Complainant is Averitt Express, Inc., United States of America (“U.S.”), represented by Adams and Reese LLP, U.S.
Respondent is Domain Administrator, See PrivacyGuardian.org, U.S. / NameSilo, LLC, Expired Domain, U.S.
2. The Domain Name and RegistrarThe disputed domain name (the “Domain Name”)
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2021. On December 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to Complainant on December 22, 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 December 28, 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 December 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 19, 2022.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on January 27, 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 BackgroundComplainant is a freight transportation and supply chain management provider incorporated in the U.S. Complainant owns several registered AVERITT trademarks and has been using the AVERITT trademark in connection with transportation services. Complainant advertises its services through various websites, as well as through print media and other advertising and promotional campaigns. Complainant operates over one hundred locations in the U.S. and provides freight and other transportation services to over 300 international destinations in 100 countries.
Complainant owns several registered trademarks for AVERITT and AVERITT EXPRESS in numerous jurisdictions, including:
- Canadian registered trademark number TMA958423 for AVERITT registered on December 20, 2016 for transportation and related services;
- Canadian registered trademark number TMA958422 for AVERITT EXPRESS registered on December 20, 2016 for transportation and related services;
- Chinese registered trademark number 25252236 for AVERITT registered on July 7, 2018 for services in class 39;
- Mexican registered trademark number 606616 for AVERITT EXPRESS registered on April 22, 1999 for services in class 39;
- U.S. registered trademark number 2616865 for AVERITT EXPRESS registered on September, 10, 2002 for services in class 39; and
- U.S. registered trademark number 2619908 for AVERITT registered on September 17, 2002 for services in class 39.
Complainant and its licensees own many domain names incorporating the AVERITT trademark, including
The Domain Name was registered on December 2, 2020. The record shows that at the time Complainant learned of the Domain Name, the Domain Name resolved to a website advertising transportation services, including cargo transportation, air freight, ocean freight, and packaging and storage, under the name “Averitt Delivery.” Complainant initiated an investigation of “Averitt Delivery” in October 2021, which revealed that some of the content appearing on the website at the Domain Name had been copied from other supply chain and logistics company websites. Complainant indicated that investigators found no evidence that “Averitt Delivery” is actually operational. On October 27, 2021, Complainant’s counsel sent a cease-and-desist letter to the contact information on the publicly-available WhoIs and the information found on the website to which the Domain Name resolved, raising Complainant’s trademark rights and requesting that the Domain Name be transferred to Complainant. Complainant’s counsel received an “undeliverable” message for the email addresses listed on the website.
At the time of filing of the Complaint, there has been no response to Complainant’s letter, and the Domain Name directed to a commercial parking page showing pay-per-click (PPC) advertising links to websites purportedly offering services similar to those of Complainant.
At the time of the Decision, the Domain Name reverts to a page >that displays third party links, including: “Trucking Company”, “Logistics Services”, “Company”, “Shipping Services For Small Business” and “Logistics Tranportation”. These links directed to third party websites offering services similar to those offered by Complainant.
5. Parties’ Contentions A. ComplainantComplainant contends that (i) the Domain Name is identical and confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.
In particular, Complainant contends that it has trademark registrations for AVERITT and owns domain names incorporating the AVERITT trademarks. Complainant contends Respondent registered and is using the Domain Name to confuse Internet users looking for bona fide and well-known AVERITT products and services.
Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s trademarks, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights.
B. RespondentRespondent did not formally reply to Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that failure to respond to the complainant’s contentions 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.
Thus, although in this case Respondent has failed to formally respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340.
A. Identical or Confusingly SimilarOwnership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of their rights in the AVERITT trademarks, as noted above. Complainant has also submitted evidence, which supports that the AVERITT trademarks are widely known and a distinctive identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the AVERITT trademarks.
With Complainant’s rights in the AVERITT trademark established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s trademark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842.
Here, the Domain Name is confusingly similar to Complainant’s AVERITT trademarks. These trademarks, which are fanciful and inherently distinctive, are recognizable in the Domain Name. The incorporation of the AVERITT trademark with the addition of the term “delivery” in the Domain Name does not prevent a finding of confusing similarity between Complainant’s trademarks and the Domain Name.
Thus, the Panel finds that Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the AVERITT trademarks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the AVERITT trademarks or to seek registration of any domain name incorporating the trademarks. Respondent is also not known to be associated with or commonly known by the AVERITT trademarks.
In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that the Domain Name resolved to a webpage with links to third party sites that purportedly offer services related to Complainant’s business, using Complainant’s AVERITT trademark. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name.
Further, the nature of the Domain Name carries a risk of implied affiliation with Complainant (see WIPO Overview 3.0, section 2.5.1). The Domain Name consists of the Complainant’s AVERITT mark in its entirety, along with the addition of “delivery”, descriptive of the transportation and shipping services offered by the Complainant, thus suggesting sponsorship or endorsement by the Complainant, contrary to the fact, which cannot constitute fair use. Moreover, as regards the prior use of the confusingly similar Domain Name to host competing services, such use does not confer rights or legitimate interests and further reinforces the intent to mislead Internet users via the Complainant’s trademarks.
Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, 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 on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel finds that Complainant provided ample evidence to show that registration and use of the AVERITT trademarks long predate the registration of the Domain Name. Complainant is also well established and known. Indeed, the record shows that Complainant’s AVERITT trademarks and related services are widely known and recognized. Therefore, and also noting the composition of the Domain Name itself, Respondent was likely aware of the AVERITT trademarks when it registered the Domain Name, or knew or should have known that the Domain Name was confusingly similar to Complainant’s trademarks. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973.
The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007.
Further, the registration of the Domain Name incorporating Complainant’s AVERITT trademark with the addition of the term “delivery” after AVERITT - suggests Respondent’s actual knowledge of Complainant’s rights in the AVERITT trademark at the time of registration of the Domain Name and its effort to opportunistically capitalize on the registration and use of the Domain Name.
In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use. Rather, the evidence demonstrates that at the time of the filing of the Complaint, the Domain Name resolved to a commercial parking page showing PPC advertising links to websites purportedly offering services similar to those of Complainant. At the time of the Decision, the Domain Name reverts to a page that displays third party links, including: “Trucking Company”, “Logistics Services”, “Company”, “Shipping Services For Small Business” and “Logistics Tranportation”. These links directed to third party websites offering services similar to those offered by Complainant.
Such use does not constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name. See section 3.3 of the WIPO Overview 3.0.
Prior to the filing of the Complaint, the Domain Name resolved to a website offering competing services, copying information from various other service-providers’ websites, which clearly constitute use in bad faith.
Lastly, in the present circumstances, including the distinctiveness and reputation of the AVERITT trademarks, the failure of Respondent to submit a formal response or to provide any evidence of actual or contemplated good-faith use, the use of a privacy service, and the implausibility of any good faith use to which the Domain Name may be put, support a finding of bad faith. Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name,
Kimberley Chen Nobles
Sole Panelist
Date: February 7, 2022