The Complainant is GD Express Carrier Berhad, Malaysia, represented by Leason Ellis LLP, United States of America (United States”).
The Respondents are WhoisGuard Protected, WhoisGuard, Inc., Panama / PrivacyGuardian.org, United States / Richard Hash, Nigeria / Safety Shipping, Nigeria / Emmanuel Ijezie, Nigeria. 2. The Domain Names and Registrars
The disputed domain names The disputed domain names (the “Registrars”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2020. On October 5, 2020, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On October 5, 2020, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on October 8, 2020 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 14, 2020. 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 Respondents of the Complaint, and the proceedings commenced on October 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2020. The Respondents did not submit any response within the due date. Accordingly, the Center notified the Respondents’ default on November 14, 2020. On November 13, 2020, an unsigned email communication was received by the Center apparently on behalf of the registrant of the disputed domain name The Center appointed Assen Alexiev as the sole panelist in this matter on November 23, 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 The Complainant was established in 1997. It is a publicly traded company which provides express delivery services in Malaysia and internationally through a network of 223 stations. The Complainant is the owner of the following trademark registrations for the signs GDEX, GD EX, and GD EXPRESS (the “GD EX trademark”): - the trademark GD EX with registration No. 03014652, registered in Malaysia on October 29, 2003 for services in International Class 39; The Complainant’s official website is located at the domain name The disputed domain name The disputed domain name The disputed domain name The disputed domain name According to the Complainant, the disputed domain names are confusingly similar to the Complainant’s GD EX trademark. The “express”, “xpress” and “courier” elements of the disputed domain names are common descriptors for the Complainant’s services, and their inclusion does not diminish the confusing similarity between the disputed domain names and the Complainant’s GD EX trademark. The Complainant submits that the Respondents do not have rights or legitimate interests in the disputed domain names, as they are not sponsored by or affiliated with the Complainant, the Complainant has not given them permission to use the Complainant’s GD EX trademark, and the names of the Respondents as disclosed by the Registrars show that they are not commonly known by the disputed domain names. According to the Complainant, the Respondents are not making a bona fide use of the disputed domain names because they use the Complainant’s GD EX trademark for fictitious courier websites that are part of a larger common scheme. The websites at the disputed domain names The Complainant contends that the disputed domain names were registered and are being used in bad faith. It submits that as it is a global courier company which has marketed and sold its services using the GD EX trademark since 1997, as a result of which these trademarks have become known internationally long before the Respondents’ registration of any of the disputed domain names. The Complainant points out that by incorporating variants of the Complainant’s trademarks with the addition of the related term “courier”, the Respondents have created domain names that are confusingly similar to the Complainant’s trademarks and to its The Complainant submits that the disputed domain names are being used for fake courier websites, which are part of a larger network of fake courier websites under common control. The Complainant points out that the websites at the disputed domain names provide no information relating to rates, pick-up locations, or delivery schedule, but invite inquiries through contact forms requesting personal information, and provide package tracking services, which suggest that they may be part of a phishing scheme. The Complainant notes that the disputed domain name The Complainant also states that the Respondents have provided inaccurate contact data to the Registrars. B. Respondent The only communication received by the Center from any of the Respondents was the following unsigned message of November 13, 2020: “I received complaint concerning gdcourierexpress.com a domain I duly registered with a domain register. I received both email and hard copy from DHL and have gone through all the copies. I have accepted to either transfer this domain to complainant or totally close them down if the complainant will pay me off. This will help me to cover some expenses related to this domain and also get another unique domain. Thank you” This message was sent from the email address indicated by the Registrar NameSilo, LLC as the email address of Emmanuel Ijezie – the registrant of the disputed domain names The Complainant requests the consolidation of the proceedings in respect of the disputed domain names, maintaining that all of them are under common control. According to the Complainant, all of the disputed domain names were registered using fake identities and addresses in Nigeria to create fake courier websites, using the same infringing version of the Complainant’s GD EX trademark to target the Complainant. The Complainant notes that Lagos, Sokoto and Imo are real locations in Nigeria, but the registrant names, their telephone numbers, street names, and email addresses cannot be verified as being connected to real individuals or legitimate businesses, and the information for these registrants is not connected to the content on any of the websites at the disputed domain names. According to the Complainant, these websites are part of a larger network of websites with shared templates and art that target courier companies and attempt some form of scam aimed at the customers of courier services. The Center has discharged its duties to notify the persons listed as registrants of the disputed domain names. Neither of these persons has submitted a formal Response in this proceeding. The informal communication sent by one of the Respondents does not reject the requests and statements made by the Complainant in relation to the consolidation of the disputes in respect of the disputed domain names. Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes, and paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. As discussed in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where a complaint is filed against multiple respondents, panels look at whether the domain names or corresponding websites are subject to common control, and whether the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in the content or layout of websites corresponding to the disputed domain names, any naming patterns in the disputed domain names, or other arguments made by the complainant. The Panel is satisfied that the Complainant has shown good reasons why the consolidation of the respondents and disputes related to the disputed domain names in a single proceeding is justified and appropriate in the circumstances. The disputed domain names all include combinations of the distinctive “gd” element of the Complainant’s GD EX trademark with the dictionary terms “courier”, “services”, and “express” or “xpress”, which describe the Complainant’s services, and the websites at three of the disputed domain names are similar in design and content, while the registrant of the fourth of them is the same as the registrant of one of the others. The Panel notes that the only email communication received by the Center coming from a registrant’s email address displays in the heading a name different to the one used for the registration, and that the name Gothamnuel Le Powell (identified in at least one of the Respondents’ websites) does not correspond to the name of any of the registrants, which points towards the use of aliases, or fake names. The Panel further notes that part of the contact details provided by the Respondents to the Registrars are incorrect or non-existent. These satisfy the Panel that it is more likely than not that all of the disputed domain names are under common control. None of the listed registrants of the disputed domain names has objected to the consolidation request of the Complainant or advanced any reasons why it may not be equitable to allow the consolidation of the disputes. It appears that the consolidation would lead to greater procedural efficiency, and the Panel is not aware of any reasons why the consolidation would not be fair and equitable to all parties. Therefore, the Panel decides to allow the consolidation of the disputes in relation to all of the disputed domain names in the present proceeding. 6.2. Substantive issues Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names: (i) each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and (iii) the Respondents have registered and are using the disputed domain names in bad faith. By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […].” Neither of the Respondents has however submitted a formal Response or disputed the Complainant’s contentions and evidence in this proceeding, apart from what is contained in the short unsigned communication reproduced in section 5.B above. A. Identical or Confusingly Similar The Complainant has provided evidence that it is the owner of the GD EX trademark. In view of this, the Panel accepts that the Complainant has established its rights in this trademark for the purposes of the present proceeding. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview 3.0. The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” and “.online” gTLDs of the disputed domain names. Each of the disputed domain names incorporates the dominant “gd” element of the GD EX trademark in combination with the dictionary words “courier”, “services”, “express” or “xpress”, which describe the Complainant’s services. The elements “express” or “xpress” can also be understood as an equivalent to the “ex” element of the GD EX trademark (and as a reproduction of the “ex” element of the GD EX trademark in full or in part). As discussed in sections 1.7 and 1.8 of the WIPO Overview 3.0, in cases where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element. The Panel also notes that the content of the websites at three of the disputed domain names affirms such finding. In view of the above, the Panel finds that the disputed domain names are confusingly similar to the GD EX trademark in which the Complainant has rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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. See section 2.1 of the WIPO Overview 3.0. The Complainant contends that the Respondents have no rights or legitimate interests in the disputed domain names, as they are not sponsored by or affiliated with the Complainant, the Complainant has not given them permission to use the Complainant’s GD EX trademarks, and the names of the Respondents as disclosed by the Registrars show that they are not commonly known by the disputed domain names. According to the Complainant, the Respondents are not making a bona fide use of the disputed domain names because they use the Complainant’s GD EX trademarks for fictitious courier websites that are part of a larger network of fake courier websites and may be part of a phishing scheme. The Complainant also notes that the Respondents have failed to legitimately use the disputed domain name None of the Respondents has submitted a formal Response. The informal unsigned email communication to the Center, dated November 13, 2020, contains a statement that the sender of the message agrees to transfer or “close down” the disputed domain name The Respondents have registered four disputed domain names that are all confusingly similar to the GD EX trademark and to the Complainant’s domain name In view of the above, and as discussed in section 6.1 above, it appears as more likely than not that the disputed domain names are under common control and have been registered and used to impersonate the Complainant as part of a network of fake courier websites that may be used for illegitimate activities such as phishing. Such conduct is not legitimate and does not give rise to rights or legitimate interests of the Respondents in the disputed domain names. Therefore, the Panel finds that the Respondents do not have rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” The disputed domain names all incorporate the distinctive and dominant “gd” element of the GD EX trademark, which was registered more than 14 years prior to their registration, in combination with the dictionary words “courier”, “services”, “express” or “xpress”, which describe the Complainant’s services. This makes them confusingly similar to the GD EX trademark and to the Complainant’s official domain name Taking the above into account, the Panel concludes that it is more likely than not that the Respondents have registered these disputed domain names acting in concert, with knowledge of the Complainant and targeting the GD EX trademark in an attempt to attract traffic to the disputed domain names by confusing Internet users that they are reaching official online locations where the Complainant’s services are provided. In view of the fact that the websites at the disputed domain names In view of the above, the Panel accepts that by registering and using the disputed domain names The disputed domain name Therefore, the Panel finds that the disputed domain names have been registered and used in bad faith. 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 names Assen Alexiev
- the trademark GD EX GD EXPRESS with registration No. T0625926D, registered in Singapore on November 28, 2006 for services in International Class 39;
- the trademark GD EX with registration No. 4/2007/9283, registered in Philippines on January 7, 2008 for services in International Class 39;
- the trademark GD EX with registration No. บ38378, registered in Thailand on May 29, 2008 for services in International Class 39;
- the trademark GD EX with registration No. IDM000193031, registered in Indonesia on February 11, 2009 for services in International Class 39;
- the trademark GD EX with registration No. 40131206000, registered in Viet Nam on August 11, 2009 for services in International Class 39; and
- the trademark GD EX with registration No. 1660176, registered in Australia on November 24, 2014 for services in International Class 39.
Sole Panelist
Date: December 11, 2020
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