APL Limited v. APL Limited c/o Domain Administrator
Claim Number: FA0606000731833
Complainant is APL Limited (“Complainant”), represented by Anthony J. Malutta, of Townsend and Townsend and Crew LLP, Two Embarcadero Center, 8th Floor, San Francisco, CA 94111. Respondent is APL Limited c/o Domain Administrator (“Respondent”), 1111 Broadway - 5th Floor, Oakland, CA 94607.
The domain name at issue is <apllogistic.com>, registered with Nameview, Inc.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 14, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 15, 2006.
On June 14, 2006, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <apllogistic.com> domain name is registered with Nameview, Inc. and that Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 16, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 6, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@apllogistic.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 14, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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." 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 <apllogistic.com> domain name is confusingly similar to Complainant’s APL and APL LOGISTICS marks.
2. Respondent does not have any rights or legitimate interests in the <apllogistic.com> domain name.
3. Respondent registered and used the <apllogistic.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, APL Limited, is an international transportation and logistics company specializing in global container transportation services. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its APL mark (Reg. No 1,466,626 issued on January 1, 1994; Reg. No. 2,634,112 issued on October 15, 2005), and for its APL LOGISTICS mark (Reg. No. 2,469,563 issued July 17,2001). Complainant employs its APL and APL LOGISTICS marks in connection with its container transportation goods and services and supply chain management goods and services. Complainant has registered the <apl.com> and <apllogistics.com> domain names in connection with Complainant’s websites, which provide Internet users with information about Complainant’s goods and services.
Respondent registered the <apllogistic.com> domain name on May 16, 2005. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website which features links to third-party websites, some of which are unrelated to Complainant while others offer goods and services in direct competition with Complainant. Respondent’s website also generates a significant number of pop-up advertisements sufficient to “mousetrap” Internet users, bombarding users with so many pop-up advertisements that it is difficult to leave Respondent’s website. Presumably, Respondent receives pay-per-click fees from these third-party links and pop-up advertisements.
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."
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.”).
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.
Complainant has established rights in its APL and APL LOGISTICS marks through registration with the USPTO. The Panel finds that such registration is sufficient to establish rights under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Respondent’s <apllogistic.com> domain name is
confusingly similar to Complainant’s APL and APL LOGISTICS marks. Respondent’s domain name either incorporates
Complainant’s APL LOGISTICS mark and drops the letter “s,” or incorporates
Complainant’s APL mark in its entirety adding the descriptive term “logistic,”
which refers to Complainant’s business.
The Panel finds that a minor alteration to Complainant’s mark, such as
the deletion of a letter, does not overcome the confusing similarity between
Complainant’s mark and the disputed domain name pursuant to Policy ¶
4(a)(i). The Panel also finds that
using Complainant’s mark in its entirety in conjunction with a term descriptive
of Complainant’s business creates a confusing similarity between Respondent’s
domain name and Complainant’s mark pursuant to Policy ¶ 4(a)(i). Thus, the Panel finds that Respondent’s <apllogistic.com>
domain name is confusingly similar to Complainant’s APL and APL LOGISTICS
marks pursuant to Policy ¶ 4(a)(i). See
Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000)
(finding that, by misspelling words and adding letters to words, a respondent
does not create a distinct mark but nevertheless renders the domain name
confusingly similar to the complainant’s marks); see also Universal City
Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding
that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE
mark did not change the overall impression of the mark and thus made the
disputed domain name confusingly similar to it); see also Space Imaging LLC
v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant’s allegation establishes a prima facie case and shifts the burden to Respondent to demonstrate that Respondent does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Respondent’s failure to respond may be viewed by the Panel as evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). The Panel will evaluate the available evidence to determine whether or not Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Respondent is using the <apllogistic.com> domain name to redirect Internet users to Respondent’s website. Respondent’s website features links to third-party websites, both directly competing with Complainant and unrelated to Complainant, as well as pop-up advertisements so numerous as to “trap” users at Respondent’s website. The Panel finds that such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 25, 2003) (holding that the respondent’s use of the <toyrus.com> domain name, a simple misspelling of the complainant’s mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
Furthermore, there is no evidence that Respondent is
commonly known by the <apllogistic.com> domain name. While Respondent’s WHOIS information does
identify Respondent as “APL Limited,” Complainant asserts that this information
is inaccurate and reflects a change in Respondent’s domain name registration
information made after the filing of this Complaint. Complainant also asserts that Respondent is not licensed by or
affiliated with Complainant in any way, and has no permission from Complainant
to use Complainant’s mark in a domain name.
Thus, based on the available information, the Panel finds that
Respondent is not commonly known by the disputed domain name and lacks rights
or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name); see also 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”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent is using the <apllogistic.com> domain
name to redirect Internet users to Respondent’s website featuring links to
third-party websites offering goods and services in direct competition with
Complainant. Examples of such links
include “supply chain management,” “warehousing,” and “global logistics,” all
of which are goods and services also offered by Complainant. The Panel finds that such use disrupts
Complainant’s business and is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com,
FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the
respondent’s sites pass users through to the respondent’s competing business); see
also Toyota Jidosha Kabushiki Kaisha
v. S&S Enters. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (“Registration of
a domain name [by the respondent that incorporates another’s trademark] goes
further than merely correctly using in an advertisement the trade mark of
another in connection with that other’s goods or services.”).
Respondent’s <apllogistic.com>
domain name is confusingly similar to Complainant’s APL and APL LOGISTICS
marks. Respondent is taking advantage
of this confusing similarity to redirect Internet users to Respondent’s
website, featuring links to third-party websites and pop-up advertisements,
from which Respondent presumably receives pay-per-click fees. Internet users redirected to Respondent’s
website may mistakenly believe that Respondent is affiliated with or sponsored
by Complainant. The Panel finds that
Respondent’s exploitation of the confusing similarity between a disputed domain
name and Complainant’s mark to attract Internet users to Respondent’s website
is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”); see also Am.
Univ. v. Cook, FA 208629 (Nat. Arb. Forum
Dec. 22, 2003) (“Registration and use of a domain name that incorporates
another's mark with the intent to deceive Internet users in regard to the
source or affiliation of the domain name is evidence of bad faith.”).
The Panel may find other evidence of bad faith registration
and use in addition to the examples outlined in Policy ¶ 4(b)(i)-(iv). One such use considered to be evidence of
bad faith registration and use is engagement in the practice of
“mousetrapping.” Mousetrapping occurs
when Respondent redirects Internet users to its website, which then generates
so many pop-up advertisements that it is difficult for Internet users to leave
the website. Complainant has alleged
that Respondent is engaging in mousetrapping, and the Panel finds that such use
is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Cellular One Group v. Brien, D2000-0028
(WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy
is not an exhaustive list of bad faith evidence); see also De La Rue Holdings PLC v. Video Images
Prods. L.L.C., FA 196054 (Nat. Arb. Forum Oct. 27, 2003) (“In the past,
Panels have determined that mousetrapping by itself is a prima facie showing of
bad faith use and registration.”); see also Worldwinner.com,
Inc. v. Cupcake Patrol, FA 175289 (Nat. Arb. Forum Sept. 22, 2003)
(equating the practice of “mousetrapping” to bad faith registration and
use because mousetrapping serves no useful purpose and is inherently
deceptive).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <apllogistic.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: July 27, 2006
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