Complainant is Asendia Management, France, represented by Selarl Marchais & Associés, France.
Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America (“United States”) / Jide Amoo, Nigeria. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2020. On February 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 29, 2020, 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 Complainant on March 4, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on March 5, 2020. The Center verified that the Complaint together with the amendment to 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 March 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2020. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2020. The Center appointed Phillip V. Marano as the sole panelist in this matter on April 20, 2020. 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 Complainant is an international joint venture between French La Poste and Swiss Post. Complainant is one of the world’s largest international mail, shipping and distribution organizations, delivering ecommerce, business mail, direct mail, press and publishing, and parcel services around the globe. Complainant owns valid and subsisting registrations for the ASENDIA trademark in numerous countries, with the earliest priority dating back to May 3, 2011. Respondent registered the disputed domain name on February 13, 2020. At the time of the Complaint, the disputed domain name resolved to a website that used Complainant’s ASENDIA trademark in connection with Respondent’s putative packing, courier, and cargo services. 5. Parties’ Contentions A. Complainant Complainant asserts ownership of the ASENDIA trademark and has adduced evidence of trademark registrations in numerous regions and countries around the world including in Australia, China, the European Union, and the United States, with earliest priority dating back to May 3, 2011. The disputed domain name is confusingly similar to Complainant’s ASENDIA trademark, according to Complainant, because it reproduces the entire ASENDIA trademark, which is highly and inherently distinctive, and the ASENDIA trademark constitutes the dominant portion of the disputed domain name. Furthermore, the descriptive acronym “ds”, merely refers to “distribution system” and describes Complainants’ services, according to Complainant. Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the lack of any authorization by Complainant for Respondent to use the ASENDIA trademark; the lack of any evidence that Respondent, “Domain Admin”, is known by the word “Asendia”; and Respondent’s use in connection with a website which used the ASENDIA trademark in connection with directly competing services to mislead consumers into thinking Respondent is Complainant or is, in some way or another, connected to, sponsored by or affiliated with Complainant. Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: the “famous” and “highly distinctive inherently” nature of the ASENDIA trademark; and Respondent’s aforementioned use of the disputed domain name and the ASENDIA trademark to impersonate Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings In order to succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy: i. the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights; ii. 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. Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. UDRP panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”). A. Identical or Confusingly Similar Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0 , section 1.2.1 . Complainant submitted evidence that the ASENDIA trademark has been registered in numerous regions and countries around the world with priority dating back to May 3, 2011, nearly nine years before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the ASENDIA trademark have been established pursuant to the first element of the Policy. The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s ASENDIA trademark. In this Complaint, the disputed domain name is confusingly similar to Complainant’s ASENDIA trademark because, disregarding the “.com” generic Top-Level Domain (“gTLD”), the trademark is contained in its entirety within the disputed domain name and composes the dominant element of the disputed domain name. WIPO Overview 3.0 , section 1.7 (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n 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...”). gTLDs, such as “.com” in the disputed domain name, are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0 , section 1.11 . The confusing similarity is not dispelled by combination with the “ds” at the end of the disputed domain name. WIPO Overview , section 1.8 (Additional terms “whether descriptive, geographic, pejorative, meaningless, or otherwise” do not prevent a finding of confusing similarity where the relevant trademark is recognizable within the disputed domain name); seealso OSRAM GmbH v. Cong Ty Co Phan Dau Tu Xay Dung Va Cong Nghe Viet Nam,WIPO Case No. D2017-1583 (“[T]he addition of the letters ‘hbg’ to the trademark OSRAM does not prevent a finding of confusing similarity between the Disputed Domain Name and the said trademark”). In view of Complainant’s registration for the ASENDIA trademark, and Respondent’s incorporation of that trademark in its entirety in the disputed domain name, the Panel concludes that Complainant has established the first element of the Policy. B. Rights or Legitimate Interests Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview, section 2.1. It is evident that Respondent, identified by registration data for the disputed domain name as “Jide Amoo”, is not commonly known by the disputed domain name or Complainant’s ASENDIA trademark. UDRP panels have categorically held that use of a domain name for illegal activity – including the impersonation of the complainant and other types of fraud – can never confer rights or legitimate interests on a respondent. Circumstantial evidence can support a credible claim made by a complainant asserting a respondent is engaged in such illegal activity, including that the respondent has masked its identity to avoid being contactable, or that the respondent’s website has been suspended by its hosting provider. WIPO Overview 3.0, section 2.13. See e.g. Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge,WIPO Case No. D2009-1017 (“Respondent has used the domain name to pretend that it is the Complainant and in particular to create false emails pretending that they are genuine emails coming from the Complainant and one of its senior executives”). Seealso The Commissioners for HM Revenue and Customs v. Name Redacted,WIPO Case No. D2017-0501 (“In addition, the disputed domain names … have had their web hosting suspended as a result of fraudulent activities. This is evidence of bad faith registration and use of the disputed domain names.”). In this particular Complaint, it is evident that Respondent has masked its identity and attempted to impersonate Complainant through Respondent’s website, which makes unauthorized use of the identical ASENDIA trademark in connection with putative shipping and courier services. In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name, Respondent’s use of a proxy registration service to mask its identity, and Respondent’s use of its website to impersonate Complainant, the Panel concludes that Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name: i. circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or ii. Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or iii. Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or iv. by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. UDRP panels have categorically held that registration and use of a domain name for illegal activity – including impersonation, passing off, and other types of fraud – is manifestly considered evidence of bad faith within paragraph 4(b)(iv) of the Policy. WIPO Overview 3.0, section 3.1.3. Use of the disputed domain name by Respondent to pretend that it is Complainant or that it is associated with Complainant “brings the case within the provisions of paragraph 4(b)(iii) of the Policy, for it shows Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, namely Complainant.” Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge,WIPO Case No. D2009-1017; seealso GEA Group Aktiengesellschaft v. J. D.,WIPO Case No. D2014-0357 (concluding that Respondent’s use of the disputed domain name to disrupt the Complainant’s business by using it to impersonate the Complainant for commercial gain was evidence of respondent’s bad faith registration and use of the disputed domain name). In particular, Respondent’s website banner prominently features the ASENDIA trademark. Respondent’s website content and menu allege that “Asendia Delivery Service an international security and courier, a well-known company in the areas of international and domestic couriers” [sic] offering putative “free pickup”, “free packing”, “international courier”, “door to door courier” “airport to airport courier”, “sea cargo” and “domestic courier” services. Respondent’s website content further asserts, “In a short business span of 8 years we have tied up with many corporate and semi-corporate co. for their domestic & overseas courier requirements,” making a clear attempt to impersonate Complainant. It is not necessary for Complainant to connect Respondent’s unauthorized use of the ASENDIA trademark and impersonation of Complainant to further illegal activity, such as phishing or the distribution of malicious code. Finally, where it appears that a respondent employs a privacy or proxy service merely to avoid being notified of a UDRP proceeding filed against it, UDRP panels tend to find that this supports an inference of bad faith. WIPO Overview 3.0 , section 3.6 . Use of a privacy or proxy registration service to shield a respondent’s identity and elude or frustrate enforcement efforts by a legitimate complainant demonstrates bad faith registration and use of a disputed domain name. See Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696 (the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive, illegal, or irresponsible conduct). In view of Respondent’s use of a proxy registration service to mask its identity and Respondent’s attempted impersonation and attempts to passing itself off as Complainant, the Panel concludes that Complainant has established 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 disputed domain name Phillip V. Marano
Sole Panelist
Date: May 11, 2020
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