WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Saia, Inc. v. Whois Privacy Services Pty Ltd / Damon Nelson - Manager, Quantec, LLC/Novo Point, LLC
Case No. D2014-1158
1. The Parties
Complainant is Saia, Inc. of Johns Creek, Georgia, United States of America (“US”), represented by Bryan Cave, LLP, US.
Respondent is Whois Privacy Services Pty Ltd of Queensland, Australia / Damon Nelson - Manager, Quantec, LLC/Novo Point, LLC. of Dallas, Texas, US, represented by Gary N. Schepps.
2. The Domain Name and Registrar
The disputed domain name <saiamotorfrieght.com> ("Domain Name") is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2014. On July 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 7, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name that differed from the named Respondent and contact information in the Complaint, as well as indicating that the Domain Name may be subject to a court action and including a copy of an Order of the United States District Court for the Northern District of Texas dated February 28, 2014. The Center sent an email communication to Complainant on July 9, 2014, providing the information given by the Registrar and inviting Complainant to comment on it. Complainant filed an Amended Complaint on July 10, 2014, and requested that the proceeding continue.
The Center verified that the Complaint together with the amended 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 July 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 1, 2014.
On August 3, 2014, the Center received a submission from Respondent Quantec, LLC (“Quantec”)1 . The Center acknowledged its receipt, noting that the Response due date was July 31, 2014, and that it would bring Respondent Quantec’s submission to the attention of the panel, upon appointment, who would have the ultimate discretion to consider or reject said submission.
On August 8, 2014, the Center received an unrequested Supplemental Filing from Complainant. The Center acknowledged receipt of the Supplemental Filing on August 11, 2014.
On August 13, 2014, the Center received an unrequested Supplemental Filing from Respondent Quantec. The Center acknowledged receipt of the Supplemental Filing on August 14, 2014. This filing attached copies of two orders of the District Court dated November 24, 2010, and December 17, 2010.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on August 15, 2014. 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 Saia, Inc. is a freight, trucking, and third-party logistics company founded in 1924 and now operating 147 terminals in North America. Complainant had 2012 revenues of USD 1 billion.
Complainant has used the SAIA trademark since the 1930’s in connection with transportation and logistics solutions services.
Complainant owns a number of current trademark registrations on the Principal Register of the US, including, inter alia, SAIA MOTOR logo, Registration No. 1,791,933, dated September 7, 1993, for motor truck freight transportation services; and SAIA logo, No. 2,551,831, dated March 26, 2002, for motor truck freight transportation services.
Complainant maintains a website on the Internet with the domain name <saia.com>. Complainant owns the domain names <saia.com>; <saiamotor.com>, <saiafreight.com>, among others using the “saia” designation.
The Registrar’s verification states with respect to the date of the Domain Name’s registration “Unsure as to exact date.” The WhoIs record from the Registrar’s database submitted by Complainant shows a creation date for the Domain Name of May 17, 2005. The expiration date is May 17, 2015, which is consistent with the creation date.
The Domain Name opens to a parked page that resolves to pages providing links to sites for goods and services some of which compete with those of Complainant.
5. Parties’ Contentions
Complainant contends that the Domain Name wholly incorporates and is confusingly similar to Complainant’s SAIA trademarks, albeit with a misspelling of “freight” and the addition of the generic Top-Level Domain “.com”, neither of which is sufficient to overcome the confusing similarity of the Domain Name to Complainant’s trademarks.
Complainant further contends that Respondent has no rights or legitimate interests in the Domain Name for the following reasons.
Respondent does not use the Domain Name or the SAIA mark in connection with a bona fide offering of goods or services. Respondent is not associated in any way with Complainant and has no authorization from Complainant to use the SAIA marks. Respondent is using the Domain Name for the sole purpose of diverting Internet users to advertisements for companies that are not related to Complainant and most of which are direct competitors of Complainant. Respondent is wrongfully trading on the goodwill of the SAIA trademarks, which cannot constitute a bona fide offering of goods or services.
Respondent has never been commonly known as “Saia”. Respondent has no intellectual property rights in the SAIA marks, and its use of those marks constitutes trademark infringement, which cannot give rise to rights or legitimate interests on the part of Respondent.
Respondent is not making any legitimate noncommercial use of the Domain Name. Respondent registered the Domain Name for commercial purposes to obtain Internet traffic intended for Complainant.
Finally, Complainant contends that the Domain Name was registered and is being used in bad faith. Complainant first cites that Respondent is attempting to divert, for commercial gain, Internet users to Respondent’s website and then to websites of Complainant’s competitors.
Second, Complainant contends that Respondent’s conduct is designed to disrupt and harm Complainant’s business noting the use of an infringing domain name to divert potential users from Complainant’s website to the websites of competitors thus causing consumer confusion, lost sales and goodwill, and the loss of a general ability to communicate with existing and potential customers.
Third, Respondent has absolutely no rights or legitimate interests in the Domain Name and is thus guilty of “opportunistic bad faith”.
Fourth, Respondent plainly knew of Complainant’s long and continuous use of the SAIA trademarks at the time of registration of the Domain Name and knew that Respondent had no right, title or interest in those trademarks.
Fifth, Respondent has engaged in a pattern of conduct of bad faith registration and use of other persons’ trademarks in the registration of domain names. Respondent is a serial cybersquatter engaged in a pattern of registering domain names to profit from trademark owners’ names and consumer confusion.
Respondent Quantec contends that the Domain Name incorporates the SAIA name but is not identical to the SAIA trademark because the Domain Name is “SAIA-motorfrieght and SAIA does not hold a trademark for SAIAmotorfrieght”. Respondent Quantec does not address the issue of confusing similarity of the Domain Name and Complainant’s trademarks.
Respondent Quantec contends that the Domain Name is being held for a jobs website the development of which has not been completed because the Domain Name has been frozen by the “domain name registry” due to pending litigation.
Respondent Quantec contends that the intended use as a jobs site for “saia” motor freight job listings is a “nominative fair use” of the Domain Name.
Respondent Quantec contends that the purpose and use of the Domain Name is not commercial because, pointing to a parking page, it generates only USD 1 per year in gross revenue and costs USD 9.00 per year to renew.
Respondent Quantec contends that the illegal actions alleged by Complainant are the actions of the US Federal Receiver made with the approval of the US District Court. It asserts that the District Judge specifically approved the registration of the Domain Name. It is not credible, Respondent Quantec says, that the District Court and its Receiver acted with bad faith intent and knowingly registered or used the Domain Name in violation of law.
Finally, Respondent Quantec contends that the series of cases referenced by Complainant as evidencing bad faith by the Respondent were default proceedings engaged in despite the US receivership and, with one exception, have been vacated by the court.
6. Discussion and Findings
A. Procedural Issues
(i) Late Filed Response
When the Center had not received a response from Respondent on July 31, 2014, as required, it issued a Notification of Respondent Default on August 1, 2014. On August 3, 2014, Respondent Quantec claimed that it had emailed its Response to the Center as required on July 31, 2014, but that the Center’s email system failed to accept it. Respondent Quantec produced an automatically generated email dated August 2, 2014 at 3:37 am CDT notifying the sender of a failure of delivery of more than 24 hours. It was not clear where the technical problem existed. The previous 24 hour period would have placed it at 3:37 AM CDT on August 1, 2014 which would have been close but still late. It would have been helpful if Respondent Quantec had supplied a copy of its sent email, but it did not, so there is doubt as to when Respondent Quantec actually sent its response to the Center. The Panel will afford Respondent Quantec the benefit of the doubt and accept its reply document.
(ii) Supplemental Filings
On August 8, 2014, Complainant filed a Supplemental Pleading relating to Respondent Quantec’s reply. The record shows that Respondent Quantec did not serve Complainant with its pleading, that Complainant did not learn until August 5, 2014 that a reply had been filed, and did not receive a copy of the reply from the Center until August 6, 2014. The Supplemental Filing was not requested but was filed within a reasonable time and prior to appointment of the Panel. The Supplemental Filing addressed several important procedural deficiencies in Respondent Quantec’s reply, not least of which was its failure to identify what person or entity was actually replying to the Complaint. These were issues Complainant could not have addressed in its Amended Complaint. Complainant also addressed certain issues raised by Respondent Quantec relating to the existence and significance of the federal receivership action. Complainant would not have had this information relating to the receivership and could not have addressed in the Complaint the issues raised by Respondent Quantec relating to that court proceeding. Complainant’s Supplemental Filing is deemed beneficial to the Panel and will be accepted.
On August 13, 2014, Respondent Quantec’s counsel filed an unrequested Supplemental Filing. This letter principally attempted to correct deficiencies of its initial pleading and present further argument concerning the substance of its defense. There was nothing in this document that should not or could not have been in its initial pleading, the argument was essentially repetitive. The Panel for those reasons does not find the Supplemental Filing helpful and declines to accept it. The Panel will, however, take note of two aspects of this filing: 1) Counsel for the first time represented to the Panel that he represents Quantec, LLC in this proceeding; and 2) the letter attaches two orders of the US District Court for the Northern District of Texas from November and December 2010 relating to the receivership action. The Panel discusses those orders below.
Counsel’s clarification that he represents Quantec, LLC means that only Quantec has responded to the Complaint and that, consequently, if any of the other persons or entities identified by the Registrar as registrants of the Domain Name are distinct owners of the Domain Name registration, those persons remain in default in this proceeding.
(iii) The US District Court Receivership Action
The District Court’s orders of November 24, 2010, and December 17, 2010, indicate that respondents Quantec, LLC and Novo Point, LLC were subjects of the receivership established at that time. Those orders do not specifically identify the Domain Name as the property of either entity. More importantly, the Court’s order of February 28, 2014, provided for the record by the Registrar, orders the winding down of the receivership, including, inter alia, return of receivership assets to Novo Point and Quantec and their agent Lisa Katz. By March 17, 2014, the Receiver was to remove any impediments to Novo Point and Quantec exercising control over their assets. The Court vacated the orders appointing Damon Nelson as manager of Novo Point and Quantec, and the Court denied a request to enjoin third-party actions regarding the Novo Point and Quantec assets, noting that it lacked jurisdiction over disputes regarding ownership of the Novo Point and Quantec receivership assets. If there is a subsequent order of the Court that would have a bearing on the case before this Panel, it is not part of the record.
Complainant has requested that this matter proceed to decision. Respondent Quantec has tossed the court action into the mix but has provided no reason why this should mean that the Panel cannot or should not act on the merits of the case. Nor for that matter has Respondent Quantec requested that this proceeding be suspended or terminated on the basis of the receivership action.
Under paragraph 18(a) of the Rules, the Panel has discretion to suspend, terminate or continue a UDRP proceeding where the disputed domain name is the subject of other pending legal proceedings. Paragraph 4.14, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") provides that a panel may terminate or suspend a proceeding where it determines that a UDRP dispute cannot be evaluated separately from an ongoing court proceeding. As discussed above, it is not clear from the record before the Panel that the receivership action is continuing or, if not completely wound down, that the Domain Name is a subject of any ongoing proceeding in the Court. The Court’s February 28, 2014, Order suggests that is not the case. The Panel thus finds no reason that this UDRP dispute cannot be evaluated separately from the receivership action, if in fact that action is not already finally terminated, and concludes that this proceeding should continue to a decision on the merits, as requested by Complainant.
B. Elements of the Case
Under the Policy, paragraph 4(a), Complainant must prove each of three elements of its case in order to obtain the requested relief:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent registered and is using the Domain Name in bad faith.
C. Identical or Confusingly Similar
Complainant demonstrates, and Respondent has not challenged, that Complainant has established legal rights in its SAIA trademark by reason of registrations on the Principal Register of the US and decades of use in the US.
The Domain Name is not identical to Complainant’s trademark. The Domain Name is, however, confusingly similar to Complainant’s trademarks, incorporating the SAIA and SAIA MOTOR trademarks in their entireties. The addition of the descriptive or generic term “freight” (misspelled as “frieght”) to SAIA and SAIA MOTOR does not distinguish the Domain Name from the trademarks and in fact, in this case, tends to reinforce the similarities because “Saia” is in fact in the freight business. See, e.g., HarperCollins Publisher Ltd. v. Digi Real Estate Foundation, WIPO Case No. D2009-0565. Complainant’s SAIA and SAIA MOTOR trademarks are registered in connection with “motor truck freight transportation services”. The misspelling in the Domain Name of “freight” as “frieght”, whether intentional or inadvertent, is not sufficient to distinguish the common descriptive word freight and is thus of no consequence in dispelling confusion with Complainant’s trademarks.
The Panel finds that the Domain Name is confusingly similar to Complainant’s established trademarks. Complainant has therefore established the first element of its case.
D. Rights or Legitimate Interests
Complainant must show that Respondent has no rights or legitimate interest in the Domain Name. As a practical matter, however, where Complainant makes a prima facie case that Respondent has no such right or interest, as the Panel finds Complainant has done here, the burden shifts to Respondent to show that it does possess such rights or legitimate interest.
Respondent Quantec contends that it had an intent to use the Domain Name to create a “jobs board” which the Panel reads as an attempt to show that it intended a bona fide offering of service but was somehow thwarted in that plan by the receivership action. Respondent Quantec’s case on this point does not hold together. There is, first, a serious problem of timing. The record before the Panel shows that the Domain Name was created in May 2005, well over five years prior to the creation of the receivership in November 2010. Respondent would have had ample time to develop a service site prior to the supposed litigation impediment, but there is no evidence whatsoever that it made any effort to do so. The fact remains that more than nine years after the Domain Name was registered, it is not being used in connection with a bona fide offering of goods or services. That is certainly long enough to negate Respondent Quantec's assertion of its intent.
Furthermore, Respondent Quantec fails to provide any explanation as to how the jobs board would work, why it would be legitimate for an entity not associated with Complainant to provide a “Saia” jobs board, and, more importantly, why it would be legitimate to use a Domain Name suggesting association with and sponsorship by “Saia” to draw job seekers to a jobs board that was not in fact operated or authorized by Complainant.
Without real support or analysis, Respondent Quantec asserts that the Domain Name would constitute “nominative fair use” and that there was a formal legal opinion of counsel to that effect. There is no such opinion in the record. The Panel cannot therefore assess its relevance or persuasiveness. In the one case cited to this Panel by Respondent Quantec, Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144 (4th Cir. 2012), the Court noted that nominative fair use usually comes into play when a defendant uses a famous mark to identify or compare the trademark owner’s product. Elements of the defense include use other than as a trademark, in a descriptive sense, and in good faith. The defendant may not do anything to suggest affiliation, sponsorship, or endorsement by the mark holder. Respondent Quantec has not made out a case of nominative fair use in the way Respondent is using Complainant’s trademarks in the Domain Name. The most obvious reason is that the Domain Name in fact does suggest affiliation, sponsorship or endorsement by “Saia” of Respondent’s website. The Domain Name indicates a “Saia” website. The Domain Name is not used descriptively, nor is it used in good faith.
Respondent has not demonstrated that it has rights or legitimate interests in the Domain Name. The Panel therefore concludes that Complainant has established the second element of its case.
E. Registered and Used in Bad Faith
Complainant must show that the Domain Name was registered and is used in bad faith. The fact that Respondent chose to register a domain name incorporating Complainant’s well-known SAIA trademark and coupling it with the words “motor” and “freight” (misspelled as “frieght”), which plainly describe Complainant’s business, are evidence that Respondent, which had no legitimate relationship to Complainant, knew it was appropriating Complainant’s trademark and intended to exploit it for Respondent’s own purposes. Prior UDRP panels have found that such conduct constitutes opportunistic bad faith. See, e.g., Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Sanofi-Aventis v. Nevis Domains LLC. WIPO Case No. D2006-0303; LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Sanofi-Aventis v. Nevis Domains LLC. WIPO Case No. D2006-0303.
Further, paragraph 4(b)(iv) of the Policy provides that the following is evidence of registration and use in bad faith:
“By using the domain name, you [Respondent] 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 Panel considers the evidence of record sufficient to establish that Respondent registered the Domain Name intending to exploit Complainant’s trademarks and Complainant’s goodwill in those marks to create confusion and divert Internet traffic to web pages that would then generate revenue for Respondent. The Domain Name in fact opens to a parking page that features links to websites of other trucking and freight companies, many of which compete directly with Complainant. The site is capable of diverting business from Complainant and generating click-through revenues for Respondent, which it has apparently done.
Respondent Quantec’s reply that the site has generated only USD 1 per year and is not profitable does not convert bad faith to good faith. Bad faith under paragraph 4(b)(iv) of the Policy is a matter of intent in the attempt to exploit user confusion for gain, not a quantifiable measure of the actual success of the scheme.
Respondent Quantec attempts also to avoid the inference of its own bad faith by assigning responsibility for the Domain Name to the Federal Receiver and the US District Court, asserting:
“The ‘illegal’ actions alleged by SAIA are the actions of the U.S. Federal Receiver made with the approval of the U.S. Federal District Court. It is not credible that the U.S. District Court and its Federal Receiver acted with bad faith intent and knowingly registered or used the domain name in violation of the law.”
The Panel can accept that it does not seem credible that the Court and the Receiver would knowingly and with bad faith intent “register and use” the Domain Name based on another’s registered trademarks. It is also not credible, however, that the Receiver would on his own dream up and then “register” a domain name “saiamotorfrieght” based on the SAIA trademark. Respondent Quantec, not the Receiver or the Court, appears to be obfuscating the critical issue of when the Domain Name was actually registered. As stated above, the record before the Panel, the Registrar’s own WhoIs database record, demonstrates that the Domain Name was first registered in May 2005, some five-and-a-half years before the court established the receivership and before the Receiver could have “registered or used” the Domain Name. If the original registration was in bad faith, as clearly appears to be the case, that bad faith existed and presumably continued from May 2005 forward. It may be that in the course of administering the receivership, which apparently involved large portfolios of domain names, the Receiver and the Court renewed many domain names, including the Domain Name here, to keep them from expiring, as they would have without payment of fees, and that the Court approved such renewals without reviewing each one on the merits. The record does not show what the Receiver or the Court actually did with respect to the Domain Name. The evidence on that point is more likely in control of Respondent than of Complainant, but Respondent did not come forward with facts or evidence to contradict that the Domain Name was actually registered long before the Receiver or the Court had anything to do with it. The Panel can say only that if the Domain Name was in fact first registered in bad faith in May 2005, as the record indicates, the mere renewal of the Domain Name registration would not negate the original and continuing bad faith underlying that Domain Name. See WIPO Overview 2.0, paragraph 3.7 (a mere renewal of a domain name has not generally been treated as a new registration for the purpose of assessing bad faith.).
The facts and circumstances sufficiently establish bad faith registration and use of the Domain Name under paragraph 4(b)(iv) of the Policy. See WIPO Overview 2.0, paragraph 3.8; Lyonnaise de Banque v. Richard J, WIPO Case No. D2006-0142.
Finally, Complainant points to evidence of a pattern of bad faith domain name registrations by Respondent based on a series of prior UDRP panel decisions. It is true that the District Court appears to have voided a number of those decisions. The effect of the Court’s ruling with respect to the issue of a pattern of conduct is not clear. This Panel need not reach that issue. There is sufficient evidence of record to decide the present case as if it represented a single instance of bad faith registration and use.
Complainant has established that, Respondent has registered and is using the Domain Name in bad faith, the third and final element of its case.
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 <saiamotorfrieght.com> be transferred to Complainant.
John R. Keys, Jr.
Date: August 26, 2014
1 The Panel notes that the original Complaint identified Whois Privacy Services Pty Ltd. as the registrant of the disputed domain name. In its verification, the Registrar confirmed that “3. According to our records, the Respondent is not the current registrant of the disputed domain name(s). 4. According to our records, the details of the current registrant of the disputed domain(s) are as follows: Registrant Name: Domain Admin: Damon Nelson - Manager Registrant Organization: Quantec, LLC/Novo Point, LLC”. Upon the Center’s email communication to Complainant sent on July 9, 2014, providing the information given by the Registrar and inviting Complainant to comment on it, in its Amended Complaint of July 10, 2014, Complainant indicated that “As per an apparent post-filing communication from the registrar to the Center, the registrar identified “Quantec, LLC/Novo Point, LLC” as the true registrant of the domain name. “Quantec, LLC/Novo Point, LLC” and “Whois Privacy Services Pty Ltd.” are collectively hereinafter referred to as “Respondent.” As discussed under Section 6. Counsel’s clarification that he represents Quantec, LLC means that only Quantec has responded to the Complaint and that, consequently, if any of the other persons or entities identified by the Registrar as registrants of the Domain Name are distinct owners of the Domain Name registration, those persons remain in default in this proceeding.