WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Associated London Distribution Limited t/a ALD Logistics v. Maria Weiss

Case No. D2012-0469

1. The Parties

The Complainant is Associated London Distribution Limited t/a ALD Logistics of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Adlex Solicitors, UK.

The Respondent is Maria Weiss of Berlin, Germany.

2. The Domain Name and Registrar

The disputed domain name <aldlogistic.com> is registered with Melbourne IT Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2012. On March 8, 2012, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On March 9, 2012, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 4, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 5, 2012.

The Center appointed Ross Carson as the sole panelist in this matter on April 20, 2012. 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

Complainant was incorporated on March 31, 2000 and has carried on the business of providing a logistics service under the trademark ALD LOGISTICS, including planning, implementation and reporting to customers in the United Kingdom, mainly via its extensive road haulage services, since approximately 2000. Examples of the services provided by Complainant include: newspaper distribution, both national & regional titles, delivering in excess of 1.5 million copies daily in London and the South East of England; distribution of magazines, weekly & monthly titles; postal services, handling business post in to Royal Mail Centers and bulk food processing product delivery.

Complainant has 115 full time staff, with 10 business partners based around the UK. It operates 73 vehicles (3.5 to 44 tons), plus 25 “man and van” contractors. During the period October 2010 to September 2011 Complainant’s vehicles, prominently displaying its trademark ALD LOGISTICS, covered approximately 3.5 million miles over 45,000 routes throughout the UK. Complainant is a member of the Freight Transport Association, Freight Operators Recognition Scheme and UPN Pallet network in partnership with depots all over the UK. Complainant’s turnover in 2005 was GBP 3,428,000 Pounds Sterling increasing to GBP 7,608,000 Pounds Sterling in the year 2009.

Complainant is not the owner of any registered trademarks and relies on the goodwill associated with its common law trademark ALD LOGISTICS. According to the Registrar’s verification response, the disputed domain name <aldlogistic.com> was registered on December 10, 2011.

5. Parties’ Contentions

A. Complainant

A.1. Identical or Confusingly Similar

Complainant relies on common law rights. Complainant submits that by virtue of its extensive trading and marketing activities, it has acquired substantial reputation and goodwill in the common law trademark ALD LOGISTICS, that it is recognized by the public as distinctive of Complainant’s services in the UK.

Complainant further submits that the disputed domain name <aldlogistic.com> differs only by the removal of the letter “s” at the end of Complainant’s trademark thus creating a misspelling of the Complainant’s trade mark ALD LOGISTICS. Complainant submits the disputed domain name is therefore confusingly similar to the Complainant’s common law trademark.

A.2. Rights or Legitimate Interests

The disputed domain name was registered on December 10, 2011. As at February 29, 2012 the website associated with the disputed domain name comprised a notice stating that the site was under construction.

Complainant states that it has no association with Respondent and has never authorized or licensed Respondent to use its trademark.

Complainant states that Respondent has used Complainant’s trademark ALD LOGISTICS fraudulently by holding itself out as Complainant and placing advertisements purporting to advertise a job vacancy with Complainant for “the representative of external trade in the European region” with employment agencies in Europe. The advertisements provided by Respondent to the employment agencies fraudulently feature Complainant’s address and postal code, and a summary of Complainant’s business activities and incorporate the disputed domain name <aldlogistic.com> as the e-mail contact for persons seeking the purported non-existent position with Complainant. Complainant states that Respondent placed the unauthorized and fraudulent advertisements using Complainant’s logo and trademark ALD LOGISTICS with various online recruitment websites such as “www.stepstone.de” and “www.multilingualvacancies.com” without Complainant’s knowledge and consent.

Complainant states that Respondent’s advertisements appear to have been part of a fraud to entice job seekers to apply for jobs working for Complainant in Europe by using the Complainant’s name, address and a very similar email address to that used by the Complainant for its own domain (<www.aldlogistics.co.uk> versus <aldlogistic.com>).

Complainant submits that Respondent, pretending to be the Complainant, seems to have recruited applicants to provide services (from home) for Respondent’s benefit (probably for an unlawful purpose), in circumstances where Respondent clearly had no intention of ultimately paying such persons. Indeed, Complainant was subsequently contacted by the defrauded workers seeking payment for the work which they thought they were doing on behalf of Complainant. The work appears to have involved inspecting/re-packaging and sending out electrical equipment.

Complainant submits that an invoice for placing job advertisements placed by Respondent with “Stepstone.de” was directed to the Complainant to settle which shows that Respondent was confusing companies with which it was dealing as well as job seekers that it was Complainant.

Complainant submits that Respondent has clearly used the disputed domain name and Complainant’s trade mark ALD LOGISTICS to fraudulently impersonate Complainant. Complainant submits that such use of the disputed domain name could not be said to be bona fide. See, e g. Neteller plc v. Prostoprom, WIPO Case No. D2007-1713, where the UDRP panel said : “It cannot be the case that a cybersquatter who registers a domain name in bad faith, and then operates a business under that domain name long enough for the business to become ‘commonly known by’ the domain name, thereby acquires a complete defense under Paragraph 4(c)(ii). That would not make any sense. If that were the correct interpretation of Paragraph 4(c)(ii), every cybersquatter who registered a domain name in bad faith would be able to ‘create’ a defense under Paragraph 4(c)(ii) by the simple expedient of adopting the domain name as the name of his/her business or organization, thereby defeating the intended operation of the Policy. ” See also, Technosytems Consolidated Corporation, Invention Submission Corporation t/a Invent Help v. Hugh Godman, Royal Computer Proprietary Ltd, WIPO Case No. DAU2007-0001, where the panel concluded that the respondent had not demonstrated that it was commonly known by the disputed domain names notwithstanding the registration of various trademarks and business names as they were not registered in connection with an apparent bona fide offering of goods and services.

Complainant relies on Paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) which expresses the consensus view concerning the burden of proof relating to lack of rights or legitimate interests as follows:

“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP ... If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”

A.3. Registration in Bad Faith

Complainant states that Respondent registered the disputed domain name, and has used it, for the purposes of fraudulently impersonating the Complaint and deceiving the public.

A.4. Use in Bad Faith

Complainant submits that the use of the disputed domain name <aldlogistic.com> as the contact e-mail address for the fraudulent advertisements for nonexistent purported employee positions with Complainant prepared and used by Respondent constitutes evidence of use of the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “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.”

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:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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.

The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response may result in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.

Complainant does not own a registered trademark. Complainant is the owner of a common law trademark ALD LOGISTICS which has been extensively used by Complainant for a decade to distinguish the services it provides in the UK including planning, implementation and reporting to customers , mainly via its extensive road haulage services.

WIPO Overview, 2.0 at paragraph 1.7 provides the consensus view among WIPO UDRP panel for the Complainant to successfully assert common law or unregistered trademark rights:

“The 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. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark.”

Respondent has prepared advertisements misrepresenting itself as Complainant offering positions with Complainant as Complainant’s “representative of external trade in the European region.” The contact e-mail address provided in the misleading advertisements is the disputed domain name <aldlogistic.com>. Even though Complainant does not currently carry on business in Europe, it is clear that Respondent is passing itself off as Complainant by adopting the Complainant’s identity including its common law trademark ALD LOGISTICS and using the disputed domain name <aldlogistic.com> as the Internet contact address to respond to Respondent’s unauthorized advertisements. Previous UDRP panels have recognized common law trademarks where respondents have used a complainant’s trademark for purposes of misleading the public by presenting itself as complainant.

The Panel finds that Complainant has established common law rights in its trademark ALD LOGISTICS.

The disputed domain name <aldlogistic.com> is comprised of all the letters in Complainant’s trademark ALD LOGISTICS with the exception of the letter “s”.

The inclusion of the generic top level domain “.com” in the disputed domain name may not affect a finding of confusing similarity. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. See, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

The Panel finds that Complainant has established on a balance of probabilities that the disputed domain name is confusingly similar to Complainant’s common law trademark.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s trademark.

Complainant’s position is that there is no evidence that Respondent has ever used the disputed domain name in connection with any bona fide offering of goods or services. As at February 29, 2012, the website associated with the disputed domain name comprised a notice stating that the site was under construction.

Complainant’s evidence is that Respondent used Complainant’s trademark ALD LOGISTICS misleadingly by holding itself out as Complainant and placing advertisements purporting to advertise a job vacancy with Complainant for “the representative of external trade in the European region” with employment agencies in Europe. The advertisements provided by Respondent to the employment agencies unauthorizedly feature Complainant’s address and postal code, and a summary of Complainant’s business activities. The advertisements incorporate the disputed domain name <aldlogistic.com> as the e-mail contact for persons seeking the purported non-existent position with Complainant. Respondent placed the unauthorized and misleading advertisements using Complainant’s logo and trademark ALD LOGISTICS with various online recruitment websites such as “www.stepstone.de” and “www.multilingualvacancies.com” without Complainant’s knowledge and consent.

The disputed domain name <aldlogistic.com> which Respondent employed as the contact address for Internet users responding to Respondent’s advertisements also closely resembles Complainant’s registered domain name <aldlogistics.co.uk>.

Complainant has been contacted by workers who responded to Respondent’s misleading advertisements seeking payment from Complainant for work which appears to have been performed for Respondent which they thought they were performing on behalf of Complainant. The work appears to have involved inspecting/re-packaging and sending out electrical equipment. Complainant was also invoiced by “Stepstone.de” for the cost of services provided to Respondent which suggests that Respondent was confusing companies with which it was dealing as well as job seekers that it was Complainant.

The Panel finds that Complainant has made a prima facie case that Respondent has no rights to or legitimate interests in the disputed domain name.

It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a disputed domain name. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once this showing is made, the burden of production of evidence shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name. A respondent is entitled to avail itself of the benefits of paragraph 4(c) of the Policy to demonstrate its rights and legitimate interests in the disputed domain name in responding to the Complaint. Respondent did not file a Response to avail itself of the opportunity provided to file evidence under paragraph 4(c) of the Policy.

The Panel finds that Respondent’s unauthorized and misleading use of Complainant’s identity to attract employees for a purported but non existant job with Complainant using the disputed domain name as Respondent’s contact address is not a bona fide or legitimate use of the disputed domain name. See, e.g. Neteller plc v. Prostoprom, WIPO Case No. D2007-1713, where the Panel said : “It cannot be the case that a cybersquatter who registers a domain name in bad faith, and then operates a business under that domain name long enough for the business to become ‘commonly known by’ the domain name, thereby acquires a complete defense under Paragraph 4(c)(ii). That would not make any sense. If that were the correct interpretation of Paragraph 4(c)(ii), every cybersquatter who registered a domain name in bad faith would be able to ‘create’ a defense under Paragraph 4(c)(ii) by the simple expedient of adopting the domain name as the name of his/her business or organization, thereby defeating the intended operation of the Policy.”. See also, Technosytems Consolidated Corporation, Invention Submission Corporation t/a Invent Help v. Hugh Godman, Royal Computer Proprietary Ltd, WIPO Case No. DAU2007-0001, where the panel concluded that the respondent had not demonstrated that it was commonly known by the disputed domain names notwithstanding the registration of various trademarks and business names as they were not registered in connection with an apparent bona fide offering of goods and services.

The Panel finds that Complainant has on a balance of probabilities established that Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and used in bad faith.

C. 1. Registered in Bad Faith

Respondent’s web page associated with the disputed domain name was still under construction as of February 29, 2012.

Respondent holding itself out as Complainant misleadingly and without authorization placed advertisements purporting to advertise a job vacancy with Complainant for “the representative of external trade in the European region” with employment agencies in Europe. Respondent’s misleading advertisements feature Complainant’s trademark ALD LOGISTICS, Complainant’s address and postal code, and a summary of Complainant’s business activities. Respondent’s unauthorized advertisements incorporate the disputed domain name <aldlogistic.com> as the e-mail contact for Internet users responding to Respondent’s advertisements of purported non-existent positions with Complainant. Respondent placed the unauthorized and fraudulent advertisements using Complainant’s logo and trademark ALD LOGISTICS with various online recruitment websites such as “www.stepstone.de” and “www.multilingualvacancies.com” without Complainant’s knowledge and consent.

The Panel finds on a balance of probabilities that Respondent registered the disputed domain name in bad faith as the only evidence of use of the disputed domain name is as the contact address associated with the Respondent’s misleading advertisements purporting to be for a non-existent position in Europe with Complainant.

C.2. Domain Name Used in Bad Faith

Paragraph 4(b)(iv) of the Policy provides that using a domain name to intentionally attempt to attract Internet users to your on-line location for commercial gain by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a respondent’s website constitutes evidence of bad faith use of a domain name.

In this Panel’s view, Respondent by using the disputed domain name as the contact address for Internet users to respond to unauthorized and misleading advertisements of a purported job with Complainant in Europe for commercial gain by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s employment advertisements constitutes evidence of bad faith use of a domain name.

The Panel infers that Respondent is profiting from passing itself off as Complainant in advertising purported jobs with Complainant. In this Panel’s view, Respondent is acting in bad faith when Respondent intentionally invites Internet users to respond to purported jobs with Complainant by contacting Respondent utilizing the disputed domain name. See, Daniel C. Marino, Jr. v. Video Images Productions, et al., WIPO Case No. D2000-0598.

The Panel finds that Complainant has proven on a balance of probabilities that Respondent has used and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that Complainant satisfies the requirement under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <aldlogistic.com> be transferred to Complainant.

Ross Carson
Sole Panelist
Dated: May 1, 2012