XPO Logistics, Inc. v. tanyeli tekin
Claim Number: FA2210002015298
Complainant is XPO Logistics, Inc. ("Complainant"), represented by Georges Nahitchevansky of Kilpatrick Townsend & Stockton LLP, New York, USA. Respondent is tanyeli tekin ("Respondent"), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rxoconnect.com>, registered with Dynadot, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to Forum electronically on October 9, 2022; Forum received payment on October 9, 2022.
On October 11, 2022, Dynadot, LLC confirmed by email to Forum that the <rxoconnect.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 October 12, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@rxoconnect.com. Also on October 12, 2022, the Written Notice of the Complaint, notifying Respondent of the email 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 7, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 is a global provider of transportation and logistics solutions. Complainant ranked 190th on the Fortune 500 list in 2021; it currently is the second largest freight broker worldwide and ranks among the top three LTL (Less-Than-Truckload) providers in North America. Since 2018 Complainant has operated a digital brokerage platform known as XPO CONNECT.
On July 12, 2022, Complainant announced the spinoff of its truck brokerage business into a new entity to be known as RXO, to take place in the fourth quarter of 2022. The announcement received widespread media coverage throughout July 2022, particularly in the transportation and logistics industry press. Shortly thereafter, Complainant announced that its brokerage platform would adopt the name RXO CONNECT. Complainant owns a United States trademark registration for XPO CONNECT and in July 2022 filed applications to register RXO and RXO CONNECT.
Respondent registered the disputed domain name <rxoconnect.com> on August 1, 2022. Since then, the domain name has been offered for sale for $142,350 on Sedo.com, a domain name marketplace, and for $75,000 through Dynadot, the registrar. Complainant alleges that Respondent has a history of registering and using domain names based on the names and marks of others in an effort to sell them for profit, and has been found by several UDRP panels to have acted in bad faith. See Amazon Technologies, Inc. v. Tanyeli Tekin, FA 1960735 (Forum Sept. 16, 2021) (ordering transfer of <kindlevella.com>); Sennheiser electronic GmbH & Co. KG. v. Tanyeli Tekin, D2021-3550 (WIPO Dec. 22, 2021) (ordering transfer of <sennheiserambeo.com>); Banca Ifis S.p.A. v. Super Privacy Ltd c/o Dynadot / Tanyeli Tekin, D2022-2392 (WIPO Aug. 10, 2022) (ordering transfer of <ifisfinance.com>). Complainant states that Respondent is not commonly known by the domain name, has no relationship with Complainant, and is not authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <rxoconnect.com> is confusingly similar to its RXO and RXO CONNECT marks; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Complainant's pending trademark applications for RXO and RXO CONNECT do not give it rights in a mark for purposes of paragraph 4(a)(i) of the Policy. Complainant thus must rely on common law trademark rights in one or both of its claimed marks, and must present evidence that the mark has acquired secondary meaning — i.e., that it has become a distinctive identifier associated with Complainant or its goods or services. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 1.3. Taking into account the widespread press coverage of Complainant's announcement that it would be adopting the RXO name and mark for its substantial truck brokerage business, and noting that Respondent has not come forward to challenge Complainant's allegations, the Panel finds that Complainant has sufficient rights in RXO for purposes of paragraph 4(a)(i).
The disputed domain name <rxoconnect.com> incorporates Complainant's RXO mark, adding the generic term "connect" (which is also used by Complainant in connection with its business) and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., NatWest Group plc. v. Domain Admin, Whois protection / Hulmiho Ukolen, Poste restante, D2021-2167 (WIPO Sept. 9, 2021) (finding <rbsconnect.com> confusingly similar to RBS). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's RXO mark without authorization. It was registered shortly after Complainant announced it would be using RXO and RXO CONNECT in connection with its truck brokerage business. Respondent does not appear to have made any active use of the domain name, other than to redirect users to a website at which the domain name is being offered for sale. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Banca Ifis S.p.A. v. Super Privacy Ltd c/o Dynadot / Tanyeli Tekin, supra (finding lack of rights or interests in similar circumstances); Sennheiser electronic GmbH & Co. KG. v. Tanyeli Tekin, supra (same); Amazon Technologies, Inc. v. Tanyeli Tekin, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who 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."
Respondent registered a domain name incorporating Complainant's nascent mark several days after Complainant's announcement received widespread press attention, and promptly advertised it for sale at a price far exceeding Respondent's out-of-pocket costs. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Amazon Technologies, Inc. v. Tanyeli Tekin, supra (finding bad faith registration and use in similar circumstances). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rxoconnect.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: November 8, 2022
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