The Complainant is VCK Holding B.V., Netherlands, represented by Novagraaf Nederland B.V., Netherlands.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / Nanfuk Wahidah, Thailand. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2019. On October 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2019, 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 October 11, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant chose not to submit an amended Complaint. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2019. On November 1, 2019, the Center received an email communication from the Respondent. On November 27, 2019, the Center sent an email communication to the Parties inviting them to explore settlement discussions. That same day, the Center received an email communication from the Complainant, requesting further information from the Respondent. On December 4, 2019, the Center received an email communication from an email address associated with the Respondent. On December 6, 2019, after no further party communication or request for suspension was received, the Center informed the Parties it would proceed to appoint the Administrative Panel. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on December 19, 2019. 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 is active in the logistics and transport services business. It is the owner of the following trademark registration (Annex 4 to the Complaint): - Benelux Trademark Registration No. 0967486 for the word and device mark VCK LOGISTICS, registered on March 4, 2015. The disputed domain name The Complainant, in a very brief submission, asserts that the disputed domain name incorporates the relevant part of the Complainant’s VCK LOGISTICS trademark, substituting the term “logistics” for the descriptive words “container line”. According to the Complainant, the “VCK” element of the Complainant’s trademark is fully incorporated in the disputed domain name, therefore the disputed domain name is confusingly similar to the Complainant’s trademark. As to the absence of rights or legitimate interests, the Complainant argues that: i. the Respondent does not own any rights over the trademark or denomination VCK CONTAINER LINE; ii. the Complainant has not given its consent to the Respondent to use and/or refer to the Complainant’s trademark; iii. there is no commercial link between the Respondent and the Complainant; and iv. by using the Complainant’s trademark, the Respondent falsely gives the impression that the disputed domain name is affiliated with the Complainant. As to bad faith registration and use of the disputed domain name, the Complainant asserts that the Respondent intentionally registered the disputed domain name so as to attract for commercial gain Internet users to the disputed domain name by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website at the disputed domain name. The Complainant cites evidence of a client being misled into doing business with the Respondent (Annex 9 to the Complaint) and another client having received a fraudulent shipment invoice depicting the Complainant’s logo as well as the address and Chamber of Commerce number of one of Complainant’s subsidiaries (Annexes 14 and 15 to the Complaint), which demonstrates the Respondent is intentionally misleading and confusing the public into believing that it is associated or affiliated with the Complainant. B. Respondent On November 1, 2019, the Center received an email communication from the Respondent stating that it was “taking the domain offline and deleting it from [the] registry”. On December 4, 2019, the Center received an email communication from an email address associated with the Respondent stating that it acknowledged receipt of the Complaint but offered no response. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present so as to have the disputed domain name transferred, according to the Policy. A. Identical or Confusingly Similar The Complainant has established rights in the VCK LOGISTICS trademark. The disputed domain name Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are: (i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it has not acquired trademark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. In that sense, the Complainant indeed states that there is no commercial link between the Respondent and the Complainant and that the Complainant has not given its consent to the Respondent to use and/or refer to the its trademark. Also, the absence of any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborates the absence of rights or legitimate interests. According to the evidence submitted, the Respondent has used the disputed domain name to intentionally mislead and confuse the public into believing that the Respondent is associated or affiliated with the Complainant, which cannot be considered a bona fide offering of goods or services under the Policy. The Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the use of the disputed domain name seeking to create a direct affiliation with the Complainant and its business, as seen above. Other factors that corroborate the Panel’s finding of bad faith of the Respondent are: a. the reproduction of the Complainant’s logo in the website that resolved from the disputed domain name; b. the reproduction of the Complainant’s subsidiary address and Chamber of Commerce number on an invoice sent by the Respondent to one of the Complainant’s clients; and c. the absence of a formal Response by the Respondent. For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) 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 Wilson Pinheiro Jabur
Sole Panelist
Date: January 2, 2020
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