Parcelhub Limited v. Scott Dylan
Claim Number: FA2107001953560
Complainant is Parcelhub Limited (“Complainant”), represented by Lewis Owen of Field Seymour Parkes LLP, United Kingdom. Respondent is Scott Dylan (“Respondent”), represented by Christiana Loizides of Sheridans Solicitors, United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <parcelhub.com> (the “Disputed Domain Name”), registered with GoDaddy.com, 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.
Douglas M. Isenberg as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 1, 2021; the Forum received payment on July 2, 2021.
On July 1, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the Disputed Domain Name is registered with GoDaddy.com, LLC, and that Respondent is the current registrant of the name. GoDaddy.com, LLC, has verified that Respondent is bound by the GoDaddy.com, 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 July 2, 2021, the Forum notified the Complainant of deficiencies in the Complaint and informed the Complainant that it was required to rectify the deficiencies within five calendar days. On July 5, 2021, Complainant submitted an amended Complaint.
On July 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 26, 2021, 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@parcelhub.com. Also on July 6, 2021, 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.
On July 19, 2021, Respondent requested an extension of the due date for the Response, which the Forum granted on July 22, 2021, until August 16, 2021. A timely Response was received and determined to be complete on August 16, 2021.
On August 20, 2021, Complainant submitted an additional submission. On August 27, 2021, Respondent submitted an additional submission.
On August 18, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Douglas M. Isenberg 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is the owner of U.K. Reg. No. UK00002588910 for the trademark PARCELHUB (the “PARCELHUB Trademark”) for use in connection with, inter alia, “packaging of goods” and “rental of storage containers”; and that the Disputed Domain Name “directly infringes on” the PARCELHUB Trademark because it “re-directs to the website of a competing company, Caribou Worldwide Limited, which operates in the same industry.”
Complainant states, in its entirety, that the Respondent has no rights or legitimate interests in the Disputed Domain Name because “[t]he Respondent does not have the Complainant’s permission or consent to use the Complainant’s registered trade mark to re-direct users to its own website” and “[t]he Respondent has no relevant registered or unregistered rights or legitimate interests in respect of the mark ‘Parcelhub’.”
Complainant states, in its entirety, that the Disputed Domain Name was registered and is being used in bad faith because “[t]he Respondent (which will be an entity associated with Caribou Worldwide Limited) knew (or should have known) that it has no rights or legitimate interests in respect of the mark ‘Parcelhub’, which is a well-established brand owned by Parcelhub Limited” and “[a]ccordingly, in registering the domain name Parcelhub.com, the Respondent acted in bad faith in an attempt to re-direct users seeking to find Parcelhub Limited to a Caribou website, thereby causing confusion.”
B. Respondent
Respondent states that Complainant “has not proven the validity of” the PARCELHUB Trademark and that “there is no similarity in the goods and services of the registration in classes 9, 35, 38 and 42, and the goods and services offered by the Respondent.”
Respondent states that, inter alia, “Complainant has failed to substantiate in its Complaint why the Respondent has no legitimate interests in respect of the domain name” and “[t]he Complainant has also failed to provide evidence of such.” Respondent further states that it “acquired the domain name at a cost of £8,825.01” and that the Disputed Domain Name “is very fitting” into a “global package distribution platform” that it is building.
Respondent states that, inter alia, although the Disputed Domain Name “had previously redirected to the website of Caribou Worldwide Limited… Respondent did not cause this redirection himself” and instead “was effected by a licensee of the domain without the Respondent's knowledge, direction or permission” and that “Respondent has since requested the withdrawal of this redirection.” Respondent further states that “the parties are not competitors and that the domain name was not registered by the Respondent primarily to disrupt the Complainant’s business.”
C. Additional Submissions
In its additional submission, Complainant states, inter alia, that Complainant and Respondent “are offering almost identical services”; that “Respondent has no legitimate interest in the mark because it is a registered trade mark representing a well-known and distinctive brand – Parcelhub”; and that “Respondent is not entitled to use Parcelhub, a well-known UK brand, to springboard its Thai business.”
In its additional submission, Respondent states, inter alia, that “the alleged similarity of the goods and services… is not relevant to the UDRP procedure.”
Complainant is the owner of a registration for the PARCELHUB Trademark as set forth above. The Panel’s own research discloses that the application for this registration was filed on July 21, 2011, and that the mark was registered on February 15, 2013.[i]
The Disputed Domain Name was created on March 1, 2012, and does not currently resolve to an active website.
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.
Based upon the trademark registration cited by Complainant (and the Panel’s independent confirmation thereof), it is apparent that Complainant has rights in and to the PARCELHUB Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the PARCELHUB Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “parcelhub”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview 3.0, section 1.11.1.
The Disputed Domain Name contains the PARCELHUB Trademark (and only the PARCELHUB Trademark) in its entirety. As set forth in section 1.7 of WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Further, where, as here, a disputed domain name contains a complainant’s trademark, and only such trademark, “it is apparent without the need for elaboration, that the Disputed Domain Name is identical or confusingly similar to” the trademark, Société Air France v. Indra Armansyah, WIPO Case No. D2016-2027, because in such case “[t]he disputed domain name is obviously identical to the Complainant’s mark.” Icebug AB v. Domain Administrator, WIPO Case No. D2013-1823.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
“The applicable standard of proof in UDRP cases is the ‘balance of probabilities’ or ‘preponderance of the evidence’; some panels have also expressed this as an ‘on balance’ standard. Under this standard, a party should demonstrate to a panel’s satisfaction that it is more likely than not that a claimed fact is true…. [C]onclusory statements unsupported by evidence will normally be insufficient to prove a party’s case.” WIPO Overview 3.0, section 4.2.
Here, Complainant has provided no evidence that Respondent lacks rights or legitimate interests and does not even make a conclusory statement (with or without evidence, for that matter) that Respondent fails to establish rights or legitimate interests under any of the three enumerated sections of paragraph 4(c) of the Policy. Rather, as set forth above, the entirety of Complainant’s argument on this element of the Policy is that “Respondent does not have the Complainant’s permission or consent to use the Complainant’s registered trade mark to re-direct users to its own website” and “[t]he Respondent has no relevant registered or unregistered rights or legitimate interests in respect of the mark ‘Parcelhub’.” Complainant does not address whether Respondent has used or made demonstrable preparations to use the Disputed Domain Name in “connection with a bona fide offering of goods or services” (Policy, paragraph 4(c)(i)); whether Respondent has been “commonly known by” the Disputed Domain Name (Policy, paragraph 4(c)(ii)); or whether Respondent is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue” (Policy, paragraph 4(c)(iii)).
Accordingly, in the absence of any evidence or relevant arguments from Complainant, the Panel finds that Complainant has failed to prove the second element of the Policy.
In light of its findings above, the Panel need not address the third element of the Policy, that is, whether the Disputed Domain Name was registered and is being used in bad faith. However, the Panel reaches the same conclusion here, for essentially the same reasons, that is, conclusory statements unsupported by evidence.
Notably, the Panel observes that Complainant has not specifically cited any of the bad faith circumstances set forth in paragraph 4(b) of the Policy. And although these circumstances are not exhaustive, Complainant sets forth no theory of bad faith other than a broad statement that Respondent’s previous redirection of the Disputed Domain Name “caus[es] confusion” with Complainant’s “well-established brand.” This theory cites no evidence or precedent under the Policy (and, indeed, Complainant’s entire Complainant and additional submission is devoid of any such authority). Further, it is most unlikely that a single trademark registration issued after creation of a disputed domain name constitutes such a strong brand that registration of the domain name must necessarily be in bad faith.
Accordingly, in the absence of any evidence or relevant arguments from Complainant, the Panel finds that Complainant has failed to prove the third element of the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <parcelhub.com> domain name REMAIN WITH Respondent.
Douglas M. Isenberg, Panelist
Dated: September 1, 2021
[i] “[I]t has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision,” such as by “accessing trademark registration databases.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6.
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