The Complainant is World Courier Management, Inc. of New Hyde Park, New York, United States of America (“United States”) represented by Kutak Rock LLP, United States.
The Respondent is Whoisguard Protected, Whoisguard Inc. of Panama City, Panama / Uyi Edionwe of Benin City, Edo, Nigeria. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2017. On March 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 9, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 9, 2017.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 7, 2017.
On April 9, 2017, the Respondent submitted an informal communication. The Center informed the Parties of the possibility to suspend the proceeding in order to pursue settlement negotiations on April 10, 2017. On the same day, the Complainant confirmed that it did not want to suspend the proceeding.
The Center appointed Alistair Payne as the sole panelist in this matter on April 25, 2017. 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 owns and operates a global logistics business that trades in over 50 countries under the trade mark WORLD COURIER and which has been in existence for 45 years. The Complainant owns various registered trade marks in the United States that comprise or incorporate its WORLD COURIER mark, including registration 5032651 for the word mark WORLD COURIER registered on August 30, 2016, registration 3143346 for a combined word and logo mark incorporating WORLD COURIER registered on September 12, 2006, and registration 3143326 also for a combined word and logo mark incorporating WORLD COURIER registered on September 12, 2006. The Complainant operates a website for its business at “”.
The Respondent registered the disputed domain name on July 21, 2016. At the date of filing of the Complaint there was no website at the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to its registered trade marks as noted above in that it differs from its word mark registration only by the addition of the letter “s” and is confusingly similar to its combined word and logo mark registrations.
The Complainant submits that the Respondent is not commonly known by the disputed domain name, has no permission from the Complainant to use its WORLD COURIER mark and is not making a legitimate noncommercial or fair use of the disputed domain name. Further the Complainant notes the Respondent’s use of a privacy service to hide its identity which it says is not consistent with legitimate conduct and reinforces the inference that the Respondent has used the disputed domain name for fraudulent purposes as described below.
In the affidavit of the Complainant’s counsel made in support of the Complainant’s case, said counsel deposes that he visited the Respondent’s website at the disputed domain name in July 2016. He says that he found a site that purported to be a worldwide shipping and exporting site and that the Respondent called itself “W” and purported to be a “one stop freight and customs provider” and purported to provide the same logistics and customs service as the Complainant. He says that the WORLDSCOURIER mark was displayed prominently at the top of the website and that this was all clearly an attempt to pass itself off fraudulently as the Complainant. He notes that the website was still active as at December 2016 but had been removed by March 3, 2017.
The Complainant says that this amounts to the Respondent seeking to disrupt its business and amounts to evidence of registration and bad faith in terms of paragraph 4(b)(iii) of the Policy or to registering a confusingly similar domain name with a view to confusing Internet users and diverting them to its website in terms of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not submit any substantive reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant owns United States word mark registration 5032651 for WORLD COURIER and various other combined word and logo trade mark registrations, as noted above, of which the key feature is the word mark WORLD COURIER. The operative part of the disputed domain name differs from the Complainant’s trade mark only by the inclusion of an “s” and as a result the Panel finds that it is confusingly similar to the Complainant’s registered trade mark rights. It follows that the Complaint succeeds under this element of the Policy. B. Rights or Legitimate Interests
The Complainant has submitted that the Respondent is not commonly known by the disputed domain name, has no permission from the Complainant to use its WORLD COURIER mark and is not making a legitimate noncommercial or fair use of the disputed domain name. For the reasons set out under section 6.C. below it appears that the Respondent has not made a bona fide use of the disputed domain name and has attempted to confuse Internet users and to divert them to its website. In addition, the Respondent has attempted to mask its identity behind a privacy service. Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests under this element of the Policy which has not been rebutted by the Respondent and therefore the Complaint succeeds under this element of the Policy. C. Registered and Used in Bad Faith
The Complainant commenced its business many years ago and owns a variety of trade mark registrations that incorporate its WORLD COURIER mark as a fey feature from as early as 2005. The Complainant also operates a website for its business from “” and operates in numerous countries worldwide. The disputed domain name was only registered by the Respondent in 2016, by which time the Complainant’s global business was very well established and the Panel infers that considering the Respondent’s efforts on its website to emulate the Complainant’s business that the Respondent must have been aware of the Complainant’s trade mark and business when it registered the disputed domain name and accordingly that the Respondent registered the disputed domain name in bad faith.
Although the Complainant has not provided screen shots of the Respondent’s website at the disputed domain name as it existed up until March 2017, it has provided evidence on affidavit by its counsel who had previously investigated the site prior to bringing this Complaint upon the Complainant’s behalf. Said counsel has deposed that he found a site at the disputed domain name that purported to be a worldwide shipping and exporting site, that the Respondent called itself “W” and purported to be a “one stop freight and customs provider” and purported to provide the same logistics and customs service as the Complainant. He says that the WORLD COURIER mark was displayed prominently at the top of the website.
The Respondent has had the opportunity to challenge this evidence but has failed to file a substantive response in these proceedings. The fact that the above mentioned website no longer appears at the disputed domain name seems to support the Complainant’s allegation in this regard. In this event, the Panel accepts this evidence and infers that by using the disputed domain name the Respondent has intentionally sought to attract Internet users to its website for its own commercial purposes by creating a likelihood of confusion the Complainant’s WORLD COURIER mark so as to confuse Internet users into thinking that they were at the Respondent’s or an affiliated website. Under paragraph 4(b)(iv) of the Policy this amounts to evidence of registration and of use in bad faith and as a result the Panel finds that the Complaint also succeeds under this element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: May 5, 2017
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