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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Touax SCA-Sgtr-Cite-Sgt-Cmte-Taf-Slm Touage Investissements Reunies v. WhoisGuard Protected, WhoisGuard, Inc. / Harry Hudson

Case No. D2019-3185

1. The Parties

The Complainant is Touax SCA-Sgtr-Cite-Sgt-Cmte-Taf-Slm Touage Investissements Reunies, France, represented by Cabinet Weinstein, France.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Harry Hudson, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <touaxexpress.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 26, 2019. On December 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 27, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On December 27, 2019, the Complainant requested the suspension of the administrative proceeding. On the same day, the Center suspended the administrative proceeding until January 26, 2020, for purposes of settlement discussions concerning the disputed domain name. On January 20, 2020, the Complainant requested the reinstitution of the administrative proceeding and filed an amended Complaint. On January 21, 2020, the Center reinstituted the administrative proceeding.

The Center verified that the Complaint together with 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 January 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2020.

The Center appointed Assen Alexiev as the sole panelist in this matter on February 24, 2020. 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

The Complainant, based in France, is an operational company in the lease and sale of cargo and ship containers around the world. It became a listed company on the Paris Stock Exchange (now Euronext Paris) in 1906. The Complainant is ranked as number one company in Europe and South America for river barges, number two in Europe for freight railcars, and number two in Europe and three in the world for containers. It operates in about 40 countries on five continents and its revenues for 2018 amounted to EUR 154.5 million.

The Complainant is the owner of the following trademark registrations for the mark TOUAX (the “TOUAX trademark”):

- the French trademark TOUAX with registration No. 3517991, registered on August 2, 2007, for goods and services in International Classes 6, 12, 19, 36, 37, 39, 42, and 43;

- the International trademark TOUAX with registration No. 971690, registered on February 29, 2008, for goods and services in International Classes 6, 12, 19, 36, 37, 39, 42, and 43, designating the European Union and the United States, among others; and

- the United States trademark TOUAX with registration No. 4322661, registered on April 23, 2013, for goods and services in International Classes 6, 12, 19, 36, 37, and 43.

The Complainant operates the domain name <touax.com>, registered on January 24, 1998, for its corporate website.

The disputed domain name was registered on January 21, 2019. It resolves to a website under the title “Touax Express Delivery”, where international import, export, warehousing, brokerage, logistics and transportation services are offered. The website lists five physical addresses in Myanmar, the United States, Cambodia, the United Kingdom, and Thailand, and two email addresses containing “touaxexpress”, one of them under the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the TOUAX trademark in which the Complainant has rights, because this trademark is reproduced in its entirety in the disputed domain name, and the addition of the descriptive term “express” is insufficient to prevent a finding of confusing similarity.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because it is not affiliated with the Complainant and has not been authorized by the Complainant to use and register the TOUAX trademark or to seek registration of any domain name incorporating it. The Complainant points out that the Complainant’s TOUAX trademark predates the registration of the disputed domain name by the Respondent with many years, and the Respondent is not commonly known by the disputed domain name. In the Complainant’s submission, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Rather, the disputed domain name resolves to a website where the Complainant’s TOUAX trademark is reproduced, and the website offers import-export, custom brokerage and logistic services, which are similar and complementary to the services provided by the Complainant. The Complainant further notes that no company under the name “Touax Express Delivery” is registered in any of the countries in which the website at the disputed domain name lists contact addresses, and no company under the name “touax” and belonging to the Respondent is listed in the city at the Respondent’s location.

The Complainant contends that that the Respondent has registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent was aware of the Complainant when it registered the disputed domain name, because the Complainant is well-known around the world in its field of activity, and a quick trademark or Google search for “touax” would have revealed the existence of the Complainant and of the TOUAX trademark, registered for goods and services similar to the services offered on the Respondent’s website. The Complainant submits that it is likely that the Respondent registered the disputed domain name based on the notoriety and attractiveness of the TOUAX trademark to divert Internet traffic to its website, which offers services that are similar or complementary to the services offered by the Complainant and shows pictures of containers and features the TOUAX trademark at the top of the website. According to the Complainant, this shows that the Respondent uses the disputed domain name in an attempt to create confusion in Internet users who may think that they are visiting a website linked to the Complainant.

The Complainant also notes that an email server is operating under the disputed domain name and the Respondent can send and receive emails from an email address ending with “[…]@touaxexpress.com”, so the Respondent may be engaged in a phishing scheme detrimental to the Complainant and to third parties.

The Complainant adds that on November 23, 2019, its attorney sent cease and desist letters to the Respondent, but received no response.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is 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 name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”

The Respondent has however not submitted a Response and has thus not disputed the Complainant’s statements and evidence in this proceeding.

A. Identical or Confusingly Similar

The Complainant has provided evidence of and has thus established its rights in the TOUAX trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD of the disputed domain name.

As discussed in sections 1.7 and 1.8 of the WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between the textual components of the complainant’s trademark and the disputed domain name to assess whether the trademark is recognizable within the disputed domain name. Where the relevant trademark is recognizable within the disputed domain name, the addition of other descriptive terms would not prevent a finding of confusing similarity under the first element.

The disputed domain name incorporates the TOUAX trademark in its entirety and the dictionary word “express”, the addition of which does not prevent a finding of confusing similarity between the disputed domain name and the TOUAX trademark, because the latter is easily recognizable in it.

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the TOUAX trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

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 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. See section 2.1 of the WIPO Overview 3.0.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not affiliated with the Complainant and has not been authorized by the Complainant to use and register the TOUAX trademark or to seek registration of any domain name incorporating this trademark. The Complainant points out that the Complainant’s TOUAX trademark predates the registration of the disputed domain name by the Respondent with many years, and the Respondent is not commonly known by the disputed domain name. The Complainant also points out that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the disputed domain name. According to the Complainant, the disputed domain name resolves to a website that features the TOUAX trademark and offers services that are similar and complementary to the services provided by the Complainant. Thus, 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 disputed the statements of the Complainant and has not alleged that is has rights or legitimate interests in the disputed domain name.

The disputed domain name incorporates the TOUAX trademark in its entirety with the addition of the dictionary word “express”, and the undisputed evidence in the case file shows that it resolves to a website which offers logistics and transportation services under a name that contains “touax”. The Respondent does not dispute that these services are related to the services provided by the Complainant and included in the scope of protection of the TOUAX trademark, and does not dispute the Complainant’s statement that there is no registered company under the name “Touax Express Delivery” in any of the countries in which the Respondent’s website indicates contact addresses.

In view of the above, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the TOUAX trademark, has registered the disputed domain name in an attempt to exploit the trademark’s goodwill by attracting the Complainant’s clients for commercial gain by misleading them that they are accessing a website that is affiliated to the Complainant. In the Panel’s view, such conduct does not give rise to rights and legitimate interests of the Respondent in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, 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 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.”

As discussed above, the disputed domain name is confusingly similar to the TOUAX trademark and resolves to a website which features the TOUAX trademark and offers services that are related or complementary to the services offered by the Complainant. The email address of the Respondent, as confirmed by the Registrar, also contains an element which is identical to the word element of the TOUAX trademark. The Complaint contains evidence that the Respondent’s physical address as provided by the Registrar, as well as the physical addresses in various countries, indicated on the Respondent’s website, are nonexistent.

Taking the above into account, and in the absence of any evidence to the contrary, the Panel is satisfied that it is more likely than not that the Respondent is aware of the Complainant’s services marketed under the TOUAX trademark, and that the Respondent has registered and used the disputed domain name targeting the same trademark. It is likely that by creating a likelihood of confusion with the Complainant’s TOUAX trademark and an appearance that the disputed domain name and the Respondent’s email address are related to the Complainant, the Respondent has attempted to attract traffic to the disputed domain name and confuse the Complainant’s customers and other Internet users that they are reaching a website affiliated to the Complainant where services that are related to the services provided by the Complainant are offered, likely for commercial gain.

As submitted by the Complainant, these circumstances also indicate a risk that the Respondent may be using the disputed domain name and its email address for phishing or other fraudulent activities.

Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.

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 <touaxexpress.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: March 6, 2020

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