YRC Worldwide Inc. v. Fly Service
Claim Number: FA2006001900514
Complainant is YRC Worldwide Inc. (“Complainant”), represented by Patrick J. Gallagher of Barnes & Thornburg LLP, Minnesota, USA. Respondent is Fly Service (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yrcworldwidelogistics.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 16, 2020; the Forum received payment on June 16, 2020.
On June 17, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <yrcworldwidelogistics.com> 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 June 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 2020 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@yrcworldwidelogistics.com. Also on June 17, 2020, 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, 2020 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the YRC and YRC WORLDWIDE marks acquired through its ownership of the service mark registrations described below and the goodwill acquired by the use of the marks by Complainant and its affiliate companies in commerce in connection with services including the transportation of freight, transportation logistics, warehousing, and related services since at least as early as December 2003.
Complainant alleges that the disputed domain name is identical or confusingly similar to Complainant’s YRC and YRC WORLDWIDE service marks arguing that panels established under the Policy have found that, where, as in this case, a domain name incorporates a distinctive mark in its entirety, it creates sufficient similarity between the mark and the domain name to render it confusingly similar. See Lowen Corp. v. Henry Chan, Case No. D2004-4030 (WIPO Aug. 5, 2004) (finding that the domain name lowensigns.com is confusingly similar to LOWEN).
Furthermore, Complainant argues that the addition of a common generic or descriptive term such as “logistics” to a complainant’s mark does not negate the confusing similarity between the disputed domain name and the complainant’s mark under Policy 4(a)(i). See Mayflower Transit, LLC v. Mayflower Logistics Inc., Case No. FA1106001392783 (Forum July 12, 2011) (“The disputed domain name [mayflowerlogistics.com] includes the entire mark while adding the generic top-level domain (‘gTLD’) ‘.com’ and a term descriptive of Complainant’s business, ‘logistics.’ The Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s MAYFLOWER mark under Policy ¶ 4(a)(i) because the differences between the two are too trifling as to adequately differentiate one from the other.”)
Complainant adds that the generic top-level domain extension <.com> is irrelevant in determining similarity of the disputed domain name to Complainant’s YRC and YRC WORLDWIDE marks. See, e.g., 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 alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing Respondent has never been commonly known by the disputed domain name or by Complainant’s YRC or YRC WORLDWIDE marks and there is no evidence in the WHOIS information to suggest otherwise.
Complainant submits that Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. Respondent has never requested or received any authorization, permission or license from Complainant to use the YRC or YRC WORLDWIDE marks and trade name, in any way.
Complainant adds that Respondent has never acquired any trademark rights in the disputed domain name or Complainant’s marks because Respondent is not using the disputed domain name in good faith or in connection with a bona fide offering of goods or services. The disputed domain name resolves to an active website that promotes, offers and purports to provide services that directly compete with Complainant and Complainant’s services in the transportation of freight and supply chain logistics service field. In support of this submission Complainant has exhibited in an annex to the Complaint, screen shots of the website to which the disputed domain name resolves on which is posted the statement: “We are a full service provider of customised transportation delivery and logistics solutions.”.
Complainant submits that therefore the disputed domain name is not being used in connection with a bona fide offering of goods or services and Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers.
Complainant alleges that the disputed domain name was registered and is being used in bad faith. Complainant alleges that the registrant of the disputed domain name had actual and constructive knowledge of Complainant and its marks when the disputed domain name was registered.
The website to which the disputed domain name resolves is used to divert visitors to Respondent’s own website, which promotes, offers and purportedly provides services that overlap and directly compete with Complainant and Complainant’s services which Complainant argues shows actual knowledge on the part of the registrant. See American Council on Educ. & GED Testing Serv. LLC v. Domain Admin, et al., Case No. FA1609001696119 (Nov. 15, 2016) (“[T]he Panel also finds that the content of the domain name’s website and the use Respondent made of it, provides evidence that Respondent actually knew about Complainant’s GED® mark through related advertisements on the resolving website.”).
Additionally, Complainant asserts that Respondent is deemed to have had constructive knowledge of Complainant’s YRC and YRC WORLDWIDE marks in light of Complainant’s U.S. trademark registrations and use of the mark.
Complainant refers to the screenshots of the website to which the disputed domain name resolves and submits that Respondent is using the disputed domain name in bad faith to pass itself off as Complainant. See Twitter, Inc. v. Domain Admin, Case No. FA1503001607451 (Forum Apr. 2, 2015) (finding that the respondent’s use of TWIITER.COM constituted bad faith registration and use where the disputed domain name connected to a site that used various Twitter logos and a fake Twitter home page).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(“Complainant”) is the holding company for a portfolio of brands in the field of the transportation of freight, supply chain logistics, and other related services and is the owner of numerous service mark registrations for and incorporating the trademarks YRC and YRC Worldwide, including the following:
· United States registered service mark YRC registration number 3,272,882, registered on July 31,2007 on the Principal Register for services in International Classes 35 and 39;
· United States registered service mark YRC WORLDWIDE registration number3,266,262, registered on July 17, 2007 on the Principal Register for services in International Classes 35 and 39;
· United States registered service mark YRC WORLDWIDE & Design, registration number 3,174,011, registered on November 21, 2006 on the Principal Register for services in International Classes 35 and 39;
· United States registered service mark YRCW registration number 3,393,133, registered on March 4, 2008 on the Principal Register for services in International Classes 35 and 39.
Complainant and its affiliates have an established Internet presence using the domain names <yrc.com>, registered on August 10, 2000, and <yrcw.com> registered on June 8, 2005 as the addresses of the websites on which their services are offered.
The disputed domain name <yrcworldwidelogistics.com> was registered on October 1, 2020 and resolves to a website that purports to offer freight and logistic services by “YRC Worldwide” and provide a contact address in Florida, USA.
There is no information available about Respondent, which is the registrant of the disputed domain name, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for the registration details of the disputed domain name.
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 clear and convincing evidence that it has rights in the YRC and YRC WORLDWIDE marks acquired through its ownership of the trademark registrations described above and use of the marks by Complainant and its affiliate companies in commerce in connection with services including the transportation of freight, transportation logistics services and other related services.
The disputed domain name <yrcworldwidelogistics.com> is composed of Complainant’s YRC and YRC WORLDWIDE service marks in their entirety in combination with the word “logistics”, and the generic top-level domain (“gTLD”) extension <.com>.
The element “logistics” is descriptive and generic and adds no distinguishing characteristic to the disputed domain name.
For the purposes of comparison, the gTLD <.com> extension may be ignored in the circumstances of this Complaint as a domain extension, is recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that Complainant has 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 Respondent has never been commonly known by the disputed domain name or by Complainant’s YRC or YRC WORLDWIDE marks and there is no evidence in the WHOIS information to suggest otherwise; that Respondent has never acquired any trademark rights in the disputed domain name or Complainant’s marks; that Respondent has no relationship, affiliation, connection, endorsement or association with Complainant; that Respondent has never requested or received any authorization, permission or license from Complainant to use the YRC or YRC WORLDWIDE marks and trade name, in any way; that Respondent is not using the disputed domain name in good faith or in connection with a bona fide offering of goods or services as the disputed domain name resolves to active website that promotes, offers and purports to provide services that directly compete with Complainant and Complainant’s services in the transportation of freight and supply chain logistics service field; that the screen shots of the website to which the disputed domain name resolves contains the statement “We are a full service provider of customised transportation delivery and logistics solutions.”; that therefore the disputed domain name is not being used in connection with a bona fide offering of goods or services and Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove its rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The unchallenged evidence on the record shows that Complainant has been providing freight and logistics and related services using its YRC and YRC WORLDWIDE marks since 2003; the disputed domain name consists of Complainant’s service marks and the generic term “logistics” which is descriptive of the services provided by Complainant under its YRC and YRC WORLDWIDE marks; Complainant has a widely known business which it provides inter alia on its websites to which its domain names domain names <yrc.com> registered on August 10, 2000, and <yrcw.com> registered on June 8, 2005 resolve.
In these circumstances it is most improbable that the registrant of the disputed domain name was not actually aware of Complainant, its business and its trademarks when the disputed domain name was registered. This Panel further finds that on the balance of probabilities the disputed domain name was registered in bad faith in order to take predatory advantage of Complainant’s goodwill and reputation in the YRC and YRC WORLDWIDE marks.
The screenshots of the website to which the disputed domain name resolves shows that Respondent is using the disputed domain name to impersonate Complainant. The website purports to be hosted by “YRC Worldwide” with an address in Florida, USA and purports to offer services that are identical to those offered by Complainant and directly compete with Complainant.
As Complainant has not authorized such use of the disputed domain name and has no affiliation with Respondent or its website, this Panel finds that on the balance of probabilities, Respondent is using the disputed domain name in bad faith to impersonate and pass itself off as Complainant and to intentionally attempt to attract and divert, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of its web site and the services that purported to be offered by Respondent.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested in the 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 <yrcworldwidelogistics.com> domain name be TRANSFERRED from Respondent to Complainant.
___________________________________
James Bridgeman SC
Panelist
Dated: July 11, 2020
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