Choice Logistics, Inc. v. Whois Agent c/o Whois Privacy Protection Service
Claim Number: FA1402001543744
Complainant is Choice Logistics, Inc. (“Complainant”), represented by John J. Dabney of McDermott Will & Emery LLP, Washington, D.C., USA. Respondent is Whois Agent c/o Whois Privacy Protection Service (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <choice-logistics.com>, registered with Bizcn.com, Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 14, 2014; the National Arbitration Forum received payment on February 14, 2014.
On February 20, 2014, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <choice-logistics.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, Inc. 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 February 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 2014 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@choice-logistics.com. Also on February 21, 2014, 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, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 19, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Since as early as 1993, Complainant has rendered a wide range of logistics services, as well as provided use of customized and computerized on-line software to facilitate ordering and tracing of product availability.
2. Complainant owns United States Patent and Trademark Office (“UPSTO”) registrations for the CHOICE LOGISTICS mark (e.g., Reg. No. 2,835,876 registered April 27, 2004).
3. The <choice-logistics.com> domain name is identical to Complainant’s CHOICE LOGISTICS mark. Respondent’s inclusion of a hyphen and the generic top-level domain (“gTLD”) “.com” does not distinguish Respondent’s domain name from Complainant’s mark.
4. Respondent is not commonly known by the <choice-logistics.com> domain name. The WHOIS record lists the registrant for the disputed domain as “Whois Agent” and “Whois Privacy Protection Service.”
5. Complainant has not authorized Respondent to register or use Complainant’s CHOICE LOGISTICS mark as part of any domain name. There is no affiliation, connection, or association between Respondent and Complainant.
6. Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the <choice-logistics.com> domain name. Respondent has made, without Complainant’s authorization, a carbon copy of Complainant’s bona fide web site except that Respondent has provided a different contact telephone number – presumably, a contact number for scammers.
7. Respondent is using a domain name identical to Complainant’s mark to direct Internet users to a webpage that is virtually an exact replica of Complainant’s bona fide website. Respondent registered the disputed domain primarily for the purpose of deceiving consumers and thereby disrupting Complainant’s business. Respondent intends to attract Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website. The public interest is being damaged by Respondent’s false website as consumers are likely to reveal personal business information to Respondent based on the fraudulent website.
8. Respondent had knowledge of Complainant’s CHOICE LOGISTICS mark at the time it registered the <choice-logistics.com> domain name on December 15, 2013.
B. Respondent
Respondent failed to submit a response in this proceeding.
Since 1993, Complainant, Choice Logistics, Inc., has provided a wide range of logistics services and use of customized and computerized on-line software to facilitate ordering and tracing of product availability. Complainant owns United States Patent and Trademark Office (“UPSTO”) registrations for the CHOICE LOGISTICS mark (e.g., Reg. No. 2,835,876 registered April 27, 2004).
Respondent, Whois Agent c/o Whois Privacy Protection Service, registered the <choice-logistics.com> domain name on December 15, 2013. Respondent is using a domain name identical to Complainant’s mark to direct Internet users to a webpage that is a replica of Complainant’s bona fide website.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the CHOICE LOGISTICS mark under Policy ¶ 4(a)(i) through registration with the USPTO (e.g., Reg. No. 2,835,876 registered April 27, 2004).See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <choice-logistics.com> domain name is identical to Complainant’s CHOICE LOGISTICS mark under Policy ¶ 4(a)(i). Respondent’s inclusion of a hyphen and the “.com” gTLD does not distinguish Respondent’s domain name from Complainant’s mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Respondent is not commonly known by the <choice-logistics.com> domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Complainant has not authorized Respondent to register or use Complainant’s CHOICE LOGISTICS mark as part of a domain name. There is no affiliation, connection, or association between Respondent and Complainant.
Respondent has not used the <choice-logistics.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent has made a replica of Complainant’s authentic website except that Respondent has provided a different contact telephone number. Respondent uses the disputed domain name in an attempt to pass itself off as Complainant online. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Also, use of a domain name to “phish” for consumers’ personal information by fraudulent or deceptive means is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
Complainant contends that the public interest is being damaged by Respondent’s false website, as consumers are likely to reveal personal business information to Respondent based on the fraudulent website. Respondent uses the disputed domain name to direct Internet users to a webpage that is a replica of Complainant’s website, where Respondent likely collects personal information from Complainant’s customers. Therefore, Respondent registered and uses the <choice-logistics.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004)(bad faith registration and use to redirect Internet users to a website imitating the complainant’s website and to fraudulently acquire users personal information).
Respondent attempts to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website. Therefore, Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Respondent had actual knowledge of Complainant’s CHOICE LOGISTICS mark at the time it registered the disputed domain name. Therefore, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See also Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <choice-logistics.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 2, 2014
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