for registered on March 28, 2007 (the “Trade Mark”).The Complainant is Expeditors International of Washington, Inc., United States of America (“United States”), represented by Bracewell L.L.P., United States.
The Respondent is Kimmich Hulk, Expeditors Int’l Logistics, Germany, and Whoisprotection.cc, Malaysia / Kimmich Hulk, Worldwide Expeditors Logistics, Germany.
The disputed domain names <expeditorsintllogistics.com> and <expworldwideltics.com> (the “Disputed Domain Names”) are registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2020. On February 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 27, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 3, 2020, the Registrar confirmed that a Lock had been placed on the Disputed Domain Names.
The Center verified that the 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 March 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2020. The Respondent did not submit any response and the Panel notified the Respondent of the default on March 23, 2020.
The Center appointed John Swinson as the sole panelist in this matter on March 27, 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.
The Complainant is Expeditors International of Washington, Inc., a company incorporated in the United States. The Complainant is a global transportation, shipping, and logistics company with its headquarters in Seattle, United States. According to the Complainant, the Complainant has been in operation since 1979 and operates in 103 countries. The Complainant is the registrant of <expeditors.com> and operates its website at it.
The Complainant is the owner of a large number of trade mark registrations for EXPEDITORS, including the European Union registered trade mark number 003208261 for registered on March 28, 2007 (the “Trade Mark”).
The Respondent is Kimmich Hulk, Expeditors Int’l Logistics, Germany, and Whoisprotection.cc, Malaysia / Kimmich Hulk, Worldwide Expeditors Logistics, Germany. No response was received from the Respondent, so little is known about the Respondent. The Disputed Domain Names <expeditorsintllogistics.com> and <expworldwideltics.com> were registered on January 13, 2019, and June 5, 2019, respectively. The Disputed Domain Names do not currently resolve to an active website.
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Disputed Domain Names are confusingly similar to the Trade Mark. The Disputed Domain Name <expeditorsintllogistics.com> incorporates the Trade Mark in its entirety with the additional descriptive terms “intl” and “logistics”. The Disputed Domain Name <expworldwideltics.com> incorporates an abbreviation of the Trade Mark “exp” and the descriptive words “worldwide” and “ltics” (an abbreviation of logistics). The Respondent’s use of “exp” does not dispel confusion, but rather is an attempt to create confusion. The descriptive words in the Disputed Domain Names also do not dispel similarity, but rather reinforce the Respondent’s bad faith intent because the Complainant’s services include worldwide international logistics services.
Further, the websites at the Disputed Domain Names previously displayed a logo almost identical to the Trade Mark, listed the Complainant’s address as the Respondent’s address and purported to offer the same services as the Complainant. The Respondent made it appear as though the websites were related to or affiliated with the Trade Mark.
Rights or Legitimate Interests
There is no evidence that the Respondent, prior to notice of the dispute:
- was using or preparing to use the Disputed Domain Names in connection with a bona fide offering of goods or services;
- was authorised to use the Trade Mark; or
- was commonly known by the Disputed Domain Name.
The Respondent was not, and has never been, licensed or authorised to use the Trade Mark.
Registered and Used in Bad Faith
The evidence overwhelmingly supports the conclusion that the Respondent registered and used the Disputed Domain Names in bad faith. There is no plausible circumstance under which the Respondent could have any legitimate right to use the Disputed Domain Names or that the Respondent was unaware of the Trade Mark at the time of registration of the Disputed Domain Names.
The Complainant has maintained its website at <expeditors.com> since at least October 10, 1995. The Disputed Domain Names were registered nearly 24 years after the Complainant first used the Trade Mark in connection with its website. The Complainant is a market leader in global transportation, shipping, and logistics services. The Respondent either knew, or should have known, of the Trade Mark at the time the Respondent registered the Disputed Domain Names.
The Trade Mark is widely known in the international transportation, shipping, and logistics industry. It cannot be a coincidence that the Respondent incorporated these words into the Disputed Domain Names. The Respondent also incorporated a logo on the websites at the Disputed Domain Names nearly identical to the Complainant’s own logo, displayed the address of the Complainant’s Germany office on the infringing websites, and attempted to gain personal and financial information from unsuspecting consumers using the infringing websites. These facts and the Complainant’s longstanding use of the Trade Mark obviates any claim by the Respondent that the Respondent was not aware of the Trade Mark when registering the Disputed Domain Names. The Respondent’s websites were taken down after the Complainant issued a Digital Millennium Copyright Act take down notice.
The Respondent is using the Disputed Domain Names in an effort to disrupt the business of a competitor, namely the Complainant. The notion of “competitor” in paragraph 4(b)(iii) of the Policy has been interpreted broadly to include a person acting in opposition of another. The Respondent is also using the Disputed Domain Names in an effort to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Trade Mark.
The Respondent has confused members of the public, including the Complainant’s customers, which amounts to disruption of the Complainant’s business and thereby constitutes registration and use in bad faith. The Complainant has received grievances from customers who mistook the Respondent for the Complainant and paid for services which were never provided, or had their cargo stolen. The Respondent’s registration and use of the Disputed Domain Names constitutes bad faith.
The Respondent did not reply to the Complainant’s contentions.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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.
The onus of proving these elements is on the Complainant even though the Respondent failed to submit a formal Response.
Multiple Domain Names
The Complaint is in relation to two domain names. Paragraph 3(c) of the Rules states that “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”.
Paragraph 10(e) of the Rules gives the Panel discretion to decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and the Rules.
In this case, the Disputed Domain Names are registered by Kimmich Hulk, Expeditors Int’l Logistics, Germany, and Kimmich Hulk, Worldwide Expeditors Logistics, Germany. According to the evidence before the Panel, the Disputed Domain Names:
- had websites associated with them that were identical or nearly identical;
- both contain variants of the Trade Mark, “logistics” and “international” or “worldwide”; and,
- share the same Registrar.
Based on this evidence, the Panel is satisfied that the Disputed Domain Names are under common control and that it is procedurally efficient to consolidate to the proceedings.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Mark.
The first element of the Policy functions primarily as a standing requirement. Where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark (see section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Disputed Domain Name <expeditorsintllogistics.com> incorporates the Trade Mark in its entirety with the additional terms “intl” and “logistics”. The Panel considers that the domain is confusingly similar to the Trade Mark.
The Disputed Domain Name <expworldwideltics.com> incorporates an abbreviation of the Trade Mark (“exp”) with additional terms “worldwide” and “ltics” (which presumably is a shortened version of “logistics”). The Panel agrees with the Complainant that, because these terms describe the Complainant’s services, the terms affirm the confusing similarity (see Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110). The Panel considers that the use of such words shows that the Respondent is attempting to create an association with the Complainant, its Trade Mark, and its business, so it would appear that the Respondent registered the Disputed Domain Name precisely because it believed that the Disputed Domain Name <expworldwideltics.com> was confusingly similar to the Trade Mark. (see Philip Morris USA Inc. v. Steven Scully, J&S Auto Repair, WIPO Case No. D2015-1001). While in most cases the content of the website associated with a disputed domain name is disregarded when assessing confusing similarity (see section 1.15 of WIPO Overview 3.0 ), in this case the Complainant has provided evidence that the website at the Disputed Domain Name previously displayed a logo almost identical to the Complainant’s European Union registered trade mark number 003208261, listed the Complainant’s address as the Respondent’s address, and purported to offer the same services as the Complainant. This content reinforces the conclusion that the Disputed Domain Name is confusingly similar to the Trade Mark (see e.g., Bayer Healthcare LLC v. Admin, Domain, WIPO Case No. D2016-2342).
The Complainant succeeds on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers the Complainant has made out a prima facie case in respect of both Disputed Domain Names.
This finding is based on the following:
- The Respondent is not using (and there is no evidence that the Respondent has demonstrable preparations to use) the Disputed Domain Names in connection with a bona fide offering of goods or services. The Disputed Domain Names do not currently resolve to an active website. The Complainant has provided evidence that in the past, the Disputed Domain Names resolved to identical websites containing a logo that was almost identical to the Trade Mark, the address of the Complainant’s Hamburg office, and purporting to offer services nearly identical to the Complainant’s services. It appears that the Respondent was impersonating the Complainant, and there is evidence that this resulted in actual confusion among the users of the Complainant’s services. The Panel accepts the Respondent was attempting to divert Internet users who were seeking the Complainant’s website. Such use is not bona fide (see section 2.13 of WIPO Overview 3.0).
- The Complainant has not authorised the Respondent to use the Trade Mark in the Disputed Domain Names.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Names or has registered or common law trade mark rights in relation to this name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain. As discussed above, the Panel accepts that the Respondent was using the Disputed Domain Names to misleadingly divert consumers, presumably for commercial gain.
The Respondent had the opportunity to demonstrate the Respondent’s rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.
The Complainant has been operating since 1979 and has owned registered trade marks since at least 1993. The Complainant has also owned a registered trade mark in the European Union, where it appears that the Respondent is based, since 2007. The Disputed Domain Names were registered well after this, in 2019. The Complainant operates in 103 countries around the world, and has built up a significant reputation in the Trade Mark, operating its website at “www.expeditors.com” long before the registration of the Disputed Domain Names. In light of this reputation, and the scope of the Complainant’s operations, it is likely that the Respondent had knowledge of both the Complainant and the Trade Mark at the time the Disputed Domain Names were registered. Here, the Panel can reasonably infer that the Respondent sought to make use of the reputation of the Complainant and registered the Disputed Domain Names in bad faith. This is further supported by the use of descriptive words in the Disputed Domain Names that clearly correspond to the Complainant’s services.
The Panel further notes the Respondent’s use of a privacy service, and the Complainant has also provided evidence that (as discussed in respect of element 2 above) the Respondent was attempting to impersonate the Complainant by using a highly similar logo to the Complainant’s United States registered trade mark number 1824592, listing the Complainant’s address, and purporting to offer services nearly identical to the Complainant’s services on the websites at the Disputed Domain Names. The evidence also shows that on at least one occasion, the Respondent used an email address associated with a Disputed Domain Name to illegitimately solicit payment to “insure” a customer’s package. The use of a Disputed Domain Name for such illegitimate activity is manifestly considered evidence of bad faith (see section 3.1.4 of WIPO Overview 3.0). The Panel agrees with the Complainant’s submission that there is no conceivable good faith use related to the Disputed Domain Names.
The Panel finds that the Respondent was intentionally attempting to attract, for commercial gain, Internet users to that website by creating a likelihood of confusion with the Trade Mark as to the source of the website (see paragraph 4(b)(iv) of the Policy, and see, e.g., Karen Millen Fashions Limited v. Leonie Helena, WIPO Case No. D2013-0001).
In light of the above, and in the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on the third element of the Policy.
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 Names <expeditorsintllogistics.com> and <expworldwideltics.com> be transferred to the Complainant.
John Swinson
Sole Panelist
Date: April 6, 2020