WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Parcels Abroad GP, LP v. Olena Vankova, Parcelsabroad LLC
Case No. D2014-1988
1. The Parties
The Complainant is Parcels Abroad GP, LP of West Palm Beach, Florida, United States of America, represented by King & Spalding, United States of America.
The Respondent is Olena Vankova, Parcelsabroad LLC of Kazan, Republic of Tatarstan, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <parcelsabroadgp.com> is registered with Paknic (Private) Limited (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 11, 2014. On November 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center invited the Complainant to amend the Complaint on November 27, 2014. The first amended Complaint was filed on December 2, 2014 and the second amended Complaint was filed on December 11, 2014.
The Center verified that the second amended Complaint fulfilled 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 the Respondent of the Complaint, and the proceedings commenced on December 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 9, 2015.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on January 20, 2015. 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
According to the Complainant, it uses the mark PARCELS ABROAD GP in connection with its activities and related interests in a package consolidation business. Among other services, it enables a buyer of assorted items from multiple vendors abroad to have them sent to the Complainant's affiliate for repackaging as single shipment, saving multiple freight costs.
The business name Parcels Abroad GP, LP was registered as a Foreign Limited Partnership at the Florida Department of State Division of Corporations with a filing date of July 25, 2012. An email sent by the Complainant indicates that it is related to Access USA Shipping, LLC. The Complainant does not have a registered trademark but claims a common law trademark for PARCELS ABROAD GP.
No background information has been provided by the Respondent except to the Registrar for the purpose of registration of the disputed domain name, which appears to have been registered on August 22, 2014. According to the WhoIs listing initially available for the disputed domain name, the address of the registrant, being the Respondent, was close to and in the same street as the Complainant's address, with a different building number. The Registrar has now provided an address in the Russian Federation for the Respondent.
5. Parties' Contentions
The Complainant contends that it has rights in the unregistered trademark PARCELS ABROAD GP. The Complainant has produced a copy of the entry available online from the Florida Department of State Division of Corporations showing the registration of Parcels Abroad GP, LP as a Foreign Limited Partnership under document number B12000000161. The Complainant says that Parcels Abroad GP, LP was formed in July, 2012 and has used the PARCELS ABROAD GP trademark continually since then. The PARCELS ABROAD GP trademark is distinctive, identifies the Complainant to the relevant public, and the Complainant therefore possesses unregistered, common-law rights in the trademark.
The Complainant says the disputed domain name reproduces its trademark in its entirety.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee of the Complainant and has not been granted permission to incorporate the Complainant's trademark in a domain name.
The Complainant alleges that the disputed domain name is not in use for any bona fide purpose but is apparently in use as a front for a fraudulent scheme. The Complainant describes the generics of a type of fraudulent scheme in which, it is alleged, goods that may have been obtained illicitly are sent to an unsuspecting worker who believes they have signed up with the Complainant to work from home, readdressing parcels, which has the effect of concealing their true origin. The Complainant says that the use of its name and the disputed domain name, and seemingly similar street address, are intended to give the fraudulent scheme an appearance of legitimacy. The Complainant states that it has been contacted by individuals who have actually believed they were acting on behalf of the Complainant but were not.
The Complainant says there is no evidence that the Respondent has been commonly known by the disputed domain name or has made a legitimate noncommercial or fair use of it.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith, particularly in terms of paragraph 4(b)(iv) of the Policy. The Complainant says that the Respondent has displayed an intention to trade on the Complainant's identity and goodwill by means of the PARCELS ABROAD GP trademark. Actual complaints have been received from persons who have received emails with an address containing "@parcelsabroadgp.com", soliciting people to do work that the Complainant believes to be fraudulent. This activity is potentially detrimental to the Complainant.
The Complainant states that the Respondent has been unreachable through its purported telephone and email addresses. A cease and desist letter sent by email could not be delivered.
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 the Complainant asserts to the applicable provider, in compliance with the Rules, 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. The Panel is satisfied that the Center has fulfilled its obligations to notify the Respondent of the Complaint and the commencement of this proceeding in accordance with paragraph 2 of the Rules.
A. Identical or Confusingly Similar
Under the Policy the Complainant must establish rights in a trademark, which need not be a registered trademark. The Complainant relies on a claim to possess common law rights in the trademark PARCELS ABROAD GP through usage and it being the registered name of the company.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") at paragraph 1.7 provides some discussion of previous decisions in which common law rights have been asserted. A mere assertion of rights may not be enough: "a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required". A showing of relevant use may include evidence of length and amount of sales, the nature and extent of advertising to show the name has become a distinctive identifier associated with the Complainant's goods or services.
The Complainant has registered the company name Parcels Abroad GP, LP, and did so more than two and a half years ago. Although the Panel would have expected further evidence of use, taking the entirety of the case file into consideration and the findings below, it appears that the Complainant's name "Parcels Abroad GP" has become a distinctive identifier associated with the Complainant's services enough for the Respondent to have recognized the Complainant's goodwill in that name for the particular services affiliated with the Complainant in the niche industry in which it operates. Accordingly, for the purposes of this proceeding, the Panel is satisfied in the present case that the Complainant has rights in the unregistered trademark PARCELS ABROAD GP to meet that requirement in paragraph 4(a)(i) of the Policy.
The generic Top-Level Domain (gTLD) designation of the disputed domain name may generally be disregarded in the determination of confusing similarity. What remains is "parcelsabroadgp" which the Panel finds to be confusingly similar and effectively identical to the Complainant's trademark.
B. Rights or Legitimate Interests
The Complainant has stated that the Respondent is not a licensee of the Complainant and has not been granted any rights to incorporate the Complainant's trademark in a domain name. Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating:
"(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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."
The above circumstances are without limitation and rights or legitimate interests may be established alternatively by the Respondent.
The Respondent has displayed an extensive and convincing website at the disputed domain name with numerous pages, all headed "Parcels Abroad GP", leading to sub-pages "Home", "Customers", "About us", "Added Value Services", "Tariff Rates", "FAQ" and "Contact us". The website provides an extensive explanation of the parcels forwarding business with examples and prices. In every way it projects an image of a legitimate and substantial business. The Complainant asserts, however, that it has had no connection with any of this website, despite the prominent heading "Parcels Abroad GP" and the use of that name and trademark in the disputed domain name. It is alleged that the Respondent's website is not what it appears to be because the Respondent's business is not bona fide, but is part of a fraudulent scheme.
Irrespective of any image of legitimacy projected by the Respondent's website and use of the disputed domain name, which includes its use as a purported email address, any business conducted from it could not qualify as bona fide under paragraph 4(c)(i) of the Policy if the offering of goods or services were not itself bona fide.
A number of aspects of the Respondent's conduct, particularly when taken together, call into question the legitimacy of its business and are in sharp contrast to the professional appearance of the Respondent's website. These factors have a bearing also on the consideration of bad faith in section 6C, below. The Respondent's website has adopted the Complainant's registered business name and common law trademark precisely and has displayed exactly the same street address and building number. Thus the Respondent cannot conceivably have been unaware of the Complainant's name, address and business. The Respondent had contrived to create an invalid WhoIs record of the disputed domain name coincident with the Complainant's location and street address except only for the Complainant's building number 505 having been altered to 514, which the Complainant reports does not exist. The Respondent gave the registrant name Parcelsabroad LLC and an address in Florida whereas the Registrar was able to state that the Respondent's address was in the Russian Federation. An email letter from the Complainant to the Respondent addressed to "webmaster" at the disputed domain name, being a contact shown on the WhoIs, was undeliverable. The Center's correspondence sent by courier to the Respondent's address in the Russian Federation was undeliverable for want of further address information and the consignee could not be telephoned by the courier. The Center's communications to the email addressee "contact" at the disputed domain name, as displayed for the purpose on the Respondent's website, and also to "postmaster", "webmaster" and "info" at the same address, were rejected as undeliverable. It may also be noted that registration of the disputed domain name has been taken out for only one year.
Paragraph 14(b) of the Rules empowers the Panel to draw such inferences as it considers appropriate from the Respondent's failure to respond to the Complaint. The Respondent's conduct as summarised in the previous paragraph is so diametrically at variance with the conduct expected of a legitimate world-scale business, which in normal circumstances should be anxious to protect its business, goodwill and Internet presence, that the Panel finds on the balance of probabilities that the Respondent has not used or intended to use the disputed domain name in connection with a bona fide offering of goods or services. It is further found that the Respondent is not commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy and that the disputed domain name is not in use for a noncommercial or fair purpose within the meaning of paragraph 4(c)(iii) of the Policy. Accordingly the Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(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 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 website or location or of a product or service on your website or location."
The provisions of paragraph 4(b) of the Policy are without limitation.
Paragraph 4(b)(iv) of the Policy is particularly relevant. Many of the factors applicable to this paragraph have been canvassed under the heading of Rights or Legitimate Interests in section 6B above. Appropriation knowingly of another's identity and trademark, provision of a misleading address, failure to respond to a cease and desist letter and the blocking or ignoring of all attempted contact from the Complainant or the Center, are commonly indicative of bad faith. It is clear from the commercial model projected by the website of the disputed domain name that the Respondent intends commercial gain. In order to attract participants in any intended activity, the Respondent needs to attract Internet visitors and may incidentally need to refer participants to a website that projects an image of legitimacy. The Panel finds the use of the disputed domain name and the evidence of the content of the corresponding website, in all the circumstances, to create a high degree of probability of viewers being confused into believing that the Complainant is the source of the website. On the balance of probabilities the Panel finds the disputed domain name to have been registered in bad faith and used in bad faith under paragraph 4(a)(iii) of the Policy.
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 <parcelsabroadgp.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: January 26, 2015