ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION DX Network Services Limited v. Jason L Monroe Case No. D2024-3390 1. The Parties The Complainant is DX Network Services Limited, United Kingdom, represented by Howes Percival LLP, United Kingdom. The Respondent is Jason L Monroe, United States of America. 2. The Domain Name and Registrar The disputed domain name is registered with Sav.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2024. On August 19, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 19, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 20, 2024, 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 August 20, 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 the Respondent of the Complaint, and the proceedings commenced on August 21, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2024. The Center appointed Roger Staub as the sole panelist in this matter on September 25, 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.
page 2 4. Factual Background The Complainant is DX Network Services Limited, a company based in the United Kingdom. It provides parcel exchange and delivery services. It is undisputed that the Complainant has operated its delivery business since approximately 2004, and its predecessor has operated the business since the mid-1970s. The Complainant further submits that as per its annual accounts to July 2023, the Complainant had an annual revenue for that financial year of GBP 456.1 million. The Complainant owns various trademark registrations consisting of, or containing, the terms “dx” or “dx delivery” respectively. The Complainant’s portfolio of DX and DX Delivery trademark registrations includes, inter alia, the following trademark registrations: - European Union trademark No. 000151928 for DX, registered on May 25, 1999, in Classes 38 and 39; - European Union trademark No. 012957189 for DX DELIVERY, registered on October 31, 2014, in Classes 9, 38, and 39. The Complainant owns and maintains a website at the domain name which promotes and informs users about the services offered by the Complainant. The disputed domain name was registered on April 12, 2018. The disputed domain name redirects to a Pay-Per-Click (“PPC”) website displaying links to third-party websites offering various products and services. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. First, the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant’s trademarks comprise the term “dx”, which is clearly recognizable within the disputed domain name with the addition of the term “delivey” being a clearly intentional misspelling of “delivery”. The disputed domain name is further almost identical to the Complainant’s domain name , including the Top-Level Domain, the only difference being the omission of a letter “r”. Second, the Respondent has no rights or legitimate interests in respect of the disputed domain name. To the best of the Complainant’s knowledge, the Respondent has no rights in the use of the DX DELIVERY marks or any similar sign. Furthermore, the Complainant has no relationship with the Respondent and has not licensed or authorized the Respondent to use the DX DELIVERY marks or the disputed domain name. The currently hosted webpage, to which the disputed domain name redirects, has been in place since at least December 2021. To the best of the Complainant’s knowledge, information and belief, there is no evidence that the Respondent has traded under the mark “DX” or “DX Delivey” prior to the registration of the disputed domain name, nor has it been commonly known by the disputed domain name or any sign similar to the Complainant’s marks. Third, the disputed domain name was registered and is being used in bad faith. The Complainant, together with its connected group companies, is a leading provider of delivery solutions and courier and logistical services. The Complainant has used its marks for over 28 years and significantly prior to the registration of the disputed domain name. The reputation and circumstances of the Complainant and its marks are such that it is almost impossible that the Respondent was unaware of the Complainant’s business and its ownership and use of the marks at the time of registration of the disputed domain name. The disputed domain name is a clear and deliberate typographical error of, at least, the Complainant’s domain name and the DX DELIVERY marks. It is a clear example of typosquatting and therefore
page 3 evidence that the disputed domain name has been registered in bad faith. Further, the Respondent has intentionally attempted to attract web traffic to the website to which the disputed domain name redirects. The disputed domain name resolves to a webpage which is parked and provides a number of what appear to be PPC links. In addition, the Respondent has engaged in a pattern of such conduct, as can be seen from at least four other domain name disputes in which it was the respondent. Finally, a search of the disputed domain name on the website “www.centralops.net” suggests that the Respondent has configured mail exchange (“MX”) records for the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to the Policy, to qualify for a cancellation or transfer, the Complainant must prove each of the following: First, the disputed domain name is identical or confusingly similar to a trademark or service mark to which the Complainant has rights. Second, the Respondent has no rights or legitimate interests in respect of the disputed domain name. Third, the disputed domain name has been registered and is being used in bad faith. Since the Respondent did not submit a reply, the Panel may choose to accept the reasonable contentions of the Complainant as true. This Panel will determine whether those facts constitute a violation of the Policy that is sufficient to order the transfer of the disputed domain name (see Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292). A. Identical or Confusingly Similar 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 the Complainant’s 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. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the Complainant’s mark DX is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to that mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. In addition, the Panel finds that the Complainant’s mark DX DELIVERY is also recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to that mark as well for the purposes of the Policy. WIPO Overview 3.0, section 1.9 (misspellings). The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a 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 that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the 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. In the absence of any evidence filed by the Respondent, the Panel does not see any indications being given for any circumstances suggesting that the Respondent may have rights or legitimate interests in the disputed domain name. The Respondent’s name is “Jason L Monroe” and there are no indications that the Respondent is in any way legitimately linked to the business that the Complainant runs under the DX DELIVERY trademark or to any third-party owning rights in DX or DX Delivery. The fact that the disputed domain name is used to host a parked page comprising PPC links clearly speaks against a bona fide offering as such use capitalizes on the reputation and goodwill of the Complainant’s mark or otherwise misleads Internet users. WIPO Overview 3.0, section 2.9. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith 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. In the present case, the Panel notes that the Respondent uses PPC links on the website to which the disputed domain name resolves. The use of such PPC links suggests that the Respondent is using the disputed domain name as a tool to attract, for commercial gain, Internet users to its website. WIPO Overview 3.0, section 3.5. This finding is supported by other circumstances of the present case. The Panel notes that the disputed domain name consists of a misspelling of an established mark that had been used for a number of decades on an extensive scale by a leading company prior to the registration of the disputed domain name. WIPO Overview 3.0, section 3.2.1. No explanation has been given by the Respondent for the registration of the disputed domain name and it is difficult to imagine a bona fide explanation for it. The Panel finds that the Complainant has established the third element of the Policy.
page 5 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 the Complainant. /Roger Staub/ Roger Staub Sole Panelist Date: October 9, 2024
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