The Complainant is Averitt Express, Inc., United States of America (“United States”), represented by Adams and Reese LLP, United States.
The Respondent is MingLee, China.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2021. On December 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 22, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 22, 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 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 the 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. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2022.
The Center appointed Zoltán Takács 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 BackgroundThe Complainant is one of the leading freight transportation and supply chain management providers in the United States, operating over 10 locations and providing services to over 300 international destinations in 100 countries.
Among others the Complainant owns the following trademarks:
- United States Trademark Registration No. 2616865 for the word mark AVERITT EXPRESS registered since September 10, 2002 in class 39 of the Nice Agreement Concerning the International Classification of Good and Services for the Purpose of the Registration of Marks (“Nice Agreement”), and
- Chinese Trademark Registration No. 25252236 for the word mark AVERITT registered since July 7, 2018 for services of class 39 of the Nice Agreement.
The Complainant has online presence at “www.averittexpress.com”. The corresponding domain name was registered on September 1, 1996.
The disputed domain names were registered on January 9, 2021 and have been used to resolve to parking pages containing pay-per-click (“PPC”) advertising links to third party websites offering identical or similar services to those of the Complainant. The disputed domain names currently resolve to inactive websites.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain names are confusingly similar to its trademarks since the first and most prominent element of each disputed domain name is its AVERITT mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the Policy.
The Complainant submits that the disputed domain names were registered and used in bad faith. The Complainant has extensively used the AVERITT marks which are distinctive and associated only with the Complainant. The Complainant contends that the Respondent could not have been unaware of these facts at the time of registration. The Respondent’s use of the disputed domain names to redirect to parking pages containing pay-per-click advertising links to third parties websites offering identical or related services to those of the Complainant is further indicative of the Respondent’s bad faith
The Complainant requests that the disputed domain names be transferred from the Respondent to the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules requires that the Panel’s decision be made “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”.
It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a response) 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. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly SimilarUnder paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain names are identical or confusingly similar to the trademark or service mark.
It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced proper evidence of having registered rights in the AVERITT and AVERITT EXPRESS trademarks and for the purpose of this proceeding the Panel establishes that the United States Trademark Registration No. 2616865 an Chinese Trademark Registration No. 25252236 both satisfy the requirement of having trademark rights for the purpose of the Policy.
Having determined the presence of the Complainant’s trademark rights, the Panel next assessed whether the disputed domain names are identical or confusingly similar to the Complainant’s trademarks.
According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain names. This test typically involves a side-by-side comparison of the disputed domain names and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain names.
According to section 1.9 of the WIPO Overview 3.0, a domain name which consists of a common, obvious or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for the purposes of the first element of the Policy.
The disputed domain names all incorporate the Complainant’s AVERITT trademark in its entirety. In the Panel’s view this is sufficient to establish confusing similarity of the disputed domain names with the Complainants AVERITT trademark. In addition, the misspelled variants of the term “express” added to the AVERITT trademark in the Panel’s view makes them confusingly similar to the AVERITT EXPRESS trademark of the Complainant as well.
According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.club”, “.nyc”, or as in this case “.com”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test.
In view of the above, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks and that requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsUnder paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the AVERITT and AVERITT EXPRESS trademarks.
The Complainant has never authorized the Respondent to use its trademarks in any way, and its prior rights in the trademarks precede the date of registration of the disputed domain names.
According to section 2.1 of the WIPO Overview 3.0, 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 the 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.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
The use of the disputed domain names to host websites comprising pay-per-click links competing with or capitalizing on the reputation and goodwill of the Complainant’s mark cannot create rights or legitimate interests in the disputed domain names. See section 2.9 of the WIPO Overview 3.0.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
(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 AVERITT and AVERITT EXPRESS trademarks are distinctive and unique to the Complainant. A basic Internet search against the disputed domain names returns solely the Complainant and its businesses.
The Respondent has used the disputed domain names that fully reproduce the Complainant’s inherently distinctive AVERITT trademark and are misspelled variants of its distinctive AVERITT EXPRESS trademark to host webpages displaying pay-per-click links related to services in competition with those of the Complainant.
This in view of the Panel not only demonstrates that the Respondent was aware of the Complainant’s trademarks at the time of registration of the disputed domain names, but also the Respondent’s obvious intent to target the Complainant’s trademarks through diverting Internet users to its websites (or websites under his control) without any authorization or rights to do so.
The disputed domain names are misspelled variants of the Complainant’s AVERITT EXPRESS trademark, dropping or adding a letter to the word component “express” of the trademark. A minor typographical change by an unaffiliated entity to a distinctive trademark is a form of typosquatting, which creates a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.
The fact that the disputed domain names currently resolve to inactive websites does not alter the Panel’s conclusion. According to section 3.3 of the WIPO Overview 3.0, passive holding of a domain name does not prevent a finding of bad faith.
For the reasons set out above, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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 names,
Zoltán Takács
Sole Panelist
Date: February 9, 2022