Unishippers Global Logistics, LLC v. Ethan Wilson
Claim Number: FA1812001819253
Complainant is Unishippers Global Logistics, LLC (“Complainant”), represented by Ronald T. Coleman of Parker, Hudson, Rainer & Dobbs, LLP, Georgia, USA. Respondent is Ethan Wilson (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <unishipperlogistics.com>, registered with NameSilo, LLC.
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.
Charles A. Kuechenmeister.
Complainant submitted a Complaint to the Forum electronically on December 3, 2018; the Forum received payment on December 3, 2018.
On December 4, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <unishipperlogistics.com> domain name (the Domain Name) is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of December 31, 2018 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@unishipperlogistics.com. Also on December 10, 2018, 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 January 4, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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
Since September 1987 Complainant has been in the business of selling, promoting and marketing the services of other companies that provide shipping, delivery and transportation services, as well as providing those services itself. It has rights in the UNISHIPPERS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,230,151, registered March 9, 1999). Respondent’s Domain Name is confusingly similar to Complainant’s mark because it fully incorporates a singular version of Complainant’s UNISHIPPERS mark, and adds the generic or descriptive term “logistics” and the gTLD “.com.”
Respondent lacks rights or legitimate interests in the Domain Name. It is not a licensee or other authorized representative of Complainant and Complainant has not authorized Respondent to use Complainant’s UNISHIPPERS mark. Respondent does not use the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, it uses the Domain Name to offer directly competing delivery and transportation services. It purports to be doing business under the name Unishippers Logistics Service in the State of Oklahoma but there is no record any such company authorized to do business in that state. It also uses the Domain Name in connection with a scheme to defraud consumers by falsely offering to sell and deliver pets.
Respondent registered and uses the Domain Name in bad faith. It attempts to attract for commercial gain Internet users to its web site by causing confusion as to the source, sponsorship, affiliation or endorsement of its web site, and in connection with a consumer fraud scheme. Respondent has engaged in typosquatting, with prior knowledge of Complainant’s rights in its UNISHIPPERS mark. Finally, Respondent failed to respond to Complainant’s cease and desist letter.
B. Respondent
Respondent did not 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 provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:
(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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
Complainant registered its UNISHIPPERS mark with the USPTO (Reg. No. 2,230,151) on March 9, 1999. See, Complaint Exhibit 4. Registration of a mark with the USPTO is sufficient to establish a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s Domain Name is confusingly similar to Complainant’s UNISHIPPERS mark in that it incorporates the mark in its entirety, except for its omission of the second “s” in that mark, and except for the addition of the generic term “logistics” and the gTLD “.com.”. The addition or deletion of a single letter of a mark in a domain name is not sufficient to distinguish the domain name from the mark for the purposes of Policy ¶ 4(a)(i). LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum Apr. 5, 2017) (“The Panel agrees; Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.”). Further, the addition of a generic and/or descriptive term and a gTLD is insufficient to distinguish a disputed domain name from a complainant’s mark. Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the UNISHIPPERS mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Complainant has not authorized or licensed it to use its UNISHIPPERS mark, and (ii) Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because it is using it to divert Complainant’s customers to its own web site where it purports to offer competing shipping and delivery services, and because it is using the Domain Name also to perpetrate consumer fraud. The evidence bearing upon these allegations is discussed below.
Complainant states that it has never licensed or authorized Respondent to use its mark, and that Respondent is not affiliated with Complainant in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complaint Exhibit 9 is a screenshot of the home page of the web site resolving from the Domain Name. The site is obviously commercial in nature and displays “Unishippers Logistics Service” and “Unishippers Global Logistics Service” as the names of the entity sponsoring the site. It does not describe the type of services purportedly offered but contains links to other pages on the site which may explain those services. Complainant alleges that the web site offers “directly competing shipping and delivery services” but there are no screenshots of any other pages on this web site, or any other evidence, actually describing those services; the exact nature of the services advertised on the web site is not expressly shown. Nevertheless, the home page does display a photo of a delivery truck and provide a box labeled “Track Your Shipment.” From this it appears that Respondent is using the Domain Name to offer shipping and delivery services that compete with Complainant. Using a confusingly similar domain name to sell competing goods or services does not qualify as a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii). General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complaint Exhibit 10 contains an email message to Complainant from a woman claiming she may have been “scammed” by a company named Unishippers Logistics Services, which is one of the entity names appearing on Respondent’s web site. Complainant argues from this that Respondent is using the Domain Name to perpetrate consumer fraud. There is no evidence before the Panel, however, as to whether or how the Domain Name may have been used for this purpose, nor is there evidence of any other consumers having had a similar experience with Unishippers Logistics Services. The Panel concludes that Complainant’s allegations of use of the Domain Name to perpetrate consumer fraud are not supported by the evidence and will not be considered further in this proceeding.
The fact that Respondent appears to be doing business as Unishippers Logistics Service and/or Unishippers Global Logistics Service would normally be some evidence that it is commonly known as either or both of those names, which are similar to the Domain Name. Neither of those names is the Domain Name, however, and since the Domain Name was created as recently as April 27, 2018 (See, Complaint Exhibit 3 for registration date) it does not seem likely that Respondent has had much if any opportunity to become commonly known by either of the entity names, let alone the Domain Name. Respondent’s web page shows a telephone number with an Oklahoma City area code, and the street address given there is in Oklahoma, but when Complainant attempted to contact Respondent about the Domain Name Respondent could not be found there, and the State of Oklahoma has no record of a company by either of those names authorized to do business in that state. Finally, the information furnished to The Forum by the registrar lists “Ethan Wilson” as the registrant, which name bears no resemblance whatever to the Domain Name. Based upon the foregoing, the Panel concludes that Respondent has not become commonly known by the Domain Name.
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct;
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of respondent’s web site or location or of a product of service on respondent’s web site or location.
The evidence of Respondent’s use of the Domain Name discussed above in connection with the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent registered and is using the Domain Name to attract users for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. This fits squarely within the circumstances articulated by Policy ¶ 4(b)(iv). Yahoo! Inc. v. Web Master, FA 127717 (Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”).
As discussed above in the identical or confusingly similar analysis, the Domain Name incorporates Complainant’s UNISHIPPERS mark verbatim, altering that component of the Domain Name only by omitting the final “s” in the mark. This kind of subtle, intentional misspelling has become known as “typosquatting.” It is evident that Respondent registered and is using the Domain Name because, by design, it contains Complainant’s mark with a subtle misspelling that would likely deceive Internet users who mistakenly type the misspelling of Complainant’s name into believing that they had reached Complainant’s web site. The Policy recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and typosquatting has, in and of itself, been held to be evidence of bad faith registration and use. Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii)”), Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein).
Typosquatting necessarily implicates another factor that has, by itself, often been held by UDRP panels to constitute bad faith. It is evident from the close similarity between Complainant’s mark and the Domain Name, and from the fact that Respondent’s web site appears to offer the same type of services offered by Complainant that Respondent had actual knowledge of Complainant’s mark in April 2018, when it registered the Domain Name. See, Complaint Exhibit 3 for registration date. Given the open-ended, nonexclusive nature of Policy ¶ 4(b), actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name), Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <unishipperlogistics.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
January 7, 2019
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