WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ArcBest Corporation v. Domains By Proxy, LLC, Registration Private / Vernon Troupe
Case No. D2016-2381
1. The Parties
The Complainant is ArcBest Corporation of Fort Smith, Arkansas, United States of America (“USA” or “US”), represented by Andrews & Kurth, LLP, USA.
The Respondent is Domains By Proxy, LLC, Registration Private of Scottsdale, Arizona, USA / Vernon Troupe of Clearwater, Florida, USA.
2. The Domain Name and Registrar
The disputed domain name <arcbest.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2016. On November 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 28, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 30, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on December 5, 2016 (the Complaint and the amended Complaint are referred hereinafter both together as the “Complaint”).
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 December 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2017.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on January 11, 2017. 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 Complainant is a logistics, freight, shipping, and trucking company organized under the laws of the US State of Delaware and headquartered in Fort Smith, Arkansas, USA. The Complainant’s principal website is found at “www.arcb.com”.
From the Complaint and the Complainant’s website, it appears that the acquisition of Best Motor Freight by Arkansas Motor Freight in the late 1950s ultimately resulted in the creation of a company called Arkansas Best Corporation, which was listed on the New York Stock Exchange and then on the NASDAQ stock exchange. The record includes media articles from 1965 and 2013 referring to the Complainant as “Ark Best”, and the Complaint asserts that the company has been commonly known by the name “Arkansas Best” or the abbreviated form “Ark Best” since the late 1950s, as “Ark” is frequently an abbreviation for “Arkansas”. The Complainant used the domain name <arkbest.com> for its principal website starting in 1996.
However, in 2014 the Complainant officially changed its name to ArcBest Corporation, phonetically identical but perhaps less visibly tied to the State of Arkansas, as the Complainant had grown into one of the country’s larger transcontinental freight carriers. The Complainant still holds the domain name <arkbest.com>, but that domain name now redirects to the Complainant’s website at “www.arcb.com”.
According to the Registrar, the Domain Name was created on February 10, 2002. The Complaint does not include any information from domain history or historical WhoIs tools, so it is not established, on this record, when the Respondent acquired the Domain Name. At some point the Domain Name was registered in the name of the Respondent domain privacy service, which has expressed no interest in the Domain Name in this proceeding. Instead, the domain privacy service identified the Respondent Mr. Troupe as the real party in interest, and the Registrar has updated its WhoIs database accordingly, showing Mr. Troupe, with an address in Clearwater, Florida, USA, as the registrant of the Domain Name. Hence, the Panel will refer hereafter to Mr. Troupe as the Respondent.
The Respondent has not submitted a Response in this proceeding. The Complaint attaches evidence indicating that over 1,100 domain names are registered with either the same postal or email address that appears in the Respondent’s registration for the Domain Name, not all of them naming “Vernon Troupe” as the registrant. Thus, the Respondent appears to be a domainer who speculates in the purchase and sale of domain names, perhaps not always under his own name. The Panel has not found evidence that the Respondent has been implicated in cybersquatting in prior UDRP proceedings.
At the time of this Decision, the Domain Name does not resolve to an active website but rather to a page headed with the Domain Name and the following statement:
“Please visit this site later; we are in the process of redoing it.”
This statement is followed by contact information and a copyright notice dated “2005-2016”.
Screenshots of this page earlier in 2016 and as far back as 2013, archived by the Internet Archive’s Wayback Machine, are similar, but in place of the contact information they read as follows:
“If you're looking for the page that tells How To Make $500 or More Per Day so you can Quit Your Job, then... Click Here”
In the period 2002-2004, archived screenshots of the page to which the Domain Name resolved also referred to a website under construction but asked visitors to leave contact information to learn about website promotion tools and techniques.
According to the Complaint, visitors clicking on the link placed on the landing page to which the Domain Name resolved in the period 2013-2016 were directed to the landing page of an affiliate marketing program, “www.websites4affiliates.com”. This website served advertising links, presumably monetized on a pay-per-click (“PPC”) basis. As the Panel understands it, such advertising is generally based inter alia on a user’s recent searches and web browsing history, and the Complainant reports, not surprisingly in the Panel’s view, that the results included links to the Complainant and its competitors.
The Complainant’s representative sent emails to the Respondent in 2016 concerning the Domain Name. The Respondent subsequently removed the link to the advertising landing page but did not reply to the Complainant’s communications.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to ARKANSAS BEST, and ARK BEST, in which it claims common law rights as unregistered marks. (In the discussion of bad faith, the Complaint also refers on one occasion to ABF and ARCBEST as its trademarks but does not otherwise discuss these marks.)
The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name. Although it appears that the Respondent may have recently established a limited liability company with a similar name, that act is not relevant because it occurred after notice of the dispute.
Finally, the Complainant urges the Panel to find that the Domain Name was registered and used in bad faith. The Complainant argues that it is “implausible” that the Respondent was unaware of the Complainant, “a large, publicly traded company, or Complainant’s trademark rights.” The Complainant observes that the Respondent concealed his identity through a domain privacy service, selected a Domain Name phonetically identical and visually similar to the Complainant’s common law ARK BEST mark and <arkbest.com> domain name, and linked visitors to a landing page with PPC advertising until contacted by the Complainant’s representative. The Complainant concludes “on information and belief” that the Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant and meanwhile misdirecting Internet users for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The first element of the UDRP “serves essentially as a standing requirement” and entails “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
The Complainant explicitly grounds the Complaint on the assertion of common law trademark rights, dating from 1957, in using the former company name ARKANSAS BEST and the abbreviated form of that name, ARK BEST, as service marks. It does not appear that the Complainant or its predecessors ever obtained a trademark registration for either appellation. Both are similar to the Domain Name (the former only if one assumes a general awareness of “ARK” as an abbreviation for “Arkansas”), but the Complainant’s asserted trademark interests are somewhat problematic.
The Complainant changed its name in 2014 to ArcBest Corporation, and the online database of the US Patent and Trademark Office shows that the Complainant’s affiliate ArcBest IP Holdings, LLC has obtained US Trademark Registration Numbers 4871316 (registered December 15, 2015) for ARCBEST CORPORATION as a standard character mark and 4852007 (registered November 10, 2015) for a design mark prominently featuring the words ARCBEST CORPORATION.
The Complaint does not mention these recent trademark registrations. They could be used to establish standing under the first element of the Complaint, but of course they could not be relied upon to establish bad faith under the third element, unless the Complainant could establish that the Respondent only acquired the Domain Name quite recently. This may explain the Complainant’s silence about these marks. But it raises the problem that the Complaint does not establish that the Complainant has maintained rights or interests in ARK BEST or ARKANSAS BEST as service marks since changing its name and rebranding its services in 2014. Those names do not appear on the Complainant’s website. Instead, the new, registered ARCBEST design mark is featured on the Complainant’s website. The Complaint offers no examples of any use of ARK BEST or ARKANSAS BEST as common law marks designating the Complainant’s services since the rebranding.
Moreover, the Complainant’s assertions of historical use of the marks, while plausible, are not supported by the kinds of evidence that UDRP panels typically require in the absence of trademark registration. When relying on a common law mark, “[t]he complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.” (WIPO Overview 2.0, paragraph 1.7).
Here, the record includes just two media articles, one from 1965 and one from 2013, and references to the original domain name registered by the Complainant, <arkbest.com>. The Complaint does not attach any advertising, photographs of truck or office signage, copies of letterhead, or other printed materials demonstrating that the Complainant used ARK BEST or ARKANSAS BEST as unregistered service marks. The Complaint attaches a screenshot of its website at “www.arkbest.com” from January 1998, which is instructive. “Arkbest” appears nowhere other than in the domain name itself. “Arkansas Best” appears nowhere without the word “Corporation”, as it was the name of the company at the time. Neither appears with a “TM” or “SM” symbol asserting unregistered trademark rights. A figurative “AB” logo is displayed, along with the logos of several subsidiaries; none of these are accompanied by trademark symbols.
In short, the Complainant has not submitted sufficient evidence in this proceeding to prove that (a) the Complainant historically established the claimed common law trademark rights in ARK BEST or ARKANSAS BEST or (b) the Complainant maintained any such rights to the present day after its corporate rebranding in 2014.
Nevertheless, the Panel will proceed to discuss the other elements of the Complaint, because the Complainant does hold recently registered ARCBEST CORPORATION trademarks that are confusingly similar to the Domain Name, as ARCBEST is the distinctive portion of the mark and is the entirety of the Domain Name. While the Complainant does not mention these trademark registrations, the Panel takes judicial notice of them as sufficient to afford standing.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.
Here, the Respondent has not come forward to assert rights or legitimate interests in the Domain Name, and the Respondent has made no use of the Domain Name that indicates such rights or legitimate interests. On the other hand, given the Complainant’s failure to establish relevant common law marks, the Complainant cannot be deemed even to have made out a prima facie case, unless the Complainant can establish that the Respondent more likely than not acquired the Domain Name recently in an effort to exploit the Complainant’s recently registered ARCBEST trademarks. That possibility is addressed in the following discussion of bad faith.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following passages cited by the Complainant (in which “you” refers to the registrant of the domain name):
“(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 …
(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.”
The Complainant’s difficulties are reflected in its introducing these contentions “on information and belief”. This phrase has meaning in US notice pleading, where discovery will follow before adjudication. Not so in a UDRP proceeding, where the parties normally have only a single opportunity to present all evidence to the panel in documentary form. Examining the available record here, the Panel finds that the Respondent appears to be in the business of buying and selling domain names, and the Respondent linked the Domain Name for a time to a landing page with PPC advertising links. The problem is connecting these practices with any intent to exploit the Complainant’s trademarks. The Complainant has not established ARK BEST or ARKANSAS BEST as common law trademarks and only obtained registered ARCBEST trademarks in 2015, long after the Domain Name was created in 2002. Domain history or historical WhoIs tools might be used to help establish when the Respondent acquired the Domain Name, although the archived screenshots show a similar use of the Domain Name going back several years. Absent evidence indicating that the Respondent acquired the Domain Name recently in contemplation of the Complainant’s rebranding, the Complainant probably could not demonstrate bad faith intent to target its ARCBEST marks (see WIPO Overview 2.0, paragraph 3.1).
Clearly, the Respondent or a predecessor found potential value in the name “arcbest” in 2002, when the Domain Name was created, long before the Complainant chose that name for a corporate brand. The Complainant assumes this was meant to mimic the Complainant’s <arkbest.com> domain name and exploit the Complainant’s common law mark. But the Complainant has not shown that it used a corresponding name itself as a trademark, nor that the Domain Name registrant acted as though the name had the presumed trademark value. The Complainant infers that the Domain Name was registered “primarily” with the intent of selling it to the Complainant for a profit, but it seems that in fifteen years the owner of the Domain Name has never approached the Complainant about selling the Domain Name and did not respond to the Complainant’s overtures in 2016. The Domain Name was used to advertise the Respondent’s perpetually upcoming website promotion services and collect user contact details and, for a time many years after it was first registered, it was linked to a third party’s advertising landing page. This hardly seems to have been a concerted campaign to exploit what was perceived as a valuable trademark property of a national trucking company.
On the available record, the Panel concludes that the Complainant has not met its burden of establishing the probability that the Respondent registered and used the Domain Name in bad faith, to exploit the perceived trademark value of the Domain Name. The Complaint fails on the third element, and for lack of proof that the Respondent acquired the Domain Name since the Complainant recently obtained trademark rights, the Complaint fails on the second element as well.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Date: January 13, 2017