Logistics Plus, Inc. v. Silverman, Jay
Claim Number: FA2007001903358
Complainant is Logistics Plus, Inc. (“Complainant”), represented by Michael D. Lazzara, United States. Respondent is Silverman, Jay (“Respondent”), represented by William J. McNichol, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <logisticsplus.com>, registered with Network Solutions, LLC.
The undersigned certify that they have acted independently and impartially, and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
David H. Bernstein, David J. Steele and Dennis A. Foster (Chair) as Panelists.
Complainant submitted a Complaint to the Forum electronically on July 8, 2020; the Forum received payment on July 8, 2020.
On July 8, 2020, Network Solutions, LLC confirmed by e-mail to the Forum that the <logisticsplus.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 9, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 2020 by which Respondent could file a Response to the Complaint via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@logisticsplus.com. Also on July 9, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on July 29, 2020.
On August 3, 2020, pursuant to Respondent's request to have the dispute decided by a three-member Panel, the Forum appointed David H. Bernstein, David J. Steele and Dennis A. Foster (Chair) as Panelists.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
- Headquartered in the United States, Complainant is a worldwide provider of transportation, warehousing, fulfillment, logistics, business intelligence, technology, and supply chain solutions. It was founded more than twenty years ago and has 450 employees located in 28 countries with annual sales over $300 million.
- Complainant has operated since at least July 1, 1997 under the service marks LOGISTICS+ and LOGISTICS PLUS, which were registered with the United States Patent and Trademark Office (“USPTO”) in 2000 and 2012 respectively.
- The disputed domain name, <logisticsplus.com>, which was first registered by a third party on August 6, 1996, is identical, or at least confusingly similar, to Complainant's marks because the name contains the phonetic equivalent of the marks and merely adds the “.com” generic top-level domain (“gTLD”).
- Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use either of Complainant’s marks and is not commonly known by the disputed domain name. Additionally, Respondent does not employ the disputed domain name for any bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to redirect users to Respondent’s own website. Additionally, Respondent passively held the disputed domain name for years after obtaining rights in it.
- Respondent registered and uses the disputed domain name in bad faith. Respondent offered to sell the disputed domain name for an amount far in excess of his out-of-pocket costs related to the name. Furthermore, Respondent disrupts Complainant’s business and attempts to attract internet users to Respondent's competing website. Also, Respondent did not acquire the disputed domain name until 2008, well after Complainant established rights in its marks, indicating that Respondent had actual knowledge of Complainant’s rights in those marks. Finally, Respondent has registered at least 113 other domain names that do not appear related to his business, which is evidence that Respondent has a pattern of trading in infringing domain names.
B. Respondent
- Complainant has no rights in the term “logistics” alone, and Complainant uses the “logistics plus” term in connection with an industry different from that in which Respondent operates.
- Respondent has rights and legitimate interests in the disputed domain name. For a time, Respondent used the disputed domain name for legitimate pay-per-click (“PPC”) activity. Since 2018, prior to the filing of the Complaint, Respondent has used the name in connection with the bona fide offering of its sophisticated optical equipment. Respondent does not compete with Complainant. Additionally, there is no evidence of actual customer confusion between Respondent’s website and Complainant or its offerings.
- Respondent did not register or use the disputed domain name in bad faith. Respondent did not acquire the disputed domain name with the intent to sell it. All conversations with respect to a sale of the name have been initiated by Complainant. Moreover, Respondent does not compete with Complainant and there is neither evidence of actual internet user confusion between the disputed domain name and Complainant’s mark nor evidence that Respondent is attempting to disrupt Complainant’s business. Lastly, Complainant presents no evidence that Respondent's registration of other domain names is an attempt to infringe upon third party trademarks or service marks.
Complainant is a United States company that operates worldwide to provide logistical solutions for other businesses. Among the service marks that Complainant owns are LOGISTICS+ and LOGISTICS PLUS, both of which are registered with the USPTO (Registration No. 2,316,824, registered on Feb. 8, 2000; and Registration No. 4,256,109, registered on Dec. 11, 2012). Although the term “LOGISTICS” is disclaimed in both applications, the term “PLUS” and the symbol “+” are not disclaimed. Both marks are incontestable. The USPTO declared the LOGISTICS+ registration incontestable in February 2006, prior to Respondent’s acquisition of the disputed domain name.
The disputed domain name, <logisticsplus.com>, is owned by Respondent, who acquired the name in September, 2008. The disputed domain name was first registered by a predecessor third party in August, 1996. There is no evidence in the record to suggest that Respondent is related to the party that initially registered the disputed domain name or any other owners of the disputed domain name prior to September, 2008.
After using the disputed domain name for PPC linkage for a few years and after a few years of parking the disputed domain name for no evident purpose, the Respondent now uses it in connection with Respondent’s business of selling optical equipment. Respondent’s use of the LOGISTICS PLUS name in connection with its promotion of optical equipment began no earlier than August, 2018. That is because, according to the Wayback Machine (www.archive.org), the disputed domain name resolved to a PPC website as late as March 7, 2018, resolved to blank websites on multiple dates between March 30, 2018 and August 9, 2018, and resolved to a website showing Respondent’s use of LOGISTICS on September 10, 2018.[i] It is unclear from the record whether Respondent’s use of LOGISTICS PLUS for the promotion of optical equipment began any earlier between August 9 and September 10, 2018.
Before filing the Complaint in this proceeding, Complainant contacted the Respondent around March, 2018 and attempted to purchase the disputed domain name. However, the parties failed to agree on a price. Respondent requested a payment far in excess of his registration costs.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has provided the Panel with ample evidence that it has valid USPTO registrations for both its LOGISTICS PLUS and LOGISTICS+ service marks, and thus the Panel agrees with Complainant that it satisfies the threshold requirement of showing rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”); see also, LC Trademarks, Inc. v. Nelson, Rex, FA (Forum Aug. 6, 2010) (“Complainant has established rights in its LITTLE CAESARS mark under Policy ¶ 4(a)(i) based on Complainant’s trademark registration with the USPTO.”).
The threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain names to assess whether the trademark is recognizable within the disputed domain name as per section 1.7 of the WIPO Overview 3.0.
With respect to the LOGISTICS+ service mark, which was registered in 2000 and was incontestable by the time Respondent acquired the disputed domain name, the omission of the plus symbol in Complainant’s mark is not relevant as it is a symbol that cannot be used in domain names, because the disputed domain name substitutes the word “PLUS” for the “+” symbol, and because Complainant’s LOGISTICS+ service mark “is recognizable within the disputed domain name” <logisticsplus.com>. Id; see GROUPE CANAL + Company v. Jinsoo Yoon , D2006-1240 (WIPO Dec. 26, 2006) (“The Panel determines that the domain name <canalplus.com> is confusingly similar to the CANAL+ mark in which the Complainant has rights.”); AT&T Corp. v. Yong Li, D2003-0064 (WIPO Mar. 23, 2003) (“In the present domain name only the ampersand “&” has been elaborated to “AND,” and in any case, both are interchangeable. This elaboration does not make the domain name in any way different from the trademark of the Complainant. Further that, ampersand symbols are not used in Internet addresses. ... There is no doubt that the domain name <atandtwireless.com> is confusingly similar to the [AT&T] trademark of the Complainant.”)
With respect to the LOGISTICS PLUS service mark, the disputed domain name, <logisticsplus.com>, is identical to it. The only differences are: the lack of a space (an element which cannot be placed within a domain name) between mark terms; and the addition of a gTLD, which normally is an inconsequential requirement of all domain names (although, when relevant to the comparison, the gTLD may be considered, see WIPO Overview 3.0, section 1.11.3). Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s service mark. See Jeanine Amapola, Inc. v. Courtney Perkins Ferreira, FA 1891168 (Forum May 6, 2020) (finding <jeanineamapola.com> to be confusingly similar to the JEANINE AMAPOLA mark); see also DMN Logistics Ltd v. Andrey Ershov, D2020-0412 (WIPO Apr. 10, 2020) (finding <dmnlogistics.com> to be identical to the DMN LOGISTICS mark). That Complainant’s registration for its LOGISTICS PLUS service mark was applied for and registered after Respondent registered that domain name is of no consequence here. Complainant’s evidence plainly supports prior common law rights in the mark that predate Respondent’s registration, and, in any event, the disputed domain name is also confusingly similar to the prior-registered LOGISTICS+ trademark.
Accordingly, Complainant has satisfied the first element required under the Policy.
Though the ultimate burden of proof regarding this element of the Policy rests with Complainant, because of the difficulty of proving a negative, the consensus of prior UDRP decisions is that a complainant need make only a prima facie showing that a respondent has neither rights nor legitimate interests in a disputed domain name before the burden of production shifts to the respondent to come forward with evidence that it does possess those rights or interests. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The burden of proof, however, always rests on the Complainant. WIPO Overview 3.0, section 2.1; Agfa-Gevaert N.V. v. Pascal Olaf Schubert, Schubert UG, WIPO Case No. D2020-1413, July 27, 2020.
In the present case, the Panel has found that the disputed domain name is identical to Complainant’s valid service mark, and Complainant has asserted plainly that Respondent has not obtained a license or other authorization to use its mark for any purpose, including within a domain name. Thus, the Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
In its rebuttal to Complainant's prima facie case, Respondent cites Policy ¶ 4(c)(i), which sets forth a circumstance that gives rise to a finding of rights or legitimate interests in a domain name as follows:
(i) before any notice to [respondent] of the dispute, [respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offing of goods or services
Respondent contends that he has rights and legitimate interests in the disputed domain name per ¶ 4(c)(i) because the name is being used in a bona fide offering of products related to Respondent's company through Respondent's website at the disputed domain name.
However, the Panel notes that ¶ 4(c)(i) requires that such usage begin “before any notice to [respondent] of the dispute,” not before the filing of the Complaint, which is the date referred to in Respondent’s rebuttal argument as to bona fide use. The Panel finds, through examination of separate affidavits filed by the parties, that there was direct communication between the parties regarding a possible purchase of the disputed domain name on March 14, 2018, during which Complainant asserted that the name rightfully belonged to it based on its corresponding service mark. In the Panel’s opinion, this exchange between the parties constitutes notice to Respondent of the dispute. Respondent claims in his declaration that he first used the LOGISTICS PLUS mark on his website to promote his location-data accessory since 2018, though he provides no proof of when he first began to use that mark. The only evidence in the record showing use of the mark on Respondent’s website is the Wayback Machine screenshot that Complainant submitted, showing use of the mark in September 2018. As Respondent has submitted no clear evidence that the website offerings cited above were in effect prior to said direct communication, the Panel concludes that Respondent’s current disputed domain name usage does not meet the requirements of ¶ 4(c)(i).
With respect to the additional clause in ¶ 4(c)(i), which refers to “demonstrable preparations to use” the disputed domain name, Respondent offers no direct or clear evidence of any such preparations prior to notice of the dispute. Instead, the Panel is given only a self-serving declaration in the affidavit submitted by Respondent that there were intentions to use the disputed domain name for the sale of items related to Respondent’s business going back to 2009, about a year after the name was purchased by Respondent. “Mere intentions [, though,] are not enough.” Hästens Sängar AB v. Jeff Bader / Organic Mattresses, Inc., FORUM Claim Number: FA2005001895951 (July 31, 2020). The Panel finds that declaration not to constitute “demonstrable preparations” and, in fact, finds it to be considerably less than credible due to the long lapse of time (i.e., from 2009 to 2018) in putting those supposed “preparations” into practice and the fact that Respondent did not put those supposed “preparations” into practice until some months after Complainant contacted Respondent to object to its registration and use of the disputed domain name. See BioMérieux v. Robert Sloan, D2019-2865 (WIPO Jan. 22, 2020) (“If not independently verifiable by the panel, preparations to use the domain name in connection with a bona fide offering of goods or services cannot be merely self-serving statements but should be inherently credible and supported by relevant pre-complaint evidence.”); see also WIPO Overview 3.0, section 2.2 (“If not independently verifiable by the panel, claimed examples of use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services cannot be merely self-serving but should be inherently credible and supported by relevant pre-complaint evidence.”).
Otherwise, Respondent has asserted that, after purchase in 2008, the disputed domain name had been previously linked to websites that offered PPC links to third party websites that offered logistics services. The Panel believes that this assertion furnishes Respondent with no alternative grounds to claim rights or legitimate interests in the name, since previous Policy panels have found that such use of a disputed domain name that is identical or confusingly similar to Complainant’s valid trademark fails to constitute “a bona fide offering of goods or services” per Policy ¶ 4(c)(i) where the linked websites offer goods that compete with the Complainant’s. Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415, December 10, 2007 .[ii] In the case at hand, Respondent’s linked websites seemed to offer logistics services, i.e., the core business of the Complainant; moreover, Respondent made no attempt to use negative keywords to prevent the PPC links on his website from directing internet users to Complainant’s competitors. See WIPO Overview 3.0, section 2.9.
As a result of the above discussion, the Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the second element required under the Policy.
To be successful under the Policy, Complainant must establish that the disputed domain name was both registered and is being used in bad faith.[iii] See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“...a complainant must prove both bad faith registration and bad faith use in order to prevail.”)
With respect to disputed domain name usage, the record is clear that the name periodically was used for many years (starting in 2008, shortly after Respondent acquired the disputed domain name, and also at least as late as March 7, 2018, the week before Complainant first contacted Respondent) to host websites that presented PPC links to third party websites offering services in competition with the Complainant’s. This use was clearly intended by Respondent to create commercial gain and, given the identity between the disputed domain name and Complainant’s service mark, this gain would result only from internet user confusion between the name and Complainant’s mark as to source, sponsorship, affiliation or endorsement of Respondent’s website. The Panel finds this to be clear bad faith use of the disputed domain name by Respondent under Policy para. 4(b)(iv).
Moreover, the Panel finds that Respondent’s altered use of the disputed domain name to sell products related to its business, which occurred only after contact with Complainant, was a bad faith ruse concocted by Respondent to escape liability under an eventual filing by Complainant under the Policy. National Hockey League v. Daniel Krusz, WIPO Case No. D2001-0234, April 6, 2007.
With respect to registration of the disputed domain name in bad faith, the Panel majority (Panelists Bernstein and Steele) finds as follows:
Respondent was not the entity that originally registered the disputed domain name in 1996, but rather purchased the name in 2008. It is well accepted that a subsequent purchase of a domain name is equivalent to a new registration of that domain name if the name comes into dispute relative to its similarity to a valid trademark or service mark. See Pinterest, Inc. v. Ian Townsend, D2015-1873 (WIPO Dec. 21, 2015) (“In such a circumstance, UDRP panels typically assess the registration in bad faith requirement as at the date when the respondent took possession of the disputed domain name and not at its original creation date.”); see also Ass’n of Junior Leagues Int’l Inc. v. This Domain Name May Be For Sale, FA 857581 (Forum Jan. 4, 2007) (determining that, even though the disputed domain name was registered earlier, the respondent’s rights in the disputed domain name began when the domain name was transferred to the respondent, whose rights in the domain name complainant’s rights in the mark predated).
In this case, Respondent claims to have been unaware of Complainant or its mark at the time Respondent purchased the disputed domain name in 2008. However, Respondent also claims that he registered the disputed domain name in 2008 with the intent to use the name in connection with products sold by Respondent’s business. Yet the disputed domain name instead resolved to a website offering PPC links or was parked unused for the next decade. In the Panel majority’s opinion, this record of events puts Respondent’s veracity into question, and leads the Panel majority to believe that Respondent was aware, when he acquired the disputed domain name, that he could sell the name to Complainant for far in excess of his out-of-pocket acquisition costs. Even if Respondent did not have actual knowledge, he is charged with willful blindness since a domainer who acquires domain names has an obligation under Paragraph 2 of the Policy to ensure that the domain names will not violate the rights of third parties. WIPO Decision Overview 3.0, section 3.2.3; see also Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304, February 24, 2006; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448, December 12, 2007. At the time Respondent acquired the disputed domain name, the LOGISTICS PLUS trademark was already registered and incontestable, a fact that Respondent easily could have determined through a basic search of the USPTO records. Further, as noted above, Respondent made no attempt to use negative keywords to prevent the PPC links on his website from directing internet users to Complainant’s competitors. As a result, the Panel majority concludes that the disputed domain name was acquired in bad faith by Respondent under para. 4(b)(i) of the Policy.
Dissent by Panelist Foster: I am of the opinion that Respondent may not have registered the disputed domain name in bad faith when he purchased the disputed domain name from the original (1996) registrant in 2008. This is because Respondent from that point in time for several years afterwards used the disputed domain name to connect to PPC websites related to “logistics”, a logical use even if later it could be found not to be in accord with the Policy. Complainant had co-existed with the original registrant for about a decade before Respondent purchased the disputed domain name. Also, it is not at all clear that Complainant was a prominent company in 2008 when Respondent acquired the disputed domain name such that Respondent would have been aware of Complainant and its service mark rights. Under these circumstances, it is not apparent that Respondent was aware of, still less had bad faith intentions toward, Complainant when Respondent purchased the disputed domain name in 2008.
Concurrence by Panelist Steele: While I join the majority in finding that Respondent both registered and used the domain name in bad faith, I write separately to express my view that both registration and use in bad faith are not necessary under the Policy. There is a fully developed, and exceptionally well-reasoned, line of prior UDRP decisions[iv] supporting this view.
Importantly, a requirement that the domain name be both registered and used in bad faith is inapposite with the plain language of the Policy. Two separate paragraphs of the Policy, ¶ 2 and ¶ 4(b)(iv), detail a violation without registering the domain name in bad faith. First, Paragraph 4(b)(iv) expressly recognizes that bad faith use of a domain name alone violates the Policy. The specific language of the paragraph states:
b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location
(Emphasis added). Because the use alone described in ¶ 4(b)(iv) shall be evidence of the registration and use of a domain name in bad faith, the Policy’s plain language does not require both registration and use in bad faith. And an interpretation to the contrary would read ¶ 4(b)(iv) –a key provision–out of the Policy.
Numerous other panels, comprised of some of the most respected panelists, have reached identical conclusions: “[I]in this Panel’s view bad faith registration can occur without regard to the state of mind of the registrant at the time of registration, if the domain name is subsequently used to trade on the goodwill of the mark holder…” City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, D2009-0643 (WIPO Jul. 3, 2009); “‘Registration and use’ is used in the policy as a unified concept. Even though the concept mentions both ‘registration’ and ‘use,’ the examples provided in the Policy make clear that some types of registration or of use alone may be sufficient to satisfy this unified concept.” Country Inns & Suites By Carlson, Inc. v. Shuai Nian Qing, La Duzi, D2009-1313 (WIPO Nov. 17, 2009); Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich 6 Sanders and Octogen e-Solutions, D2009-0786 (WIPO Aug. 19, 2009); Jappy GmbH v. Satoshi Shimoshita, D2010-1001 (WIPO Sep. 28, 2010); and Phillip Securities Pte Ltd v. Yue Hoong Leong, ADNDRC, DE-0900226 (ADNDRC Jun. 11, 2009).
Second, Policy ¶ 2 specifically requires all registrants to represent and warrant that the registrant “… will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.” Accordingly, merely using a domain name in a manner that violates someone else’s rights breaches the registrant’s warranty and therefore violates the Policy.
Lastly, a requirement the domain name be both registered and used in bad faith is inapposite with the intent of the Policy. As the panel in Ville de Paris v. Jeff Walter, D2009-1278 (WIPO Nov. 19, 2009), explained:
“There seems no reason in logic or in principle why the availability of redress should be confined to situations where bad faith is present at the time of acquisition of the domain name. To limit the trademark owner’s redress in this way would result in outcomes that make no sense. In particular, it would mean that even the most damaging abuse of a trademark right through the most egregious bad faith use of a domain name would be immune from remedy under the Policy so long as the registrant was not acting in bad faith when the domain name was acquired. It would, in short, give a “green light” to good faith domain name registrants to later abusively use their domain names, safe in the knowledge that any such bad faith use could not provide the basis for a successful action under the Policy.”
For these reasons, I write separately to express my view that both registration and use in bad faith are not necessary under the Policy.
Accordingly, the Panel majority finds the Complainant has satisfied the third element required under the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <logisticsplus.com> domain name be TRANSFERRED from Respondent to Complainant.
David H. Bernstein, Panelist David J. Steele, Panelist (concurring)
Dennis A. Foster, Chair (dissenting)
Dated: August 18, 2020
[i] Complainant submitted Wayback Machine screenshots for a number of dates, including March 7, 2018, March 30, 2018 and September 10, 2018. Respondent did not contest the accuracy of those screenshots, which establishes that Respondent did not use the LOGISTICS PLUS name on his website until sometime after March 30, 2018, which was after Complainant first contacted Respondent in March 2018 to raise its objections to Respondent’s registration and use of the disputed domain name. The Panel has, on its own, reviewed the Wayback Machine screen captures from April 3, 2018, April 7, 2018, April 10, 2018, April 16, 2018, May 8, 2018, June 8, 2018, July 9, 2018, August 8, 2018, and August 9, 2018, and has determined that the disputed domain name resolved to a blank website on all of these dates as well, which supports the Panel’s finding that Respondent did not use the LOGISTICS PLUS name on his website until sometime after August 9, 2018. As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear in section 4.8, “a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, [and] consulting historical resources such as the Internet Archive (www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past.”
[ii] Complainant makes much of the fact that Texas International Property Associates was a prior owner of the disputed domain name. That fact is irrelevant to the Panel’s assessment of Respondent’s bad faith. To the extent Texas International Property Associates also was using the disputed domain name for PPC pages that linked to competitors of Complainant, such use would not necessarily have been a legitimate use either, depending on when that use began vis-a-vis the creation of Complainant’s trademark.
[iii] As discussed in his concurrence, Panelist Steele is of the view that the Policy does not require both registration and use in bad faith. However, because Panelist Steele also concludes that Respondent both registered and used the subject domain name in bad faith, he joins the Panel Majority in its decision. Panelists Foster and Bernstein note that, whatever the strength of the arguments in Panelist Steele’s concurrence, see, e.g., Denver Newspaper Agency v. Jobing.com LLC, FORUM Claim Number: FA0908001282148 (Oct. 16, 2009), those arguments have been considered by many panels and the overwhelming consensus is that both registration and use are required. WIPO Overview 3.0, section 3.2.1; Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011 (Feb. 7, 2011). Because of the importance of consensus and consistency in the application of the UDRP, WIPO Overview 3.0, section 4.1 (cf. June Medical Services LLC v. Russo, 591 U.S. ___ (June 29, 2020)), Panelists Foster and Bernstein cannot accept the view that bad faith use is itself sufficient to prevail under the Policy.
[iv] I recognize that these cases and this point of view are in the minority.
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