ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Pacific Logistics LLC v. Lavie Blaise, naxthandainc Case No. D2024-0048 1. The Parties Complainant is Pacific Logistics LLC, United States of America (“United States”), represented by Milord Law Group, United States. Respondent is Lavie Blaise, naxthandainc, Cameroon. 2. The Domain Name and Registrar The disputed domain name
is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2024. On January 8, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 8, 2024, 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 (Not available) and contact information in the Complaint. The Center sent an email communication to Complainant on January 10, 2024, 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 January 12, 2024. 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 January 15, 2024. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 7, 2024. Respondent sent an email communication to the Center on February 8, 2024.
page 2 The Center appointed Stephanie G. Hartung as the sole panelist in this matter on February 12, 2024. 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 is a company organized under the laws of the United States that is active in the logistics and transportation industry. Complainant has provided evidence that it is the registered owner of various trademarks relating to its company name and brand PACIFIC LOGISTICS, inter alia, but not limited to the following: - word mark PACIFIC LOGISTICS, United States Patent and Trademark Office (USPTO), registration number: 6,349,055, registration date: May 11, 2021, status: active; - word mark PACIFIC LOGISTICS, USPTO, registration number: 6,349,056, registration date: May 11, 2021, status: active. Moreover, Complainant has demonstrated to own the domain names and , which both resolve to Complainant’s main website at “www.pacific-logistics.com”, promoting Complainant’s services in the logistics and transportation industry internationally. Respondent, according to the disclosed WhoIs information and the Registrar’s verification for the disputed domain name, is located in Cameroon. The disputed domain name was registered on May 24, 2023. By the time of the rendering of this Decision, the disputed domain name resolves to a website at “www.pacificlogisticsexpress.com”, where it is offered for sale. Complainant, however, has demonstrated that at some point before the filing of the Complaint (e.g., on July 22, 2023), the disputed domain name resolved to a website at “www.pacificlogisticsexpress.com”, pretending to offer logistics and transportation services as those offered by Complainant. Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, Complainant contends to have used its PACIFIC LOGISTICS trademark extensively since 1999 appearing e.g., on trucks, uniforms, buildings, invoices, and in advertising, which has meanwhile acquired respective notoriety and fame. Complainant submits that the disputed domain name is confusingly similar to its PACIFIC LOGISTICS trademark, as it incorporates this well-known trademark entirely. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent is neither affiliated with Complainant in any way nor has it been authorized by Complainant to use and register the disputed domain name, (2) Complainant’s registration of its PACIFIC LOGISTICS trademark precedes the registration of the disputed domain name by far, (3) Complainant and its PACIFIC LOGISTICS trademark is well-known in the logistics services industry, so that it is inconceivable that the existence of this prominent organization was not present in the mind of Respondent, and (4) the disputed domain name is a brazen attempt to trade on Complainant’s goodwill and fame in the logistics and transportation industry. Finally, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith because (1) Respondent registered the disputed domain name, though it must have been aware of the valuable goodwill and reputation represented and symbolized by
page 3 Complainant’s PACIFIC LOGISTICS trademark, (2) Respondent uses Complainant’s trademark in the disputed domain name to attract Internet users to Respondent’s website, which promotes a business that appears to be indicative of Complainant’s business, and (3) Complainant has received customer complaints of fraud committed through Respondent’s website, such as requests for money by Respondent for delivery of goods which customers never received. B. Respondent Respondent did not formally reply to Complainant’s contentions but sent an informal email correspondence to the Center on February 8, 2024, pointing to the fact that the disputed domain name was for online sale. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. Respondent’s formal default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent’s failure to submit a Response as it considers appropriate. A. Identical or Confusingly Similar First, it is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between Complainant’s PACIFIC LOGISTICS trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. Complainant has shown rights in respect of the PACIFIC LOGISTICS trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. Moreover, the entirety of Complainant’s PACIFIC LOGISTICS trademark is reproduced within the disputed domain name, added by the term “express”. Accordingly, the disputed domain name is confusingly similar to Complainant’s PACIFIC LOGISTICS trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms (here, the term “express”) may bear on assessment of the second and third elements, the Panel holds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s PACIFIC LOGISTICS trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel, therefore, finds the first element of the Policy has been established. B. Rights or Legitimate Interests Second, paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in the disputed domain name.
page 4 Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Panel is convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain. In particular, Respondent has not been authorized to use Complainant’s PACIFIC LOGISTICS trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the terms “Pacific” and/or “logistics” on its own. Finally, Respondent so far obviously has neither used the disputed domain name for a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose, but, inter alia and as reaffirmed by Respondent in its informal email correspondence to the Center of February 8, 2024, to offer it on the Internet for online sale. UDRP panels have recognized that holding a domain name comprised of dictionary words, as here, for resale can be bona fide and is not per se illegitimate under the UDRP, but have also found that the mere registration of such a domain name does not by itself automatically confer rights or legitimate interests (see WIPO Overview 3.0, section 2.10.1). Moreover, given that the disputed domain name incorporates Complainant’s undisputedly well-known PACIFIC LOGISTICS trademark in its entirety, and has been used at some point before the filing of the Complaint (e.g., on July 22, 2023) to resolve to a website pretending to offer logistics and transportation services as those offered by Complainant, the disputed domain name carries, as such, a risk of confusion with Complainant and the PACIFIC LOGISTICS trademark, which is why subsequently offering the disputed domain name for online sale would not support a claim to fair use and, thus, cannot confer rights or legitimate interests therein (see WIPO Overview 3.0, section 2.5.1). The Panel, therefore, finds the second element of the Policy has been established. C. Registered and Used in Bad Faith Third, the Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstances to this case leave no doubts that Respondent was fully aware of Complainant’s rights in its undisputedly well-known PACIFIC LOGISTICS trademark when registering the disputed domain name and that the latter clearly is directed thereto. Moreover, the fact that the disputed domain name is used, inter alia, for the purpose of being offered on the Internet for online sale, is a clear indication that Respondent registered the disputed domain name primarily for the purpose of selling it e.g., to Complainant (or a competitor), in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name, especially given that, at some point before the filing of the Complaint (e.g., on July 22, 2023), the disputed domain name resolved to a website pretending to offer logistics and transportation services just
page 5 as those offered by Complainant. In this context, the Panel, moreover, notes that the screenshot provided by Complainant contains “lorem ipsum” placeholder text which, based on a quick online search, is used for other (seemingly pretextual) transportation websites. Such circumstances are evidence of registration and use of the disputed domain names in bad faith within the meaning of paragraph 4(b)(i) of the Policy. Finally, and perhaps most tellingly, Complainant has alleged, and Respondent has not objected such allegations, to have received customer complaints of fraud committed through Respondent’s website, such as requests for money by Respondent for delivery of goods which customers never received. In this context, UDRP panels have held that the use of a domain name for illegal activity (here, the operation of a fraudulent website under the disputed domain name) constitutes bad faith. WIPO Overview 3.0, section 3.4. The Panel, therefore, finds Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy, and that Complainant has established the third element of the Policy, too. 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, , be transferred to Complainant. /Stephanie G. Hartung/ Stephanie G. Hartung Sole Panelist Date: February 26, 2024
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