WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swift Passport Services LLC v. Urgent Passport / Benjamin Quereau d/b/a Urgent Passport Services Inc.
Case No. D2017-0583
1. The Parties
Complainant is Swift Passport Services LLC of Chicago, Illinois, United States of America (“United States”), represented by Levin Ginsburg, United States.
Respondent is Urgent Passport of West Chester, Pennsylvania, United States / Benjamin Quereau d/b/a Urgent Passport Services Inc. of Chicago, Illinois, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <swiftpassportservice.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 22, 2017. On March 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 23, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on April 3, 2017.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2017. The Response was filed with the Center on April 5, 2017. Respondent confirmed that it shall be regarded as its final Response.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on April 13, 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
Complainant has used the SWIFT PASSPORT SERVICES mark since as early as December 3, 2007. Complainant owns the United States federal trademark registration for the word mark SWIFT PASSPORT SERVICES, Reg. No. 4386335, for services including expediting the procurement of United States passports and international travel visas for United States citizens and permanent residents. Complainant applied for its registered SWIFT PASSPORT SERVICES mark on March 2, 2012, and the mark was registered on August 20, 2013, with a date of first use designated as December 3, 2007 and first use in commerce on January 1, 2008.
The Domain Name was registered by Respondent on May 6, 2008 and has been used to offer competing goods and services to Complainant.
5. Parties’ Contentions
(i) Identical or Confusingly Similar
Complainant states that it has held common law trademark rights in its SWIFT PASSPORT SERVICES mark since 2007 and at all times from March 2012 has held federal trademark rights in the mark. Complainant contends that the Domain Name is identical to Complainant’s Swift Passport Services registered trademark and is intended to trade off on Complainant’s substantial goodwill in its mark. It is also confusingly similar to Complainant’s mark.
(ii) Rights or Legitimate Interests
Complainant claims that Respondent has no trademark priority over Complainant, was not previously commonly known as <swiftpassportservice.com> or “Swift Passport Service” prior to obtaining the Domain Name, and has no other legitimate basis for misappropriating Complainant’s trademark. Complainant further states that Respondent is not a licensee of Complainant’s SWIFT PASSPORT SERVICES mark and is not otherwise authorized to use the mark. Consequently, Respondent has no legitimate business purpose with which it can use the Domain Name and is not in fact using it for a legitimate business purpose.
Respondent’s website linked to the Domain Name reroutes to “www.uspassportservice.com”, a website offering passport acquisition services that are directly competitive and highly related to the goods and services provided by Complainant under its SWIFT PASSPORT SERVICES mark.
Complainant contends that Respondent’s use does not constitute a legitimate noncommercial or fair use of the Domain Name under the Policy, paragraph 4(c)(iii). Respondent’s website does not offer criticism of Complainant’s services or mark. Even if Respondent did provide a critical view regarding Complainant’s services or mark, he would not be able to do so if the domain name in question caused confusion or misled the public. In this instance, Respondent’s website and the Domain Name have caused actual confusion with Complainant’s customers, who have been rerouted inadvertently to “www.uspassportservice.com” when using the Domain Name, instead of being directed to Complainant’s website at “www.swiftpassport.com.” According to the WhoIs database, Respondent is the administrator of the <uspassportservice.com> domain name.
(iii) Registered and Used in Bad Faith
Complainant’s first use of the SWIFT PASSPORT SERVICES mark was December 3, 2007, when it organized Swift Passport Service LLC and began doing business under that name. Complainant states that both members of Complainant were personally familiar with Respondent and Respondent’s business. Likewise, Respondent was aware of Complainant’s organization in December 2007.
Respondent registered the Domain Name on May 6, 2008, approximately five months after Complainant organized Swift Passport Service LLC and Complainant had begun doing business in the passport expedition field using that name. Respondent registered the Domain Name after he became aware that Complainant had organized Swift Passport Service LLC.
Complainant has held common law trademark rights in Swift Passport Services since 2007 and at all times from March 2012 has held federal trademark rights in the mark. The first trademark registration was filed in March 2012, with the mark registered on the United States Principal Register in August 2013.
Even after Complainant had obtained a United States trademark registration and was using the SWIFT PASSPORT SERVICES mark for several years, Respondent continued to misappropriate Complainant’s mark and unfairly compete with Complainant by using the Domain Name to direct business away from Complainant and to Respondent. Valid registration of Complainant’s mark on the United States Principal Register constituted constructive notice to Respondent of Complainant’s trademark rights.
Respondent was warned multiple times to cease use of Complainant’s registered trademark, most recently on September 10, 2014, when Complainant demanded that Respondent cease use of the Domain Name <swiftpassportservice.com>.
Complainant states that bad faith may be presumed from Respondent’s knowledge of Complainant’s first use and Respondent’s knowledge of Complainant’s trademark rights prior to the registration of the identical or confusingly similar Domain Name. Bad faith is further apparent from Respondent’s use of Complainant’s mark after Complainant obtained its registered service mark in 2013 and after Complainant requested that Respondent cease to use the SWIFT PASSPORT SERVICES mark.
Complainant contends that Respondent’s use is in bad faith as Respondent is using the Domain Name to steer customers away from Complainant to another passport expediting service operated by Respondent. Respondent’s use is bad faith as there is no way in which “www.swiftpassportservice.com” could ever legitimately be used in relation to a business or offering of goods or services without infringing Complainant’s mark. Complainant states that Respondent’s only other option is to passively hold the Domain Name, which would also be in bad faith. Respondent has actual knowledge of Complainant’s rights in the mark through correspondence with Complainant over a period of years. Nevertheless, Respondent continues to use the Domain Name.
Complainant contends that Respondent’s bad faith is also evident from his other domain name registrations. For example, Respondent registered <americapassport.com> in 2003, seemingly to direct traffic away from another competitor.
(i) Identical or Confusingly Similar
Respondent states that he legally registered the Domain Name on May 6, 2008. Respondent indicates that the Domain Name is not identical to Complainant’s SWIFT PASSPORT SERVICES trademark because the Domain Name <swiftpassportservice.com> is singular, while Complainant’s trademark is plural. Respondent acknowledges that the Domain Name and Complainant’s mark do sound similar; however, they are not exactly the same. Respondent states that his Domain Name was registered over five years before Complainant obtained its trademark registration.
(ii) Rights or Legitimate Interests
Respondent acknowledges that the Domain Name forwards to another of Respondent’s portfolio of domain names, <uspassportservice.com>. Respondent contends this proves the search engine benefit Respondent is receiving from the Domain Name. Prospective customers are finding the Domain Name during their online searches and clicking to order services. Respondent states he chose not to build a live site for the Domain Name in an effort to act in good faith and deliberately not create confusion.
Respondent states that Complainant’s current business website is located at “www.swiftpassport.com.” Respondent registered the Domain Name in 2008, yet in 2013 Complainant chose to register a trademark for SWIFT PASSPORT SERVICES. Respondent wonders why Complainant chose to register a mark so similar to Respondent’s Domain Name and not simply register a trademark corresponding to the domain name currently used for Complainant’s business, which is <swiftpassport.com>.
(iii) Registered and Used in Bad Faith
Respondent states that he is personally familiar with only one member of Complainant, not both of them. Respondent states he had no knowledge in 2008 that another company (Complainant) would apply in 2012 to trademark the phrase corresponding to the Domain Name. Respondent claims he did not and has not ever knowingly misappropriated Complainant’s SWIFT PASSPORT SERVICES mark. The Domain Name was registered by Respondent on May 6, 2008 and Complainant’s trademark was registered on August 20, 2013, over five years later.
Respondent states he registered the Domain Name because of its value in terms of keyword search engine placement with search engines such as Google and Bing. Respondent claims he did not have any knowledge of Complainant’s trademark until recently. Respondent states he did not receive Complainant’s email of September 10, 2014 and that one would expect in a matter of this importance that Complainant would send a signed letter with tracking, notifying Respondent of Complainant’s trademark registration and related concerns.
Respondent’s domain name portfolio consists of names that feature descriptive words that are relevant to search queries within the passport expediting industry. Respondent states it is logical that these domain names provide a broad strategic advantage to Respondent. When keywords are incorporated into the domain name itself, this provides a beneficial search engine optimization effect.
Respondent states that while Complainant’s website is located at <swiftpassport.com>, the domain name Respondent uses (and to which the Domain Name forwards) is <uspassportservice.com>. Respondent claims that these two domain names are not similar or confusing, and this was Respondent’s intent (and is the opposite of bad faith). The word “service” is not being used by Complainant’s current website at “www.swiftpassport.com”. Respondent argues that while Complainant claims its trademark is essential to selling its services, yet the word “service” or “services” is omitted from Complainant’s current domain name used for its business.
While Complainant wrote in the Complaint that “Respondent’s only other option is to passively hold the domain, which would also be in bad faith”, Respondent states that this is not correct. Respondent states that the primary and market preferred option would be for Complainant to purchase the Domain Name from Respondent. Complainant has not made any effort to do so since 2013. Respondent remains willing to sell the Domain Name to Complainant for USD 2,000 – which was the asking price in 2013. Complainant had offered USD 1,500 for the Domain Name in 2013.
Respondent states that bad faith is claimed by Complainant and as proof Complainant references the diverse portfolio of domain names owned by Respondent. Respondent’s domain name portfolio provides a search engine ranking advantage to Respondent. Respondent has been incorporated since March 15, 2002 and there has never been a complaint or legal action by any entity against Respondent until this Complaint. Respondent simply purchased the Domain Name with solid keyword ranking potential. Respondent argues that Complainant has chosen to build its business around a very similar domain name – that was Complainant’s choice – and Respondent should not be penalized for that choice.
Respondent states that Complainant has chosen a trademark registration that is purely descriptive. The term “Swift Passport Service” conveys timeframe and what is being processed, and thus is not a novel brand name. The Domain Name was registered by Respondent in 2008 because of its value for this reason – it conveys what a potential customer is likely to be searching for – needing to get a passport fast – and is descriptive of the service needed by the customer. Respondent urges that by critically analyzing the descriptive wording of the Domain Name, combined with the five year gap between registration of the Domain Name and Complainant’s trademark, there is no conjunctive bad faith as required by the Policy.
6. Discussion and Findings
To succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel must determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
Complainant has alleged that it has common law rights in its SWIFT PASSPORT SERVICES mark dating from December 2007, but has also demonstrated that it has registered rights in its mark, which was applied for on March 2, 2012 and registered on August 20, 2013, with a date of first use in commerce designated as January 1, 2008. Complainant’s ownership of its registered SWIFT PASSPORT SERVICES mark satisfies the threshold requirement of having trademark rights for purposes of this first element under paragraph 4(a) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraphs 1.1 (“If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights”) and 1.4 (“Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP”).
For purposes of determining whether the Domain Name is confusingly similar to Complainant’s SWIFT PASSPORT SERVICES mark, the test of identity or confusing similarity under the Policy is confined to a comparison of the Domain Name and the trademark. Here, the Panel finds that the Domain Name is confusingly similar to Complainant’s mark, because the Domain Name differs from the mark by omitting only the “s” at the end of the word “service” (i.e., moving from the plural to singular case).
Accordingly, Complainant has satisfied the first element of the Policy.
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 Domain Name. A complainant is normally required to make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name. Once such prima facie case is made, the respondent must meet the burden of demonstrating rights or legitimate interests. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. Complainant has alleged that Respondent is a competitor to Complainant and that Respondent registered the Domain Name after Respondent became aware that Complainant had organized itself as Swift Passport Service LLC in December 2007. Respondent is not known by the Domain Name, nor is Respondent a licensee of Complainant’s SWIFT PASSPORT SERVICES mark. Respondent’s use of the Domain Name does not constitute a legitimate noncommercial or fair use. Instead, Respondent uses the Domain Name for a commercial purpose, to redirect users to Respondent’s website at “www.uspassportservice.com”, where Respondent offers passport acquisition services that compete directly with the services offered by Complainant.
Respondent has not denied that he was aware of Complainant. Respondent states he chose not to build a website for the Domain Name in an effort to act in good faith and avoid confusion, but this does not avoid the initial confusion for those users looking for Complainant and its services, who are redirected to Respondent’s site. Further, while Respondent states that he was not aware of Complainant’s registered trademark, in this respect Respondent – who as a direct competitor was admittedly aware of Complainant – acted at his own risk. While Complainant’s registered rights for its SWIFT PASSPORT SERVICES mark date from April 2012, Complainant has indicated a date of first use in commerce of January 1, 2008, which predates Respondent’s registration of the Domain Name by approximately five months. Complainant’s common law trademark rights would have commenced development at this time. As between competitors, Respondent’s targeting of Complainant’s name when registering the Domain Name does not give rise to any right or legitimate interest in the Domain Name.
In view of this record, the Panel finds that Respondent has failed to rebut adequately Complainant’s prima facie case showing that Respondent lacks any rights or legitimate interests in respect of the Domain Name. Accordingly, the Panel finds that Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith.
Pertinent to this case, WIPO Overview 2.0, paragraph 3.1 states that, generally speaking, although a trademark can satisfy the Policy’s first element irrespective of its date, when a domain name is registered by a respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right. However, paragraph 3.1 also indicates that “[i]n certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found.”
Here, the Panel observes that Complainant and Respondent are competitors in the same business, providing services to individuals to expedite their obtaining of passports and related visas. Complainant has alleged common law rights dating from the beginning of 2008, prior to Respondent’s registration of the Domain Name. Respondent has not denied that he was aware of Complainant when he registered the Domain Name in May 2008. Instead, Respondent has asserted only that he was not aware of Complainant’s registered trademark rights. Respondent also stated that he specifically chose not to develop a website for the Domain Name due to his awareness of Complainant, in a misguided attempt to avoid confusion and bad faith. This choice, however, did not dispel the initial confusion or unfair advantage created by targeting Complainant’s name through registration and use of the Domain Name. Moreover, the subsequent conduct by Respondent offering to sell the Domain Name to Complainant for an amount in excess of out-of-pocket costs further demonstrates Respondent’s bad faith with respect to his competitor.
The Panel finds, on the balance of the probabilities, that Respondent’s registration of the Domain Name sought to take advantage of the potential confusion between the Domain Name and Complainant’s name (and any potential common law rights in Complainant’s name). Furthermore, the Panel finds, based upon a review of the record, that Respondent’s use of the Domain Name, which is confusingly similar to Complainant’s SWIFT PASSPORT SERVICES mark, to redirect users to Respondent’s own website, constitutes use in bad faith.
Accordingly, the Panel finds that Complainant has satisfied the third element 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 Domain Name <swiftpassportservice.com> be transferred to Complainant.
Christopher S. Gibson
Date: May 8, 2017