Complainant is Averitt Express, Inc., United States of America (“United States”), represented by Adams and Reese LLP, United States.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Edward M. Gilbert, 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 February 17, 2021. On February 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 18, 2021, 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 February 19, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 19, 2021. 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 Respondent of the Complaint, and the proceedings commenced on February 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 15, 2021. The Center appointed Lawrence K. Nodine as the sole panelist in this matter on March 22, 2021. 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 and its predecessors have been using the AVERITT and AVERITT EXPRESS marks in connection with transportation services since at least as early as 1969 and 1971, respectively. Complainant is one of the leading freight transportation and supply chain management providers in the United States, operating over one hundred locations in the United States and provides freight and other transportation services to over three hundred international destinations in one hundred countries. Complainant owns registered trademarks for AVERITT and AVERITT EXPRESS in numerous jurisdictions, including: United States Registration No. 2619908, registered on September 17, 2002 and United States Registration No. 2616865, registered on September 10, 2002. Complainant also owns at least 20 domain registrations incorporating its AVERITT and AVERITT EXPRESS marks, and its primary domain name is Respondent registered the Disputed Domain Name on May 8, 2020. Complainant first learned of the Domain Name on February 11, 2021, when Complainant received an email from an individual inquiring about the status of a package, after that individual received an email from a sender at the Disputed Domain Name informing the individual that her package was “being held by Customs.” This individual, believing that the email had originated with Complainant, shared with Complainant’s customer service department screenshots of the email received from the sender at the Disputed Domain Name. The sender at the Disputed Domain Name (operating under the name “Averritt Express”) provided a false tracking number for a package, claimed that this package was being held by Customs (potentially due to “illegal materials” contained therein), and urged the individual to pay an “insurance fee” of USD 800 in Bitcoin in order to clear the package for delivery. The email then provided a link to the Disputed Domain Name, which, at the time of the filing of the Complaint, directed to a website displaying the mark “AVERRITT EXPRESS” and advertising services identical to those of Complainant, namely transportation and logistics services. On February 12, 2021, Complainant sent Respondent a cease-and-desist letter requesting that the Disputed Domain Name be transferred to Complainant. Respondent did not reply to Complainant’s letter. 5. Parties’ Contentions A. Complainant Complainant asserts that it has established rights in the marks AVERITT and AVERITT EXPRESS and that the Disputed Domain Name is confusingly similar to said marks. Specifically, Complainant contends that the Disputed Domain Name is essentially an abbreviated or misspelled version of Complainant’s AVERITT EXPRESS mark and domain name, creating a likelihood of confusion. Complainant further asserts that Respondent lacks rights or legitimate interests in the Disputed Domain Name and that Complainant has not licensed or authorized Respondent’s use of Complainant’s mark. Complainant contends that Respondent is not commonly known by the Disputed Domain Name and is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. Complainant specifically alleges that Respondent is using the Domain Name in furtherance of a phishing scam, by sending emails (purporting to be from “Averritt Express,” another obvious misspelling of the AVERITT EXPRESS mark) intended to deceive unsuspecting consumers into believing that their packages are being held by Customs, and that they must pay Respondent an “insurance fee” to clear their packages for delivery. As to Respondent’s bad faith, Complainant contends that Respondent registered the Disputed Domain Name with the intent to exploit Complainant’s mark and is using it to both perpetuate a phishing scam and to divert customers from Complainant. According to Complainant, Respondent’s actions are evidence of bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Complainant’s trademark registrations establish that it has rights in the AVERITT and AVERITT EXPRESS trademarks. The Disputed Domain Name is confusingly similar to Complainant’s marks. Respondent’s misspelling of the term “averitt” or abbreviation of the term “express” in the Disputed Domain Name 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 1.9. Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant has presented a prima facie case for Respondent’s lack of rights or legitimate interests in the Disputed Domain Name, which Respondent has failed to rebut. The use of a domain name for phishing schemes “can never confer rights or legitimate interests on a respondent”. WIPO Overview 3.0, section 2.13.1. The Panel finds that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Complainant has satisfied paragraph 4(a)(ii) of the Policy C. Registered and Used in Bad Faith Respondent registered and has used the Disputed Domain Name in bad faith. The evidence establishes that Respondent was aware of Complainant and its AVERITT and AVERITT EXPRESS trademarks at the time Respondent registered the Disputed Domain Name. This awareness is established by the Disputed Domain Name’s similarity to Complainant’s AVERITT EXPRESS business name and trademark, and the Disputed Domain Name’s proximity to Complainant’s The Panel also finds that Respondent’s use of the Disputed Domain Name in connection with a phishing scheme is bad faith use. SeeWIPO Overview 3.0, section 3.4. The Panel finds Complainant has satisfied paragraph 4(a)(iii) 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 Lawrence K. Nodine
Sole Panelist
Date: April 5, 2021
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