WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Estes Express Lines v. Whois Data Shield / Hong Kong Names LLC.
Case No. D2007-0100
1. The Parties
The Complainant is Estes Express Lines, Richmond, Virginia, United States of America, represented by Christopher J. Mugel, United States of America.
The Respondent is Whois Data Shield / Hong Kong Names LLC., Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name <estesexpresslines.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2007. On January 29 and February 6, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On February 7, Moniker Online Services, LLC transmitted by email to the Center its verification response indicating the registrant as “Registrant : Hong Kong Names LLC” and providing contact details, including administrative, billing, and technical contact. In response to an email communication from the Center conveying inter alia the registrant information and contact details provided by the registrar in its email of February 7, 2007, the Complainant filed an amendment to the Complaint adding “Hong Kong Names LLC” as Respondent in a communication dated February 16, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2007.
The Center appointed Clive N. A. Trotman as the sole panelist in this matter on March 26, 2007. 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 following is taken from information provided by the Complainant.
The Complainant conducts business in the field of freight transportation and owns the trade or service marks (hereafter: “trademarks”) ESTES, ESTES EXPRESS, ESTES EXPRESS LINES and other variations. The Complainant and its predecessors have used the trademarks since 1931 in connection with freight transportation and related services. Webb Wallace Estes established his trucking business in 1931, and in 1933 established a facility in Chase City, Virginia. In 1937, the business first became known as ESTES EXPRESS LINES, and it has operated under that name ever since. The business moved its headquarters to Richmond, Virginia in 1946, and was formally incorporated under the ESTES EXPRESS LINES name in 1948. The Complainant operates nationally in the United States of America, with more than 13,000 employees, and also operates internationally.
The Complainant owns federal service mark registrations including:
U.S. Service Mark Registration No. 3,003,888, filed on January 13, 2004 and issued on October 4, 2005 for the mark ESTES for use with “freight transportation by truck and air, freight brokerage; freight forwarding; transportation and delivery services, namely, guaranteed express delivery of goods by truck and air; providing customized freight packing, cargo handling, transport of goods by truck and air; and the leasing of trucks and trailers for freight transportation” and “logistics management in the field of freight transportation”;
U.S. Service Mark Registration No. 2,654,058, initially filed on October 26, 2001 and issued on November 26,2002 for the mark ESTES EXPRESS LINES in a stylized format for use with the services of “transportation of freight by International Class 39”.
The disputed domain name appears to have been created on June 3, 2006.
5. Parties’ Contentions
The Complainant contends that it is the owner of the trademarks ESTES, ESTES EXPRESS, ESTES EXPRESS LINES, and variations of ESTES. The use of the name ESTES EXPRESS LINES traces back to 1937 and the Complainant provides documentary evidence that the trademarks are currently and validly registered. The Complainant contends that it owns and holds exclusive rights in the trademarks.
The Complainant says that its name and trademarks are well-known and submits documentary evidence in the form of promotional and publicity material about its activities. Its trademarks have acquired distinctiveness, renown and secondary meaning in the context of quality freight transportation services.
The Complainant contends that the disputed domain name <estesexpresslines.com> is virtually identical and confusingly similar to the Complainant's trademarks. The disputed domain name is identical to the Complainant's corporate and trade name, “Estes Express Lines.” Aside from the stylization in Complainant's Registration No. 2,654,058, it is identical to one of Complainant's registered marks (ESTES EXPRESS LINES). The dominant portion of Complainant's Marks is the word ESTES, which is also the dominant element of the disputed domain name.
The Complainant contends, and submits documentary evidence, that the website of the disputed domain name promotes services related to trucking and freight transportation, being similar to the Complainant’s area of business. The website provides sponsored links to advertisers providing services in freight transportation or related information. The website was not authorized by the Complainant and does not direct visitors to the Complainant.
The Complainant says that the Respondent sells these links to third parties wishing to advertise on the website of the disputed domain name. The Respondent is able to attract visitors and to sell advertisements and links because Internet users will be confused into thinking the website is sponsored or approved by the Complainant. In particular, users seeking the Complainant’s legitimate website at “www.estes-express.com” may commit a typographical error and be led to visit the Respondent’s website, or may be led there as a result of a search of the Internet for “Estes Express Lines”. Once there, users see that the website is marked “estesexpresslines.com” at the top and has a copyright notice in the name “Estesexpresslines.com, LLC”, both of which designations are false.
The Complainant contends that visitors to the website may be misled by links into requesting price quotations from its competitors, whilst believing they are dealing with the Complainant. Similarly, potential clients seeking freight forwarding services may be misled by links into thinking they are dealing with the Complainant or an associate whilst actually being directed to a competitor.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not approved or authorized the Respondent to use the domain name and has no connection with it. On information and belief of the Complainant, the Respondent conducts no legitimate business under a name corresponding to the domain name.
The Complainant contends that the domain name is in use for commercial purposes in the Complainant’s field of business, and cites precedent that the use of a domain name confusingly similar to the mark of another in order to operate a site that provides sponsored advertisements, is not a legitimate use of the domain name (Cox Radio, Inc. v. Domain Administrator, WIPO Case No. D2006-0387; Tercent Inc, v. Lee Yi, NAF Case No. FA139720 (“the Panel is unwilling to find that Respondent's use of the disputed domain name, which features nothing other than a series of hyperlinks and a banner advertisement equates to a bona fide offering of goods or services ...”).
The Complainant says the Respondent has no rights in the disputed domain name because the Respondent does not use ESTES, ESTES EXPRESS LINES or any variant thereof as a legitimate name or trademark. The Complainant has not been able to identify any subsisting limited liability company bearing the name of the disputed domain name and the Complainant has priority over the name. Under the [USA] Trademark Act of 1946, as amended (the Lanham Act), federal registration of a mark puts all others on notice of the registrant's presumptive rights in the registered marks nationwide.
The Complainant says the Respondent has registered and is using the disputed domain name in bad faith. The corresponding website is being used for the commercial benefit of not only the Respondent, but also competitors of the Complainant who place advertisements or links on the website that may mislead visitors into thinking they are dealing with the Complainant.
The Complainant says that the domain name is used for profit, disrupting and diverting the business of the Complainant. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its on-line location by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the website or the products or services advertised thereon. The website contains nothing but information about competing freight services and the sole purpose is to sell sponsored links to those other than the Complainant who offer such services. The only conceivable purpose is to confuse consumers and make it more likely they will obtain services from competitors of the Complainant.
The Complainant submits that the registration and use of a domain name similar to another’s trademark in order to operate a site that contains sponsored advertising or other links to competitors of the trademark owner has repeatedly been recognized as bad faith use and registration, and cites: 1 800 Flowers.com, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc., v. G Design, WIPO Case No. D2006-0977 (citing Media West - GRS, Inc., Media West - MNC, Inc., Gannett Pacific Corporation, Gannett Co., Inc., Gannett River States Publishing Corp., Guam Publications and Incorporated v. Moniker Privacy Services / Forum LLC / Registrant(187640) email@example.com, WIPO Case No. D2006-0478); Humana Inc. v. Domain Deluxe, WIPO Case No. D2005-0231; EasyGroup IP Licensing Limited v. John Sansone, WIPO Case No. D2004-0763; Gaylord Entertainment Company. v. Nevis Domains LLC, WIPO Case No. D2006-0523; Novus Credit Services Inc. v. Personal, WIPO Case No. D2000-1158; Symark International, Inc. v. Gary McCurty, WIPO Case No. D2005-0235.
The Complainant contends that the repeated transfer of the domain name to different registrars in a short period of time, and the continuing use of privacy services to shield the identity of the true holder of the domain name, is further evidence of bad faith intent to use the domain name to trade on the reputation and goodwill in the Complainant's trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
An initial Whois domain name search on November 29, 2006 yielded an apparent registrant name of “Registrant : Whois Data Shield” with an address in Florida, USA, being apparently that of Whois Data Shield. The registrar was Moniker Online Services Inc., with a different address in Florida, USA.
The Complainant says that on February 12, 2007, it received from the Center a notification stating that the registrar had disclosed to the Center that the name of the owner of the disputed domain name was Hong Kong Names LLC, with the identifier  appended to the administrative, billing and technical contacts, all having the same address in Hong Kong. The Complainant further says that (as at February 16, 2007) Moniker Online Services is the third registrar of the domain name since June 3, 2006. In all the circumstances and on the basis of the registrant being an unnamed client of Whois Data Shield, it would appear that the underlying and beneficial owner of the disputed domain name is making use of a privacy service. It is assumed by the Panel that there is one Respondent of shifting address who will therefore be referred to in the singular.
As discussed more fully previously (TDS Telecommunications Corporation v. Registrant  Nevis Domains and Registrant  Moniker Privacy Services, WIPO Case No. D2006-1620), a registrant may use a privacy service for legitimate reasons, or to attempt to evade contact in the event of a domain name dispute. In order to serve notice of a dispute in such circumstances, Complainants have variously designated as Respondent the name of the registrant as listed, the registrar, or the domain name itself.
It is noted that the ICANN Registrar Accreditation Agreement (2001) at paragraph 126.96.36.199 requires that “The Registered Name Holder shall provide to Registrar accurate and reliable contact details and promptly correct and update them ...”, and at paragraph 3.3.1, requires that this information be made freely available. It would appear that where a privacy service is involved, some registrars do not necessarily reveal the apparent identity of the registrant, even to the dispute service provider. If they do, it is still possible for a registrant to provide misleading details to its registrar and to remain beyond contact.
Paragraph 2 of the Rules states that “it shall be the Provider's responsibility to employ reasonably available means calculated to achieve actual notice to Respondent” (emphasis added), and continues with details of the measures that should be taken, which essentially are to contact such physical and Internet addresses as are lodged in the registrar’s Whois database. The flavour of paragraph 2 clearly anticipates difficulties in establishing contact with some Respondents. The word reasonably in effect requires the dispute service provider to do the best it can, and the words calculated to achieve notably stop short of requiring proof of service.
The Panel is satisfied that the dispute resolution service provider, namely the Center, by sending communications to both (1) Whois Data Shield; Registrant : Hong Kong Names LLC (including by email and in hardcopy to the contact details provided by the Registrant for Hong Kong names LLC) and (2) Moniker Online Services Inc., through their nominated means of contact, has exercised the utmost care and at the least fulfilled its responsibility under paragraph 2 of the Rules to employ reasonably available means calculated to achieve actual notice of the Complaint to the Respondent.
A. Identical or Confusingly Similar
The Complainant has produced documentary evidence to the effect that it has rights in the registered trademarks ESTES and ESTES EXPRESS LINES. The disputed domain name is <estesexpresslines.com>. The gTLD qualifier, in this case “.com”, being an inevitable part of the domain name, is disregarded in determining whether there is confusing similarity. Also disregarded are spaces, which are not accepted in a domain name, and the distinction between upper and lower case typing. What remains of the disputed domain name is “estesexpresslines”, which is virtually identical to the Complainant’s trademark ESTES EXPRESS LINES, and by embodying the distinctive word “estes” is confusingly similar to the trademark ESTES. The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent does not have any rights or legitimate interests in the disputed domain name, has not received approval or authorization from the Complainant to use it, and has no connection with the Complainant. The Complainant states that the Respondent does not use the Complainant’s trademarks or any variation thereof legitimately. The Complainant has found no evidence of any company of the Respondent bearing the name of the disputed domain name and there is no evidence that the Respondent conducts any legitimate business under a name corresponding to the domain name. Such use as is being made of the domain name is not legitimate and is commercial.
The Complainant’s assertions constitute a prima facie case to the effect that the Respondent has no rights or legitimate interests in the domain name. It is for the Respondent to refute the Complainant’s prima facie case, for which paragraph 4(c) of the Policy makes provision and provides guidance, but the Respondent has not replied.
The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith:
“(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 on-line 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.”
Paragraph 4(b)(iv) of the Policy applies best to the present circumstances. According to the uncontested evidence, the Respondent has registered the domain name <estesexpresslines.com>, which is effectively identical to one of the Complainant’s trademarks and confusing similar to another, and has set up a website at the corresponding Internet address. The Complainant’s own website address is “www.estes-express.com”. The Complainant is in the business of transporting freight and according to the evidence is well known at least in the United States of America.
The Respondent’s website, according to the screen prints provided in evidence, is comprehensive, professional in appearance and covers many pages. It is devoted to the topic of the freight transportation business and has the heading “Welcome to estesexpresslines.com”, thereby appropriating the Complainant’s trademark.
The function of the Respondent’s website is apparently to provide visitors with links to other suppliers of goods and services in the freight transportation business. Links lead to about 70 other sources, some of which are themselves business directories.
The Respondent appears to have commissioned a website likely to have required considerable trouble and incurred expense for what can only reasonably have been an intention to profit. The most likely conclusion is that the Respondent has set up a click-through operation whereby it may collect revenue when a visitor is connected to or makes a purchase from a linked website. The success of the Respondent’s operation presumably depends on attracting visitors, either through independent search techniques or by relying on Internet users to stumble upon the Respondent’s website as a result of wrongly guessing, wrongly remembering or wrongly typing the Complainant’s Internet address, and being confused into thinking they have found it.
All of the elements of paragraph 4(b)(iv) of the Policy are found to be present because the Respondent’s domain name is in use, is intended to attract Internet users, relies on confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website in order to do so, and exists for commercial gain. The Panel finds bad faith to be proven.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <estesexpresslines.com>, be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: April 9, 2007