa.com> with at least constructive knowledge of Complainant and its rights to the CHEP marks.
1. Respondent has not submitted a response.
1. Respondent’s <chepusa.com> domain name is confusingly similar to Complainant’s CHEP and CHEP USA marks.
2. Respondent does not have any rights or legitimate interests in the <chepusa.com> domain name.
3. Respondent registered or used the <chepusa.com> domain name in bad faith.
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 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 (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 is a supply-chain logistics company, operating in more than sixty countries. Complainant acquired CHEP Technology Limited, a supplier of pallets and containers, as a subsidiary in 1958. Complainant owns the CHEP marks in conjunction with its business practices and that of its subsidiary. Complainant claims that the CHEP marks were registered with USPTO (e.g., Reg. Nos. 2,045,156, registered Mar. 11, 1997; Reg. No. 2,186,116, registered Sept. 1, 1998; respectively). See Compl., at Attached Ex. 3. The general consensus among Panels is that USPTO mark registrations are sufficient to show rights in a mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant’s USPTO registrations are sufficient to establish rights in the CHEP marks.
Complainant asserts that Respondent’s <chepusa.com> is identical to the CHEP USA mark because it incorporates the mark in its entirety, merely eliminating the space and adding the “.com” gTLD. “Panels have consistently held that the addition of a gTLD does not distinguish a domain name from a mark, and that the removal of spaces between words of a mark is irrelevant.” Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015). Here, the Panel agrees that elimination of spacing and adding “.com” are irrelevant alterations, and conclude that Respondent’s <chepusa.com> is identical to Complainant’s CHEP USA mark.
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 (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 (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 has no rights or legitimate interests in <chepusa.com>. To support its argument, Complainant maintains that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case indicates that Respondent used the “Privacy Protection Service, Inc.” privacy server to shield its identity. “The WHOIS information lists [privacy service] as the registrant of record for the disputed domain names. Accordingly, in the absence of a Response, there is no evidence to indicate that Respondent might be known by any of the domain names.” Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA1506001624077 (Forum July 31, 2015). Hence, absent evidence to the contrary, the Panel concludes that Respondent is not commonly known by <chepusa.com>.
Additionally, Complainant asserts that it has not authorized or licensed Respondent to use the CHEP marks in any regard, nor is Respondent affiliated with Complainant. Complainant contends that Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domain name. To support its argument, Complainant illustrates that Respondent’s <chepusa.com> currently resolves to a website with click-through links to products and services unrelated to Complainant and an offer to sell the domain name for $150.00 USD. See Compl., at Attached Ex. 9. “Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.” Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015). Additionally, when “[t]he Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’, [t]he Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.” Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015). Therefore, the Panel finds that Respondent does not have rights or legitimate interests in <chepusa.com> pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant argues that Respondent registered and is using <chepusa.com> in bad faith. Following a letter written by Complainant to Respondent requesting a voluntary transfer, <chepusa.com> became an inactive domain with click-through links to unrelated sites and an advertisement that the domain name is for sale. General offers for sale may be considered bad faith under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Exhibit 9 to the Complaint shows a screenshot of <chepusa.com>, with a message, “Buy this domain[.] The owner of chepusa.com is offering it for sale for an asking price of 150 USD!” The Panel agrees that this general offer for sale shows Respondent’s bad faith under Policy ¶ 4(b)(i).
Prior to December 2016, Complainant notes that the disputed domain name resolved to links to products in direct competition to Complainant. See Compl., at Attached Ex. 8 (including “Chep Pallets,” “Direction,” and “Empleo Oferta Region Trabajo”). Competitive use can implicate both Policy ¶¶ 4(b)(iii) and (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Complainant argues that Respondent has included links to pallets and logistics services that redirect to Complainant’s competitors. The Panel agrees that such use represents bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Respondent registered <chepusa.com> with at least constructive knowledge of Complainant and its rights to the CHEP marks. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chepusa.com> domain name be TRANSFERRED from Respondent to Complaint.
John J. Upchurch, Panelist
Dated: February 23, 2017
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