The Complainant is DX Network Services Limited, United Kingdom, represented by Howes Percival LLP, United Kingdom.
The Respondent is Mako Lau, United States of America (“United States”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2021. On December 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 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 the Complainant on December 15, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 20, 2021.
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 the Respondent of the Complaint, and the proceedings commenced on December 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 21, 2022.
The Center appointed John Swinson as the sole panelist in this matter on February 1, 2022. 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 BackgroundThe Complainant is a provider of parcel exchange and delivery services. The Complainant has been in business for over 40 years.
The Complainant owns United Kingdom trademark registration number UK00900151928 for the word mark DX that has an effective date of May 25, 1999. The Complainant also owns a European Union trademark registration for DX.
The Respondent did not file a Response, so little information is known about the Respondent.
The disputed domain name was registered on April 1, 2021.
At the present time, the disputed domain name resolves to a website under the company named “De Xin International Logistics” (originally in Chinese “德信国际物流”) that appears to relate to the shipment of goods. This website is partly in English, and partly in Chinese. It includes functionality to log in to an account and to print shipping labels. The website is incomplete. For example, the terms and conditions page is mostly blank, as is the privacy policy page. The contact details page includes a telephone number 1234567890, and no email or physical address. The website states at the bottom “2016 All Rights Reserved” but does not say to whom such rights are reserved.
5. Parties’ Contentions A. ComplainantIn summary, the Complainant makes the following submissions:
The Complainant is a leading provider of parcel exchange and delivery services. The Complainant has been in operation since the mid-1970s. The Complainant also operates an international delivery service in partnership with distribution and delivery companies.
The Complainant owns the registered trademarks referred to in section 4 above.
The DX trademark is recognizable in the disputed domain name. The disputed domain name includes the addition of a geographical term.
The disputed domain name is, essentially, identical to the DX trademark.
The burden of substantiating any rights or legitimate interests falls on the Respondent.
To the best of the Complainant’s knowledge, the Respondent has no rights in the use of the DX trademark.
The Complainant has no relationship with the Respondent, and has not authorized or licensed the Respondent to use the DX trademark or the disputed domain name. The Complainant has prior rights in the DX trademark, which precede the registration of the disputed domain name by the Respondent. There is no evidence that the Respondent has traded under the DX trademark prior to registration of the disputed domain name. The Respondent is not commonly known by the disputed domain name.
The disputed domain name was registered only recently, and the Respondent has no substantive trading history from use of the disputed domain name or under any sign similar to the DX trademark.
The Respondent is taking advantage of the similarity between the disputed domain name and the DX trademark for commercial gain.
The Complainant has significant prior use of the DX trademark. It is almost impossible that the Respondent would have been unaware of the Complainant’s business and DX trademark.
As further evidence of bad faith, the Respondent has undertaken a course of conduct designed to obscure its identify. For example, the website at the disputed domain name provides no or false contact details of the Respondent.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsTo succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(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 onus of proving these elements is on the Complainant.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly SimilarParagraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant owns trademark registrations for DX.
The disputed domain name is confusingly similar to the DX trademark. The only difference is that the disputed domain name includes a hyphen and the additional letters “usa”. The mere addition of a hyphen and these three letters to the Complainant’s trademark does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark under the Policy.
Where the relevant trademark is recognizable within the disputed domain name, the addition of other letters or terms does not prevent a finding of confusing similarity under the first element. Hostelworld.com Limited v. Contact Privacy Inc. / Shamlee Pingle,WIPO Case No. D2021-1849.
The Complainant succeeds on the first element of the Policy in relation to the disputed domain name.
B. Rights or Legitimate InterestsThe second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] 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 [the Respondent] has acquired no 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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant.
Previous UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden of production will shift to the respondent to rebut that prima facie case.
The Complainant asserts that the Complainant has no relationship with the Respondent, and has not authorized or licensed the Respondent to use the DX trademark or the disputed domain name. The Complainant has prior rights in the DX trademark, which precede the registration of the disputed domain name by the Respondent. There is no evidence that the Respondent has traded under the DX trademark prior to registration of the disputed domain name.
The Complainant also asserts that the Respondent has created a website at the disputed domain name which promotes goods and services that have a close proximity to the Complainant’s goods and services, which is not a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
The Panel considers that, based upon the above, the Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and thereby the burden shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name.
Although the letters “dx” in the disputed domain name may be the initials of the pinyin of the first two Chinese characters in the company name “德信国际物流” (“De Xin International Logistics”) shown on the website at the disputed domain name, the Panel notes that the website itself is incomplete with a nearly blank page of terms and conditions or the privacy policy. The contact details page includes an apparently fake telephone number, and no email or physical address. This raises the question whether the company exits or not. Further, it is also unclear that how the individual Respondent connects to this company on the website.
The Respondent has chosen not to file any Response. The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name.
Based on the evidence before the Panel, none of the circumstances listed in paragraph 4(c) apply in the present circumstances. Accordingly, the Panel finds that the Respondent has no rights or any legitimate interests in the disputed domain name.
The Complainant succeeds on the second element of the Policy in relation to the disputed domain name.
C. Registered and Used in Bad FaithParagraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith.
In the present circumstances, the fact that the disputed domain name is very similar to the Complainant’s DX trademark (with only a geographical term added) and resolves to an incomplete website which promotes products and services in competition to the products and services of the Complainant, leads the Panel to conclude the registration and use of the disputed domain name is in bad faith.
The Respondent’s conduct demonstrates the Respondent’s knowledge of the Complainant and the Complainant’s trademark. By using the disputed domain name to compete with the Complainant strongly suggests that the Respondent specifically knew of and targeted the Complainant. See Fédération Française de Tennis (FFT) v. Daniel Hall, dotCHAT, Inc.,WIPO Case No. D2016-1941.
The website at the disputed domain name provides no or false contact details of the company. Given the covert nature of the website – disclosing no any real contact details – and the lack of any response to the Complainant’s claims, the inference of bad faith is strengthened.
The Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of good faith that it might have. The Panel infers that none exists. Regal Funds Management Pty Limited v. WhoisGuard Protected, WhoisGuard, Inc. / John Clerk,WIPO Case No. D2020-2773.
The Panel finds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website under paragraph 4(b)(iv) of the Policy. This website also could disrupt the business of the Complainant.
The Panel finds that the Respondent has both registered and used the disputed domain name in bad faith.
The Complainant succeeds on the third element of the Policy in relation to the disputed domain name.
7. DecisionFor 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
John Swinson
Sole Panelist
Date: February 15, 2022