YRC Worldwide Inc. v. Cityman ICT / Web Developer
Claim Number: FA1910001868560
Complainant is YRC Worldwide Inc. (“Complainant”), represented by Patrick J. Gallagher of Cozen O'Connor, Minnesota, USA. Respondent is Cityman ICT / Web Developer (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yrcexpress.com>, registered with NameCheap, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 25, 2019; the Forum received payment on October 25, 2019.
On October 28, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <yrcexpress.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 November 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 2019 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@yrcexpress.com. Also on November 1, 2019, 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 November 25, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its rights in the YRC trademark established through its ownership of its portfolio of registered trademarks described below, and its claimed goodwill established in the mark though its use in commerce in the United States and internationally in connection with domestic and international freight transportation business and related services.
Complainant submits that its YRC trademark is distinctive and has become well-known to consumers as a result of Complainant’s long usage and promotion of the YRC trademark in its international business.
Complainant submits that the disputed domain name <yrcexpress.com> is identical to Complainant’s YRC trademark. Complainant argues that the addition of the common or generic term “express” does not negate the confusing similarity between the disputed domain name and Complainant’s YRC trademark under Policy ¶ 4(a)(i). Complainant refers to similar cases, where panels established under the Policy have found that adding a term that is descriptive of the complainant’s products or services and a gTLD to the complainant’s mark does not negate confusing similarity to a complainant’s mark pursuant to Policy ¶ 4(a)(i) including for example American Council on Educ. & GED Testing Serv. LLC v. John Bonk / Land Merchandising Corp., Case No. FA1612001707104 (Jan. 24, 2017) (finding that the addition of “TEST” and “ONLINE” to the complainants’ GED mark was not sufficient to negate the confusing similarity between the domain name <gedtestonline.com> and the complainant’s GED mark, which is used in part in connection with online testing services).
Complainant submits that in the present case, the term “express” is descriptive of Complainant’s services used in connection with its YRC trademark and is a term that is widely used in the transportation of freight industry to describe the fact that the freight is delivered on a more expedited basis.
Moreover, Complainant submits that the addition of a generic top-level domain extension <.com> is irrelevant in determining the similarity of the disputed domain name to the YRC trademark, citing for example Delta Corp. Identity, Inc. & Delta Air Lines, Inc., citing Busy Body, Inc. v. Fitness Outlet Inc., Case No. D2000-0127 (WIPO Apr. 22, 2000) (“[t]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”).
Complainant adds that not only is the disputed domain name identical or confusingly similar to the YRC trademark, but the website to which the disputed domain name resolves, offers and purports to provide services that compete directly with Complainant because the website offers “road freight forwarding”; “global air freight forwarding”; “ocean freight forwarding”; and “expedited services” for freight. In this regard Complainant refers to a screenshot of the content of the webpage entitled “Our Services” on Respondent’s website which has been adduced in evidence as an annex to the Complaint.
Furthermore, Complainant refers to screenshots of Respondent’s website to show that Respondent is using a modified version of Complainant’s YRC FREIGHT & Design logo throughout the website to which the disputed domain name resolves. Complainant argues that Respondent’s use of the YRC trademark in such circumstances is likely to create confusion giving the false impression that there is an affiliation, connection or association between Respondent and Complainant and the YRC trademark, when no such affiliation exists.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent has no relationship, affiliation, connection, or association with, or endorsement by Complainant which is the owner of the YRC mark. Complainant adds that Respondent has never requested or received any authorization, permission or license from Complainant to use the YRC trademark in any way. Furthermore, Complainant submits that there is no evidence that Respondent has ever been commonly known by the disputed domain name or by the YRC trademark and nor has Respondent ever acquired any trademark rights therein.
Complainant argues that there is no evidence in the WHOIS information to suggest that Respondent is using the disputed domain name <yrcexpress.com> in good faith and in connection with a bona fide offering of goods or services. The disputed domain name currently resolves to a website that uses a modified version of Complainant’s YRC FREIGHT & Design logo without license or authority. On his website, Respondent purports offer to provide services that compete directly with those provided by Complainant.
Complainant alleges that Respondent is using the disputed domain name in bad faith with intent to capitalize on Complainant’s YRC trademark by luring consumers who are looking for Complainant’s genuine services to Respondent’s website that offers services that compete directly with Complainant’s services. Complainant argues that such use cannot be characterized as good faith and in connection with a bona fide offering of goods or services. See Malwarebytes Corp. v. Charlie Jones, Case No. D2014-0226 (WIPO April 6, 2014) (finding respondent was not using the disputed domain name in connection with a bona fide offering of goods or services and that the domain name was registered in bad faith where the respondent used the disputed domain name merely to redirect to its own website for commercial gain).
Furthermore, Complainant submits that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, as the disputed domain name is misleadingly used to divert potential customers and other Internet users to Respondent’s website that purports to offer competing commercial services.
Complainant submits that as it has made a prima facie case in support of its allegations, the burden shifts to Respondent to show that he does have rights or legitimate interests in the disputed domain name. See, e.g., Tejon Ranchcorp & Tejon Ranch Co. v. J & L Enters., Case No. FA524749 (NAF Sept. 20, 2005), citing Do The Hustle, LLC v. Tropic Web, Case No. D2000- 0624 (WIPO Aug. 21, 2000) (where complainant has asserted that respondent has no rights or legitimate interests with respect to domain name, respondent must come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent.”).
Complainant submits that the disputed domain name has been registered and is being used in bad faith arguing that the evidence shows that Respondent had knowledge of Complainant’s trademark rights in the YRC trademark, yet proceeded to register and use the disputed domain name in bad faith; that Respondent used Complainant’s YRC trademark in its domain name to divert visitors to its own website that offers and purports to provide competing services for commercial gain by Respondent; that Respondent is deemed to have had constructive knowledge of Complainant’s rights in Complainant’s YRC trademark at the time Respondent registered and began using the disputed domain name in light of Complainant’s trademark registrations for the YRC trademark; and that Respondent’s conduct, including use of a modified version of Complainant’s YRC FREIGHT & Design logo, shows that Respondent actually knew about Complainant’s YRC trademark.
Complainant submits that Respondent’s use of the disputed domain name which is confusingly similar to Complainant’s YRC trademark, to direct consumers and Internet users to Respondent’s own competing website, which uses a modified version of Complainant’s YRC FREIGHT & Design mark is indicative of bad faith registration and use. See Vivendi Universal Games & Davidson & Assocs., Inc. v. Ronald A. Ballard, Case No. FA0302000146621 (NAF Mar. 13, 2003) (finding the domain name was registered and used in bad faith by the respondent where the domain name was used in connection with a website displaying the complainant’s copyrighted works and registered trademarks, in order to foster the illusion that the Internet user was actually at the complainant’s website).
Complainant argues that Respondent has situated itself as a competitor of Complainant by using a reproduction of Complainant’s YRC FREIGHT & Design logo and well-known names in order to create confusion and attract Internet users to its web site, all for commercial gain. The authorities hold that such conduct alone is conclusive of bad faith. Complainant adds that by using the YRC mark on his website, Respondent is misrepresenting that there is a relationship between Complainant and Respondent’s website.
Additionally, Complainant submits that Respondent is misleadingly indicating on his website that the address of his “Head Office 1” is: “141 Washington Ave Extenstion,(sic) Albany NY 12205”. Complainant submits that on information and belief, Respondent’s business cannot be located at that address because a Walmart Superstore is located at 141 Washington Ave Extension, Albany NY 12205. To support this assertion, Complainant has adduced in evidence, annexed to the Complaint, screenshots from Walmart’s website and other Internet resources showing that Walmart has a store located at 141 Washington Ave Extension, Albany NY 12205.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant uses the YRC trademark in commerce in the United States and internationally in connection with domestic and international common carrier freight transportation and related services.
Complainant owns numerous U.S. federal trademark registrations for its YRC trademark, including U.S. registered trademark YRC registration number 3,272,882, registered on July 31, 2007 for services in international classes 35 and 39. Complainant’s portfolio also includes the following U.S. trademark registrations: YRC WORLDWIDE (U.S. Reg. No. 3,266,262); YRC WORLDWIDE & Design (U.S. Reg. No. 3,174,011); YRCW (U.S. Reg. No. 3,393,133); YRC REGIONAL TRANSPORTATION (U.S. Reg. No. 3,395,557); YRC FREIGHT (word mark) (U.S. Reg. No. 4,190,840); YRC FREIGHT & Design (Black & While logo) (U.S. Reg. No. 4,259,092); YRC FREIGHT & Design (Blue logo) (U.S. Reg. No. 4,259,093); and YRC FREIGHT & Design (Orange logo) (U.S. Reg. No. 4,369,431).
Complainant owns and uses the Internet domain names <yrc.com> and <yrcw.com> which were registered in 2000 and 2005 respectively and resolve to websites maintained by Complainant to maintain its internet presence.
The disputed domain name was registered on June 17, 2019 and resolves to a website that purports to offer freight and related services.
In the absence of a Response, there is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs, and the Registrar’s reply to the Forum’s request for verification of the registration details of the disputed domain name. The Respondent availed of a privacy service to shield his identity which was disclosed by the Registrar in the course of 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(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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has adduced uncontested evidence that it has rights in the YRC service mark through its ownership of U.S. registered trademark YRC registration number 3,272,882, registered on July 31, 2007 for services in international classes 35 and 39 and the goodwill established through its use of the YRC mark in its business including the websites to which its Internet domain names <yrc.com> and <yrcw.com> resolve.
The disputed domain name consists of three letters “yrc” which have no obvious meaning other than being identical to Complainant’s trademark; the word “express”; and the gTLD <.com> extension.
The combination of letters “yrc” is the initial and dominant element of the disputed domain name. The word “express” is frequently adopted by businesses as a laudatory epithet and in the context of the present case, it is used in the freight and transport business as a descriptive term for a speedy service often provided at a premium price.. The word “express” has no distinctive characteristic in the disputed domain name or in the circumstances of the present dispute. The third element, the gTLD <.com> extension may be also ignored when comparing the disputed domain name and Complainant’s mark in the context of the present Complaint.
This Panel finds that the disputed domain name is confusingly similar to the YRC trademark in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing inter alia that Respondent has no relationship, affiliation, connection, endorsement or association with Complainant which is the owner of the YRC mark; that Respondent has never requested or received any authorization, permission or license from Complainant to use the YRC trademark in any way; that Respondent has never been commonly known by the disputed domain name or by the YRC trademark, nor has Respondent ever acquired any trademark rights therein: that there is no evidence in the WHOIS information to suggest that Respondent is using the disputed domain name <yrcexpress.com> in good faith and in connection with a bona fide offering of goods or services; that the disputed domain name currently resolves to a website that uses a modified version of Complainant’s YRC FREIGHT & Design logo without license or authority; that Respondent is using the disputed domain name in bad faith with intent to capitalize on Complainant’s YRC trademark by luring consumers who are looking for Complainant’s genuine services to his website; and that Respondent’s use of the disputed domain name in such circumstances cannot be considered to be either a legitimate noncommercial or fair use.
As Complainant has made out a prima facie case in support of its allegations, the burden of production shifts to Respondent to show that he has rights or legitimate interests in the disputed domain name. Respondent has failed to respond to this Complaint and has therefore failed to discharge the burden of production.
This Panel finds therefore that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name and Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
On the evidence adduced, the dominant and only distinctive element of the disputed domain name is the unusual combination of the letters “yrc” which are identical to Complainant’s trademark. The website to which the disputed domain name resolves purports to offer services which are in the same field of commercial activity as Complainant’s freight business and displays a logo which is very similar to Complainant’s logo.
Furthermore, Complainant has owned and claims to have used the Internet domain names <yrc.com> and <yrcw.com> since 2000 and 2005 respectively. Because of the similarity of the disputed domain name and Complainant’s gTLD domain names, it is improbable that the registrant of the disputed domain name did not become aware of Complainant’s domain names and website when the disputed domain name was being chosen and registered. It is noteworthy in this regard that Respondent uses the name “Cityman ICT / Web Developer”, which indicates a knowledge of Internet domain names which increases the probability of actual knowledge on the part of the registrant.
Taken together these circumstances prove on the balance of probabilities that the registrant of the disputed domain name was actually aware of Complainant, its business, name and trademark when the disputed domain name was registered.
Respondent is using the disputed domain name as an address of a website that purports to offer services which compete with Complainant. Respondent’s failure to respond to this Complaint, his use of a privacy service to hide his identity, and the fact that he gives a false address for this head office, with a mis-spelling of the word “Extenstion”, on his website leads this Panel to conclude that on the balance of probabilities Respondent’s website is a sham. This conclusion is supported by the fact that on his website, Respondent claims to be established in the freight business for 90 years.
This Panel finds that on the balance of probabilities the disputed domain name was registered in bad faith to intentionally take predatory advantage of Complainant’s reputation and goodwill and by using the disputed domain name Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the services that Respondent purports to offer on his website.
This Panel finds on the balance of probabilities that the disputed domain name was registered and is being used in bad faith. Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to the relief requested in this Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yrcexpress.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: November 26, 2019
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