WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Burlington Networks Inc. v. Paul Brodeick Case No. D2010-0069 1. The Parties
The Complainant is Burlington Networks Inc. of New York, United States of America, represented by Knobbe, Martens, Olson & Bear, LLP, United States of America (“United States” or “U.S.”).
The Respondent is Paul Brodeick of London, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2010. On January 14, 2010, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On January 21, 2010, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 15, 2010.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on February 22, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant operates an international transportation and logistics company under the BAX, BAX Global and DB Schenker names. The Complainant employs over 91,000 staff, in 2,000 locations in 130 different countries around the world. The Complainant is an integrated logistics service provider, offering transport services in the United States, the United Kingdom, and many other countries since October 1, 1997 under the BAX and BAX GLOBAL marks. The Complainant is the owner of many related trademarks, including: BAX, BAX GLOBAL, BAX GLOBAL & Design; BAXSUITE, BAX CONNEX, BAXSAVER, BAXTRAX, BAXSHIP and BAX FOWARDER NETWORK. The Complainant also owns several domain names and operates a number of websites, including , and . The Complainant has extensively marketed its services under the BAX trademarks, and has developed broad recognition among consumers in the United States of America, the United Kingdom and other jurisdictions.
The Respondent registered the disputed domain name on March 17, 2006. The domain name reverts to a website that offers identical services of the Complainant, namely transportation and logistics services. 5. Parties' Contentions A. Complainant (a) Identical or Confusingly Similar
The Complainant contends that the domain name is confusingly similar to the Complainant's trademark BAX GLOBAL.
The Complainant owns trademark registrations for BAX GLOBAL, namely U.S. Registration No. 2,203,322 (November 10, 1998); BAX GLOBAL & Design U.S. Registration No. 2,216,761 (January 5, 1999); BAX GLOBAL & Design U.S. Registration No. 2,293,335 (November 16, 1999); BAX GLOBAL & logo European Registration No. 639880 (April 9, 1999); and BAX GLOBAL & logo Nigerian Registration No. 74515 (January 28, 1998).
The Complainant contends that the domain name is essentially identical to the Complainant's trademark BAX GLOBAL, except for the addition of the word “-express” after the mark BAX GLOBAL and the “.com” designation. The Complainant submits that the “.com” designation should not be taken into consideration when examining the identity or confusing similarity of trademarks and domain names. Furthermore, the addition of the word “-express” directly after the trademark BAX GLOBAL does not serve to distinguish the disputed domain name from the trademark. The word “express” is commonly used in the transportation and logistic services industry to denote the type of service offered. Accordingly, the Complainant contends that the domain name is confusingly similar to the Complainant's trademark. (b) Rights or Legitimate Interests
The Complainant contends that the Respondent cannot demonstrate or establish any right or legitimate interest in the disputed domain name. The Respondent is not commonly known by the domain name, and has not been licensed or otherwise permitted to use the trademark as a domain name or otherwise. The Complainant also contends that the Respondent is not making a legitimate noncommercial or fair use of the domain name, or making any bona fide offering of goods and/or services. The Complainant submits that the Respondent is using the disputed domain name in connection with the operation of a website that promotes freight forwarding and logistic services under the trade names “Bax Global” and “Bax Global Intercontinental Express Limited” among others. The Respondent is alleged to be misappropriating the Complainant's trade name and mark to operate a website which trades off the goodwill of the Complainant by offering identical services to that of the Complainant. (c) Registered and Used in Bad Faith
The Complainant contends that the domain name was registered and is being used in bad faith based on the following factors: (i) the Respondent was aware of the Complainant's rights in the BAX GLOBAL trademark at the time the Respondent registered a confusingly similar domain name; (ii) the trademark BAX GLOBAL is a coined term, with no meaning; (iii) the Respondent intentionally registered a domain name that is confusingly similar to the Complainant's trademark, as a deliberate attempt to divert Internet traffic intended for the Complainant to the Respondent's website; (iv) the Respondent registered and is using a confusingly similar domain name in connection with the operation of a website which provides identical transportation and logistics services as those of the Complainant; and (v) Respondent is engaging in a pattern of registering and using domain names which incorporate the Complainant's trademark BAX GLOBAL, and which are confusingly similar to the Complainant's trademark, so as to trade on the reputation and goodwill associated with the Complainant for the purposes of monetary gain. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established its trademark rights in BAX GLOBAL as evidenced by the trademark registrations submitted with the Complaint, namely U.S. Registration Nos. 2,203,322; 2,216,761; 2,293,335; European Registration No. 639880 and Nigerian Registration No. 74515.
The Panel is also prepared to find that the domain name is confusingly similar to the Complainant's trademark BAX GLOBAL. The addition of the word “express” after the trademark BAX GLOBAL does not serve to distinguish the disputed domain name from the Complainant's trademark. The word “express” is a common word in the English language, meaning a rapid form of delivery, or special messenger and accordingly, the word “express” simply denotes the type of service provided. The addition of the word “express” does not serve to reduce confusion between the trademark and the domain name. Furthermore, the addition of the “.com” designation or a hyphen also does not serve to distinguish the disputed domain name from the Complainant's trademark in any meaningful way.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel finds no evidence that the Respondent ever had any rights or legitimate interests in the disputed domain name.
The Respondent was not known by the disputed domain name and is not using the domain name in connection with a bona fide offering of goods and services.
The Panel also accepts that the Complainant never authorized, licensed or permitted the Respondent to use the BAX GLOBAL trademark.
In light of the Respondent's failure to file any response on this point, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Complainant has operated a substantial business offering transportation and logistic services internationally under the BAX GLOBAL trademark and trade name since October 1997. The Complainant has business locations in 130 countries around the world, employing over 91,000 employees. The Complainant has business locations in the U.S., and the United Kingdom, and accordingly has a business presence in the countries where the Respondent resides and/or does business.
The name BAX GLOBAL is a coined name, and has no other meaning than to denote the services offered by the Complainant.
The Complainant operates several websites, and has extensively promoted and advertised its transportation and logistics services under the BAX GLOBAL name and trademark.
Accordingly, the Panel is prepared to find that the Complainant's trademark BAX GLOBAL has a significant reputation and is widely-known in a number of countries, and in particular where the Respondent is located. Therefore, the Panel is prepared to infer that the Respondent must have known of the Complainant's trademark when it registered the disputed domain name and did so with the intention to trade on the goodwill and reputation of the Complainant.
The Respondent has registered and appears to be using the domain name in connection with a website which offers transportation and logistics services which are identical to those of the Complainant. The addition of the word “express” directly after the trademark merely adds to the confusion, in that the word “express” denotes the type of rapid delivery or special messenger service which an Internet user may be searching for and require. The Respondent is clearly attempting to divert Internet traffic intended for the Complainant's website, and by so doing, the Respondent is interfering with the legitimate commercial business of the Complainant.
For all of these reasons, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. Therefore, the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Christopher J. Pibus
Sole Panelist
Date: March 4, 2010
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