WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Uline, Inc. v. Bhavna Babaria

Case No. D2015-0462

1. The Parties

The Complainant is Uline, Inc. of Pleasant Prairie, Wisconsin, United States of America (“USA” or “US”), represented internally.

The Respondent is Bhavna Babaria of Riverside, California, USA, represented by Revision Legal, USA.

2. The Domain Name and Registrar

The disputed domain name <ulineshipping.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 March 16, 2015. On March 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 19, 2015, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on March 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2015. On April 8, 2015, the Center received a stipulation signed by both parties extending the due date for Response to April 23, 2015. The Response was filed with the Center on April 23, 2015.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 1, 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

The Complainant is a family-owned business corporation headquartered in Wisconsin, USA. The Uihlein family started the business in 1980, and the company name is evidently an Anglicized version of the family name. The Complaint includes little information about the Complainant’s business, apart from identifying the classes of goods sold under its ULINE mark, which corresponds to the company name: packaging and shipping supplies, including boxes, facility maintenance supplies, janitorial supplies, industrial supplies, material handling supplies, safety supplies, and warehousing supplies. The Complainant also uses the ULINE mark for online and retail services supporting the sale of those goods.

The Complainant operates a website at “www.uline.com”. According to the Complainant’s website, the Complainant is “the leading distributor of shipping, industrial and packaging materials to businesses throughout North America”. The Complainant, which employs more than 4,000 employees, distributes a 600-page catalogue to businesses in the USA, Canada, and Mexico, selling thousands of products (including numerous “shipping” supplies and several kinds of plastic bags) by telephone as well as online.

The Complainant holds the following US trademark registrations:

MARK

REGISTRATION NUMBER

REGISTRATION DATE

ULINE (standard characters)

2165496

June 16, 1998

ULINE SHIPPING SUPPLY SPECIALISTS (words and design)

3316687

October 23, 2007

ULINE (words and design)

3316683

October 23, 2007

ULINE TUFF WIPES

3706516

November 3, 2009

ULINE.COM

4034337

October 4, 2011

ULINE

4284651

February 5, 2013

The Respondent is an individual residing in California, USA. According to the Respondent’s Declaration attached to the Response, the Respondent is a “distributor and wholesaler of customized plastic bags” imprinted with a customer’s logo or slogan. Advertising and sales are made primarily through the Respondent’s website at “www.aplasticbag.com”. The Respondent states that he has operated this business for fifteen years and now has more than 20,000 customers and annual sales of approximately USD 2 million.

The Respondent states that he registered the Domain Name on July 9, 2005, for use in connection with a planned business selling a range of promotional products. The Response indicates that the Respondent held the Domain Name “passively” for nine years and then, for approximately six months beginning in June 2014, used the Domain Name to redirect visitors to the Respondent’s website at “www.aplasticbag.com”.

Counsel for the Complainant sent the Respondent a cease-and-desist letter in January 2015. It appears that the Respondent stopped redirecting traffic from the Domain Name to his commercial website shortly after that. The Domain Name currently resolves to a “website coming soon!” message.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the Domain Name is confusingly similar to its ULINE mark and that the Respondent has no rights or legitimate interests in the Domain Name, as it does not appear that the Respondent has ever used it for a business or product with a corresponding name.

The Complainant infers that the Domain Name was registered and used in bad faith, in contemplation of selling the Domain Name to the Complainant or a competitor and in any event using it for half a year to redirect traffic to the Respondent’s commercial website.

B. Respondent

The Respondent acknowledges the Complainant’s marks but argues that others use similar marks for different goods or services and that there is little likelihood of confusion.

The Respondent argues that his plans to use the Domain Name for a business selling “traditional” promotional products such as “T-shirts, hats, and pens” constitute a legitimate interest in the Domain Name.

The Respondent argues that the Panel should dismiss the Complaint on the equitable ground of laches, as the Complainant has initiated this proceeding nearly ten years after the Respondent registered the Domain Name. The Response does not expressly deny selecting and using the Domain Name in contemplation of the Complainant’s ULINE mark; rather, the Respondent relies on the defense of laches: “Consistent with the laches argument above, no such bad faith is present.”

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. Laches

The Respondent argues that the Complaint should be denied because the Complainant has allowed the Domain Name to be used unchallenged for nearly ten years. The Response argues that transferring the Domain Name “after a decade of lawful ownership would unduly prejudice the Respondent”. This argument for prejudice is not especially persuasive here, as it does not appear that the Respondent has actually used the Domain Name for his planned business venture.

The parties in the current proceeding are both located in the USA, where courts recognize the equitable doctrine of laches, which can result in the dismissal of a complaint for undue delay in asserting legal claims. The Respondent cites UDRP decisions accepting a defense of laches. These are a minority, however. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.10. It is important to recognize that in US courts the defense of laches typically bars the recovery of damages incurred before the filing of a lawsuit, and courts have concluded that the rationale behind the doctrine of laches does not militate against injunctive relief in a trademark action that seeks to avoid future confusion in the marketplace. See 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th ed. 2005) §31:10, p. 31-35 and cases cited therein. The remedies under the Policy are similarly injunctive rather than compensatory in nature, and the focus is on avoiding confusion in the future as to the source of goods or services. Thus, UDRP panels have generally declined to apply the doctrine of laches. See, e.g., Progman Consulting Oy v. Whois Watchdog, WIPO Case No. D2010-1393 (“It is by now well established that trademark doctrines of laches or estoppel have not been incorporated into the Policy”); The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy’s purposes); see also cases cited in the Index of WIPO UDRP Panel Decisions, sec. III(G)(1)(c).

The Respondent quotes the decision in The New York Times Company v. Name Administration Inc. (BVI), NAF Claim No. 1349045. There, the panel rejected the complainant’s contentions that the respondent had no rights or legitimate interests in the disputed domain name, and that the respondent had registered the domain name in bad faith, because the panel found that “Respondent’s rights are senior to Complainant’s.” That is not the case here. The panel also concluded that “the circumstances of this case are the type that support a decision for the Respondent based on laches.” The panel opined that “the doctrine of laches should be expressly recognized as a valid defense in any domain dispute where the facts so warrant,” on the theory that an administrative proceeding offering an essentially equitable remedy (transfer of a disputed domain name) should also recognize equitable defenses such as laches.

The Panel in the current proceeding declines to endorse this approach. As noted above, the Policy offers a limited remedy to avoid future confusion in the marketplace, and it does not contemplate that such a remedy would be unavailable because of delay in instituting a Policy proceeding. However, the Panel observes that lengthy delays in seeking legal or administrative remedies can often have the effect of eroding or undermining the complainant’s arguments with respect to the respondent’s rights or legitimate interests in a disputed domain name, or the respondent’s alleged bad faith in registering and using the domain name. The Panel considers it more appropriate to address such issues squarely within the terms of paragraphs 4(a)(ii) and (iii) of the Policy, rather than analyzing them under the equitable doctrine of laches.

B. Identical or Confusingly Similar

The Complainant holds trademark registrations consisting of, or including, its distinctive ULINE mark. The Domain Name incorporates this mark in its entirety and adds the generic word “shipping”. This addition enhances rather than eliminates the likelihood of confusion, as shipping products and shipping services are a significant part of the Complainant’s business.

The Respondent’s extensive analysis of the “likelihood of confusion” mistakes the test for confusion under US trademark law with the role of the first element of a Policy complaint, requiring a complainant to show an interest in an identical or “confusingly similar” mark. UDRP panels customarily treat this element as a standing requirement, which simply requires “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. See WIPO Overview 2.0, paragraph 1.2. The Panel finds that this test is satisfied in the present case and concludes that the first element of the Policy has been established.

C. 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.

The Respondent asserts that he registered the Domain Name for use in connection with a contemplated business selling a “traditional” range of promotional items, not just customized plastic bags. The Respondent states that he “still has plans to begin this business”. However, the Respondent registered the Domain Name nearly a decade ago, and the Response does not include evidence of “demonstrable preparations” to use the Domain Name for such a business.

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 Domain Name copies the Complainant’s distinctive mark, and the Respondent has used it to sell promotional products to businesses that are also within the Complainant’s target market. This is prima facie evidence of intent to target the mark rather than to make relevant, legitimate use of a generic term. The Respondent has not rebutted this presumption with a plausible alternative explanation for choosing the Domain Name.

The Panel concludes that the second element of the Complaint has been established.

D. Registered and Used in Bad Faith

The Policy’s non-exhaustive list of circumstances that shall be considered evidence of bad faith registration and use (paragraph 4(b)) includes the following cited in the Complaint:

(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 Respondent’s Declaration does not explain why he selected the Domain Name. “Uline” is not a dictionary word but appears to be based on the family name of the Complainant’s founders and owners. It has been used for their business since the 1980s and registered as a trademark since 1998. Thus, it appears to have trademark value but no evident generic value.

The ULINE mark is associated with a catalogue widely distributed to North American businesses for a range of shipping, packaging, and office products, as well as a website using the mark for its domain name. The Respondent, in his Declaration, does not deny prior knowledge of the Complainant’s ULINE trademark. The Respondent similarly tries to reach the market of North American businesses, for both his existing enterprise and his contemplated venture to sell a broader range of promotional products. It is not unlikely that he would find value in misleading business owners and purchasing staff by attracting them to a website labelled with the mark of a better-known business supplier, and his Declaration does not actually deny an intention to do so. The Panel also finds it significant that “shipping”, the generic term added to the ULINE mark to form the Domain Name, is highly relevant to the Complainant’s business and not as obviously relevant to the Respondent’s business of selling customized promotional products.

The Respondent admits that he redirected traffic to his website at “www.aplasticbag.com” for about six months in 2014; before that, he “passively” held the Domain Name without using it for an active website. There is no evidence in the record that he actively sought to sell the Domain Name. However, the redirection, which evidently ended when the Respondent received the Complainant’s cease-and-desist letter, appears to be an instance of misleading Internet users for commercial gain. In any event, it is hard to imagine a legitimate, good faith reason for registering and holding on to the Domain Name, based on the Complainant’s distinctive mark associated with “shipping”, other than the possibility of using it ultimately to mislead Internet users or sell it for a price reflecting its trademark value. See WIPO Overview 2.0, paragraph 3.2, on “passive holding” decisions with similar facts and reasoning.

The Panel finds that, more probably than not, the Respondent registered and used the Domain Name in bad faith, targeting the Complainant’s ULINE mark. The Panel concludes, therefore, that the third element of the Complaint has been established.

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 Domain Name <ulineshipping.com> be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: May 15, 2015