YRC Worldwide Inc. v. Dan Knudtson NA
Claim Number: FA2006001901961
Complainant is YRC Worldwide Inc. (“Complainant”), represented by Patrick J. Gallagher of Barnes & Thornburg LLP, United States. Respondent is Dan Knudtson NA (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hnrylogistics.net>, registered with Wild West Domains, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 26, 2020; the Forum received payment on June 26, 2020.
On June 29, 2020, Wild West Domains, LLC confirmed by e-mail to the Forum that the <hnrylogistics.net> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 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@hnrylogistics.net. Also on June 30, 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 23, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, YRC Worldwide Inc., offers business consulting services relating to product distribution, operations management services, logistics, and supply chain services. Complainant has rights in the HNRY LOGISTICS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,908,961, registered Nov. 12, 2019). See Compl. Ex. B. Respondent’s <hnrylogistics.net> domain name is identical to Complainant’s mark because it wholly incorporates Complainant’s HNRY LOGISTICS mark and merely adds the “.net” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <hnrylogistics.net> domain name. Respondent is not licensed or authorized to use Complainant’s HNRY LOGISTICS mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain to host a parked webpage that diverts users to sites of third parties who compete with Complainant. Further, Respondent uses an email address associated with the disputed domain to pass off as an employee of Complainant for phishing purposes.
Respondent registered and uses the <hnrylogistics.net> domain name in bad faith. Specifically, Respondent attempts to disrupt Complainant’s business and attract Internet users for commercial gain by hosting hyperlinks to competing businesses. Additionally, Respondent uses the domain name to impersonate Complainant in order to acquire personal, business, or financial information from consumers.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that offers business consulting services relating to product distribution, operations management services, logistics, and supply chain services.
2. Complainant has established it trademark rights in the HNRY LOGISTICS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,908,961, registered Nov. 12, 2019).
3. Respondent registered the disputed domain name on February 14, 2020.
4. Respondent uses the disputed domain name to host a parked webpage that diverts users to sites of third parties who compete with Complainant. Further, Respondent uses an email address associated with the disputed domain name to pass itself off as an employee of Complainant for phishing purposes.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the HNRY LOGISTICS mark based upon its registration of the mark with the USPTO. Registration of a mark with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i)”). Complainant provides evidence of its registrations of the HNRY LOGISTICS mark with the USPTO (e.g., Reg. No. 5,908,961, registered Nov. 12, 2019). See Compl. Ex. B. Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’ HNRY LOGISTICS mark. Complainant argues that Respondent’s <hnrylogistics.net> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s HNRY LOGISTICS mark, simply adding the “.net” gTLD. The addition of a gTLD to a mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel finds that the disputed domain name is confusingly similar to the HNRY LOGISTICS mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
(a) Respondent has chosen to take Complainant’s HNRY LOGISTICS trademark and to use it in its domain name;
(b) Respondent registered the disputed domain name on February 14, 2020;
(c) Respondent uses the disputed domain name to host a parked webpage that diverts users to sites of third parties who compete with Complainant. Further, Respondent uses an email address associated with the disputed domain name to pass itself off as an employee of Complainant for phishing purposes;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <hnrylogistics.net> domain name because Respondent is not licensed or authorized to use Complainant’s HNRY LOGISTICS mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can be used to show that a respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii), especially when a privacy service is engaged. See H - D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names”); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of authorization to use a mark can constitute a further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record notes “Dan Knudtson” as the registrant and no other information suggests that Complainant has authorized Respondent to use the HNRY LOGISTICS mark in any way. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <hnrylogistics.net> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead uses the domain name to divert Internet traffic to Complainant’s competitors. Use of a domain name to redirect users or display links to competing third parties automatically is not a bona fide offering of goods or services or a legitimate noncommercial fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii)”). Here, Complainant claims that the disputed domain name is used to redirect users to competing logistics companies. Complainant has provided screenshots of Respondent’s web page which displays links to competing third parties under titles such as “Logistics Companies” and “Freight Shipping Companies” See Compl. Ex. D. The Panel agrees with Complainant that this use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant argues that Respondent fails to use the <hnrylogistics.net> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent uses the disputed domain name and an associated email address to pass itself off as an employee of Complainant. Use of a disputed domain name by a respondent to pass itself off as a complainant via email is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name). Complainant claims that Respondent uses an email associated with the disputed domain name to pass itself off as Complainant and collect sensitive information. Complainant provides screenshots of emails purportedly sent by Respondent that use the disputed domain name and impersonate actual employees of Complainant. See Compl. Ex. E. Therefore, the Panel finds Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has registered and uses the <hnrylogistics.net> domain name in bad faith, as Respondent uses the disputed domain name to redirect Internet traffic for Respondent’s own benefit. Use of a disputed domain name to display competing links or otherwise redirect users to competing websites evidences bad faith disruption of business under Policy ¶ 4(b)(iii) and attraction for commercial gain under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). Complainant notes that Respondent’s website redirects consumers to unrelated websites, but also redirects users to websites of Complainant’s logistics competitors. Complainant provides screenshots of Respondent’s use of the domain name. See Compl. Ex. D. The Panel agrees with Complainant and finds bad faith registration and use under Policy ¶ 4(b)(iii) and (iv).
Secondly, Complainant argues that Respondent registered and uses the <hnrylogistics.net> domain name in bad faith because Respondent attempts to profit from the confusion among Internet users as to the source of the disputed domain name. Specifically, Complainant argues Respondent is attempting to impersonate Complainant as part of an email phishing scheme, presumably for commercial gain. Use of a domain name to impersonate a complainant in furtherance of a fraudulent scheme constitutes bad faith pursuant to Policy ¶ 4(b)(iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Here, Complainant claims Respondent used an email address associated with the disputed domain name to impersonate Complainant and send phishing emails to Complainant’s business vendors, presumably designed to solicit information under false pretenses. Complainant provides emails sent by Respondent relating to this fraudulent scheme. See Compl. Ex. E. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii) and (iv).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hnrylogistics.net> domain name be TRANSFERRED from Respondent to Complainant.
Panelist
Dated: July 24, 2020
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