Midnite Air Corp. d/b/a MNX Global Logistics v. MailingNX EXPRESS / MNX EPRESS LTD
Claim Number: FA1805001788299
Complainant is Midnite Air Corp. d/b/a MNX Global Logistics (“Complainant”), represented by Robert C. Ryan of Holland & Hart LLP, Colorado, USA. Respondent is MailingNX EXPRESS / MNX EPRESS LTD (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mnxexpress.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 23, 2018; the Forum received payment on May 23, 2018.
On May 25, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <mnxexpress.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 May 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 18, 2018 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@mnxexpress.com. Also on May 29, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 20, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant contends as follows:
Complainant, MNX Global Logistics, is a global provider of expedited transportation and logistics services that serves over one hundred and ninety (190) countries.
Complainant has rights in the MNX marks based upon registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <mnxexpress.com> domain name is confusingly similar to Complainant’s MNX mark because Respondent adds a descriptive term and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondent lacks rights and legitimate interests in the <mnxexpress.com> domain name. Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use the MNX mark in any way. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to create a likelihood of confusion with Complainant’s mark and offer competing services with those offered by Complainant. Respondent also uses email from the at-issue domain name to facilitate a phishing scheme on third parties.
Respondent registered and is using the <mnxexpress.com> domain name in bad faith. Respondent is using the disputed domain name to create confusion with Complainant’s mark in order to disrupt Complainant’s business by offering competing services. Furthermore, Respondent had constructive knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
Complainant contends as follows in its Additional Submission:
If Respondent does not respond, the panel is entitled to “accept all reasonable allegations and inferences set forth in the Complainant as true unless the evidence is clearly contradictory.”
Respondent has not provided any evidence on which the Panel could render a decision in favor of Respondent, while Complainant’s unrefuted statements are known facts or reasonable inferences believed to be true. Therefore, the Panel should accept Complainant’s allegations as true and consider the elements of the Complaint satisfied.
Complainant has trademark rights in the MNX marks.
Respondent registered the at-issue domain name after Complainant acquired rights in MNX.
Respondent’s at-issue domain name is used to create a likelihood of confusion with Complainant’s mark and to offer competing services with those offered by Complainant.
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(f), 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 (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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the MNX trademark evidences its rights in such mark for the purposes of Policy ¶4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO).
Additionally, the at-issue domain name contains Complainant’s entire MNX trademark followed by the term “express,” with the top-level domain name “.com” appended thereto. The differences between the at-issue <mnxexpress.com> domain name and Complainant’s MNX trademark are insufficient to distinguish one from the other for the purposes of the Policy. In fact, the domain name’s inclusion of the term “express” adds to any confusion between the domain name and Complainant’s trademark as that term suggests Complainant’s logistic related business. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <mnxexpress.com> domain name is confusingly similar to Complainant’s MNX trademark. See eBay Inc. v. eBay Motors, FA 1731822 (Forum June 26, 2017) (holding that “words like ‘online,’ which pertain to a complainant’s trademark-related activities—fails to sufficiently distinguish domain names from registered marks.”); see also, Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for <mnxexpress.com> identifies the domain name’s registrant as “MailingNX EXPRESS.” However, the Panel is unaware of evidence outside of the self-serving WHOIS record created by Respondent that tends to prove that Respondent is commonly known by the <mnxexpress.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <mnxexpress.com> domain name for the purposes of Policy ¶ 4(c)(ii). See La Quinta Worldwide, LLC v. La Quinta WorldWide, FA1505001621299 (Forum July 11, 2015) (holding that the respondent was not commonly known by the <laquintaworldwide.com> domain name even though “La Quinta WorldWide” was listed as registrant of the disputed domain name, because the respondent had failed to provide any additional evidence to indicate that it was truly commonly known by the disputed domain name).
Furthermore, Respondent uses the <mnxexpress.com> domain name to address a website offering products similar to those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and used in bad faith. As discussed below, Policy ¶ 4(b) specific bad faith circumstances as well as other circumstances lead the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent, through use of the confusingly similar <mnxexpress.com> domain name and its associated website, creates a false impression that both the domain name and its website, which offers competing services under Complainant’s MNX mark, are sponsored by Complainant when they are not. Respondent’s registration and use of the confusingly similar <mnxexpress.com> domain name in furtherance of trading competitively on Complainant’s MNX trademark is disruptive to Complainant’s business and demonstrates Respondent’s bad faith pursuant to both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also, Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); see also, ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).”). Respondent’s use of the domain name in a phishing scheme is yet more evidence of it bad faith registration and use of <mnxexpress.com>.
Additionally, Respondent registered the <mnxexpress.com> domain name knowing that Complainant had trademark rights in MNX. Respondent’s prior knowledge is evident from Respondent’s use of the <mnxexpress.com> domain name as discussed above, as well as from the notoriety of Complainant’s MNX trademark. It is therefore clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <mnxexpress.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mnxexpress.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 25, 2018
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