Complainant is Old Dominion Freight Line, Inc., United States of America (the “United States”), represented by Nelson Mullins Riley & Scarborough, L.L.P., United States.
Respondent is Tyrone B. Bryant, ODFL Services, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2019. On November 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 4, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 2, 2019. The Center appointed Christopher S. Gibson as the sole panelist in this matter on December 5, 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 Founded in 1934, Complainant is a less-than-truckload (“LTL”) motor carrier providing regional, inter-regional and national LTL services. Complainant is the fourth largest LTL motor carrier in the United States, as measured by 2017 revenue, according to Transport Topics. As of December 31, 2018, Complainant operated 235 service center locations, with a fleet of 9,254 tractors, 24,685 line-haul trailers, and 11,044 pickup and delivery trailers. Complainant’s service offerings, which include expedited transportation, are provided through a network of service centers located throughout the continental United States. Through strategic alliances, Complainant also provides LTL services throughout North America. In addition to Complainant’s core LTL services, Complainant offers a range of value-added services including container drayage, truckload brokerage and supply chain consulting. Since as early as 1954, Complainant has continuously used the OD, OD (with logo), and OLD DOMINION FREIGHT LINE service marks in connection with the marketing, advertising, promotion, and rendering of Complainant’s LTL freight services. In addition, Complainant has continuously used its ODFL service mark since 1998, and its HELPING THE WORLD KEEP PROMISES slogan since 2008. Complainant owns the following federal service mark registrations in the United States: Trademark Registration No. Registration Date Goods/Services OD 2,732,250 July 1, 2003 Class 39: Transportation services, namely; freight transportation by truck, train, and air. OD (with logo) 2,759,014 September 2, 2003 Class 39: Transportation services, namely, the transportation of freight for others by truck, train and air. OLD DOMINION FREIGHT LINE 4,316,040 April 9, 2013 Class 39: Transportation services, namely, freight transportation by truck, train and air. ODFL 4,268,384 April 9, 2013 Class 39: Transportation services, namely, freight transportation by truck, train and air. HELPING THE WORLD KEEP PROMISES 3,706,390 November 3, 2009 Class 39: transportation services, namely, the transportation of freight for others by truck, train and air. Complainant registered and has continually used the Respondent registered the Domain Name on October 2, 2019. Since October 4, 2019, when Complainant became aware of the registration of the Domain Name, it was being used to host a website that attempts to mimic the look and feel of Complainant’s site. The Website includes unauthorized uses of Complainant’s OD, OD (with logo), OLD DOMINION FREIGHT LINE, and HELPING THE WORLD KEEP PROMISES service marks, purports to offer freight services identical to Complainant’s freight services, and includes, among other images, an image of a green tractor trailer similar to Complainant’s signature green tractor trailers. The links to subpages on the website do not resolve to active subpages. Complainant sent a letter to Respondent on October 4, 2019, requesting transfer of the Domain Name. Having received no response, Complainant sent a trademark abuse complaint to Cloudflare on October 7, 2019, the pass-through network services provider associated with Respondent’s website. After having received confirmation from Cloudflare on October 7, 2019 of the contact information for the web hosting company associated with Respondent’s website, on October 8, 2019 Complainant sent a website take down request to parallel web Cloud Services. While Complainant never received a formal response to the take down request, Complainant notes that upon checking on October 8, 2019, Respondent’s website had in fact been taken down. Subsequently, Complainant discovered that Respondent had obtained the services of a new web hosting company and, at least as early as October 28, 2019, had resumed use of the Domain Name to host its website, which continues to attempt to mimic Complainant’s website. 5. Parties’ Contentions A. Complainant Complainant seeks transfer of the Domain Name, which Complainant claims was registered and misappropriated by Respondent, an unknown entity purporting to be called “ODFL Services”. Complainant claims Respondent registered the Domain Name to trade off on Complainant’s well-known ODFL trademark. Further, Complainant fears that the Domain Name may be used in furtherance of phishing, pharming or other malicious activities directed at Complainant’s clients and potential clients given the likelihood of confusion created by the Domain Name and the content of the website that resolves there. (i) Identical or confusingly similar Complainant states that due to their long use in commerce and significant marketing, the OD, OD (with logo), OLD DOMINION FREIGHT LINE, ODFL, and HELPING THE WORLD KEEP PROMISES service marks have acquired a substantial amount of reputation and goodwill in the marketplace, which consumers recognize as belonging exclusively to Complainant. Long prior to registration of the Domain Name by Respondent on October 2, 2019, Complainant obtained common law rights in the ODFL service mark dating back to 1998. Subsequently, Complainant obtained a United States federal registration for its ODFL service mark on January 1, 2013. Complainant states this registration is incontestable, constituting conclusive evidence of the validity of the registered mark, of Complainant’s ownership of the mark, and of its exclusive right to use the mark in commerce. Complainant contends the Domain Name is confusingly similar to Complainant’s ODFL service mark. The Domain Name is comprised of Complainant’s ODFL service mark followed by the descriptive/generic term “services”. Complainant states it is well-established that adding a descriptive or generic word to a trademark in a domain name, particularly when such additional words relate to the goods or services with which the trademark is used, does not avoid confusing similarity. Accordingly, Complainant asserts it has established that the Domain Name is identical or confusingly similar to Complainant’s registered ODFL service mark in which Complainant has valid trademark rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. (ii) Rights or legitimate interests Complainant states that Respondent has no prior rights or legitimate interests in the Domain Name. Complainant has not authorized Respondent to use the ODFL marks. Respondent has not licensed the ODFL marks. Moreover, Complainant submits that Respondent is not commonly known by the name “ODFL Services”. Complainant states that while the WhoIs record for the Domain Name may list Respondent as ODFL Services, Google searches for “ODFL” and “ODFL Services” did not return any results for an entity of that name; instead, all of the results of these searches were related to Complainant. Likewise, a search of the California Secretary of State’s business database does not reveal any registered companies by that name. Accordingly, Respondent is not commonly known by the Domain Name and does not have any prior rights or legitimate interests in the Domain Name. Furthermore, Complainant contends that Respondent’s registration of the Domain Name, which is confusingly similar to Complainant’s ODFL service mark, was done intentionally to capitalize on the reputation and goodwill associated with the ODFL service mark to attract visitors to Respondent’s website, which was created to mimic Complainant’s website through unauthorized use and copying of Complainant’s ODFL marks. Complainant asserts that such assertions constitute more than a prima facie showing under paragraph 4(a)(ii) of the Policy, thereby shifting the burden of proof to Respondent to show that it has rights or legitimate interests in the Domain Name under paragraph 4(c) of the Policy. As previously noted, Respondent is not commonly known by the Domain Name and is not utilizing it for purposes related thereto. There is also no legitimate noncommercial or fair use of the Domain Name as Respondent’s website has no commentary or criticism of Complainant. Instead, Respondent is using the Domain Name to host a site that attempts to mimic Complainant’s site through unauthorized infringing use of Complainant’s service marks, including Complainant’s OD (with logo) mark and HELPING THE WORLD KEEP PROMISES slogan. Respondent will not be able to establish that it is making bona fide use of the Domain Name because legitimate rights or bona fide use do not exist when there is deliberate infringement of another’s rights. Based on the above, Complainant states it has established that Respondent does not have any rights or legitimate interests in the Domain Name, and therefore Complainant has satisfied the conditions of paragraph 4(a)(ii) of the Policy. (iii) Registered and used in bad faith Complainant states that “ODFL Services” does not appear to be an entity that actually exists, and that it appears Respondent has deliberately taken steps to ensure that its identity could not be determined. The provision of false information on applying for registration has been held to constitute bad faith. Such action is evidence of Respondent’s bad faith registration of the Domain Name. Complainant contends that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor in violation of the Policy, paragraph 4(b)(iii). Respondent knew of and specifically targeted Complainant’s ODFL marks when registering the Domain Name, as evidenced by the fact that the Domain Name wholly incorporates the ODFL service mark, and the content of Respondent’s website incorporates Complainant’s ODFL marks in an attempt to mimic Complainant’s site. There is no other reasonable explanation for the registration of the Domain Name when viewed in connection with the content displayed on Respondent’s site. As such, there can be no doubt that Respondent knew of and intentionally targeted the ODFL marks when registering and using the Domain Name, which in turn is evidence of Respondent’s bad faith. Furthermore, Complainant states that its ODFL marks are well-known and Respondent has no relationship with Complainant or the ODFL marks. Respondent also violates paragraph 4(b)(iv) of the Policy by using the Domain Name to attract Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s ODFL marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. In other words, Respondent’s bad faith registration and use of the Domain Name is evidenced by the fact that the Domain Name is being used to host the infringing website. Lastly, Respondent has not responded to Complainant’s cease and desist letters, which is evidence outside the confines of Policy, paragraphs 4(b)(i)-(iv), demonstrating Respondent’s bad faith registration and use of the Domain Name. For all the reasons above, Complainant urges that Respondent’s conduct constitutes bad faith registration and use of the Domain Name under the Policy. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that: (i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and (iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant has demonstrated that it has strong and longstanding trademark rights in its ODFL marks in the United States, where Respondent is located. Further, the Panel determines that the Domain Name is confusingly similar to the ODFL marks, as the Domain Name incorporates the mark in its entirety, while merely adding the dictionary word “services”. The addition of this word does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; see e.g., Accenture Global Services v. Name Redacted,WIPO Case No. D2018-1038 (panel found that the addition of the generic word “investments” in the disputed domain name Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its ODFL marks; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services – instead, the Domain Name has been used by Respondent to link to a website that impersonates Complainant and its website – using Complainant’s OD (with logo) and HELPING THE WORLD KEEP PROMISES marks – so that consumers are likely to believe that the services provided by Respondent are authorized or licensed by, or otherwise affiliated with, Complainant. See Chicago Mercantile Exchange Inc., CME Group Inc. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Nikolay Korobeynikov,WIPO Case No. D2016-0654 (finding no legitimate interest in website linked to disputed domain name, which mirrored, and purported to be, the website of “CME Group” and which provided information relating to the trading of futures and options); see also WIPO Overview 3.0, section 2.5.1 (even where domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner). Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii). C. Registered and Used in Bad Faith The third element of paragraph 4(a) of the Policy requires Complainant to demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. Here, the Panel determines that the Domain Name was registered and is being used in bad faith. The evidence suggests, on the balance of the probabilities, that Respondent was aware of and targeted Complainant and its ODFL marks when Respondent registered the Domain Name. The Panel observes that by the time Respondent registered the Domain Name in October 2019 – using a name that incorporates Complainant’s ODFL service mark in its entirety, along with the word “services” – Complainant had been using its ODFL marks for more than 20 years. Further, the Domain Name is so obviously connected with Complainant’s mark that the Panel considers the only logical conclusion is that Respondent was aware of and targeted Complainant and its ODFL marks mark when registering the Domain Name. See Accenture Global Services Limited v. ICS Inc. / PrivacyProtect.org,WIPO Case No. D2013-2098 (finding that it was unlikely that respondent was unaware of complainant and its ACCENTURE mark at the time the disputed domain name was registered, as complainant demonstrated that its mark was known and vested with significant goodwill). Further, the use of the Domain Name by Respondent, linked to a website that attempts to mimic Complainant’s own site, operates to attract consumers, for commercial gain, by incorporating Complainant’s ODFL marks in the Domain Name, thereby capitalizing on Complainant’s goodwill in its mark and creating a likelihood of confusion with the mark. Consumers could easily assume that Respondent site is related to, authorized, endorsed, licensed, or otherwise approved by Complainant. Respondent’s site is disruptive of Complainant’s business. See Dylos Corporation v. Yang,WIPO Case No. D2015-1959 (finding bad faith registration and use where the website to which the disputed domain name resolved mirrored the complainant’s site suggesting a desire to make commercial gain from the use of the disputed domain name and/or to defraud consumers). In conclusion, in this case, where Respondent notably failed to submit a reply to Complainant’s contentions, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third 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 Domain Name, Christopher S. Gibson
Sole Panelist
Date: December 17, 2019
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