WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Santa Fe Transport International Limited and Santa Fe Moving Services Private
Limited v. Santa fe Packers, Packers Movers
Case No. D2017-0754
1. The Parties
The Complainants are Santa Fe Transport International Limited of Wanchai, Hong Kong China and Santa Fe Moving Services Private Limited of New Delhi, India, represented by Scriboard Advocates & Legal Consultants, India.
The Respondent is Santafe Packers, Packers Movers of Gurgaon, India.
2. The Domain Name and Registrar
The disputed domain name <santafepackersandmovers.com> 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 April 13, 2017. On April 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2017. The Center received email communications from an individual apparently related to the Respondent on May 17, 2017, May 19, 2017, May 20, 2017, May 22, 2017, May 24, 2017, and June 1, 2017.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on June 1, 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. By request of the Panel, the Center notified the Parties on June 8, 2017 that no additional submissions could be entertained at that stage of the proceedings.
4. Factual Background
The Complainant is in the business of providing global relocation and mobility services under the trademark SANTA FE. The second Complainant is the Indian subsidiary of the first Complainant. The term “Complainant” collectively refers to both Complainants in these proceedings. The Complainant has several trademark applications and registrations for the SANTA FE marks and logo in various countries around the world including India. For instance, Indian trademark registration 1487683 SANTA FE, registered on March 30, 2010. The Complainant and its subsidiaries own numerous domain names comprising of the SANTA FE mark, including the domain name <santaferelo.com>, registered in 2002, for its official website.
The Respondent registered the disputed domain name <santafepackersandmovers.com> on January 25, 2014. The disputed domain name resolves to a website offering relocation and mobility services.
The Respondent’s name and other details as per the ‘Whois’ registration records of the disputed domain name are given as: registrant name is Packers Movers, registrant organization is Santa fe Packers, the registrant city is Gurgaon in India. The Respondent did not submit a formal response in these proceedings, therefore no other details are known about the Respondent.
5. Parties’ Contentions
The Complainant states that it was established in Hong Kong, China, in the year 1980. The Complainant has its headquarters in London and maintains that it is a world leader in relocation projects for large organizations with international operations. The Complainant further maintains that its extensive operations cover fifty-seven countries, it has one hundred and thirty-six offices and various subsidiaries, which handle about sixty thousand relocations per year. Its turnover in the year 2015 was about EUR 373 Million (approximately USD 399 Million), a link to its online annual report is provided as evidence.
The Complainant states that it is accredited by FIDI, the global alliance of professional international moving and relocation companies and FNIAM (The National Federation of Real Estate). In December 2010, it acquired the Australian company Wridgways and in August 2011 the European- based company Interdean. After acquiring these two companies, the Complainant maintains that it commenced operations in Africa, the Middle East and the United States of America and several offices world wide. The Complainant states Santa Fe Relocation Services is listed on NASDAQ in Copenhagen, Denmark.
The Complainant states that its trademark is a valuable asset and it has about sixty trademark applications and registrations to protect its mark and its logo in several countries. The Complainant states that its first trademark registration dates back to the year 1985 and it has spent considerable amounts on promotion and advertisement of its services under the SANTA FE mark in print and electronic medium. A list of global trademark registrations and applications and copies of trademark registrations in India are filed as evidence.
The Complainant refers to its extensive online presence and alleges that its official website provides comprehensive information. A Google search for the terms “Santa Fe Relocation Services” returns a number of results, and each result on the first page pertains to its business states the Complainant. Further, the Complainant claims it has a big presence on social media in sites such as Facebook, Twitter and You Tube.
The Complainant indicates that it has received several accolades and awards for its services over the years, such as “Quality Trophy” awarded by Magellan Network in the years 2010, 2014, 2013, and 2011, the FEM EMMA, (Expatriate Management and Mobility Award) International Relocation Company of the Year 2014; and states that a list of its awards are available at it website. The Complainant claims its clients include well known international brands such as Coca-Cola, Red Bull, Volvo, DHL, and L’Oreal and adds that its popularity is not just in India but around the globe. The Complainant states its trademark has gained huge reputation and goodwill in India and abroad and the disputed domain name is a reproduction of its trademark with the addition of the terms “packers and movers”, and such a domain name registration is not in good faith.
The Complainant requests for transfer of the disputed domain name based on the three elements of the Policy: that the disputed domain name is identical or confusing similar to a mark in which the Complainant has rights, the Respondent has no rights or legitimate interests in the disputed domain name and the disputed domain name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions. However, an individual apparently related to the Respondent sent several email communications to the Center after the Center had notified the Respondent’s default. Some of these email communications are reproduced here verbatim:
“We thank you very much for giving us the opportunity for inquiry of your valuable belongings. We are pleased to quote the reasonable charges give below”
“please call for discussion”
“Call me on my number – in Hindi about your problems”
“what can I do for you please contact with phone my phone number is: […].”
Some of the Respondent’s messages in Hindi are reproduced here verbatim:
“Call karo bhai kya bhej rahe ho ye kay matlab hai”
“Bhaii ji please only call baari Barri kyu mail bhej rehe ho”
“Abhi tak koi call nahi aayi aapki mail pe baat nahi ho payegi please call […]”
The signature line in the emails were mentioned as: “Santa Fe Movers and Packers”, Sameer, with the telephone number […].
6. Discussion and Findings
The elements that are required to be established by the Complainant to obtain the remedy of transfer of the disputed domain name under paragraph 4 (a) of the Policy are:
(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 lacks rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent.
A. Identical or Confusingly Similar
The first element requires the Complainant to establish the disputed domain name is identical or confusingly similar to a trademark or a service mark in which it has rights.
The Complainant has provided evidence to demonstrate its common law and registered rights in the SANTA FE mark. Evidence of its common law rights include, promotional material, brochures and newspaper / magazine articles, pertaining to its mark. Evidence of its online presence, such as its website, search engine results of the Complainant name, social media pages showing its online reputation and popularity and the Wikipedia page of the Complainant and its business, the Complainant’s annual turnover and its awards and accolades in global relocation and mobility services. The evidence clearly shows the Complainant is among the leading relocation solution providers globally, and that it has used its mark extensively in connection with it services and operations in a large number of locations world wide.
The Complainant has in addition provided details of its trademark registrations and applications for the SANTA FE marks and logo (the horse) in numerous jurisdictions. Copies of its trademark registrations in India are provided as evidence. In the light of the substantial evidence, the Complainant is found to have established its rights in the SANTA FE mark. The mark is found to be a distinctive identifier associated with the Complainant and its services in mobility and relocation services.
The Complainant has argued that the disputed domain name is confusingly similar to its SANTA FE mark as the trademark has been used in its entirety without changing even a single letter. Further, the term “packers and movers” is indicative of its business and adds to the confusing similarity. A potential customer who wishes to reach the Complainant’s website is likely to type the brand name followed by the terms “packers and movers” followed by “.com” and this may lead to the mistaken belief that the disputed domain name is owned or associated with its business argues the Complainant.
The Panel finds the Complainant’s registered trademark is entirely incorporated in the disputed domain name and it is sufficient to establish confusing similarity with its mark. Previous UDRP panels have consistently held that domain names that use the entire trademark are found be confusingly similar to the trademark. See for instance RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059. The term “packers and movers” in the disputed domain name is found to be analogous to the Complainant’s relocation business and therefore creates a connection to the mark in the minds of the consuming public. The disputed domain name is accordingly found to be confusingly similar to the SANTA FE mark in which the Complainant has rights.
The Panel finds the Complainant has successfully established the first requirement under paragraph 4(a) of the Policy, that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Where the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, the burden of proving rights or legitimate interests in the disputed domain name shifts to the Respondent. If the Respondent fails to come forward with relevant evidence establishing rights in the disputed domain name, the Complainant is deemed to have satisfied the second element. (See paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).
Under the paragraph 4 (c) of the Policy, a non-exhaustive, exemplary list of circumstances sets out the manner in which a respondent may typically establish rights or legitimate interests in the disputed domain name; these are:
- Before notice of the dispute, the respondent’s use or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering ofgoods or service; or
- The respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the respondent has not acquired any trade or service mark rights.
- The respondent is making legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain or to misleadingly divert customers or tarnish the trademark or service mark at issue.
The Complainant has argued that the Respondent has no rights or legitimate interests in the disputed domain name as the Respondent is not commonly known by the disputed domain name. Referring to the landing page of the website connected to the disputed domain name, which displays “Santa Fe Worldwide relocation and Moving”, the Complainant asserts that no such entity exists and the contact information provided on the Respondent website is incomplete and incorrect. The Complainant states that it had sent a cease and desist notice to the address provided by the Respondent and the notice could not be delivered due to insufficient address provided by the Respondent.
Based on a WhoIs history report of the disputed domain name from Domain Tools, the Complainant states that WhoIs details for the disputed domain name have been changed several times. The Complainant states that as many as twenty-one significant changes have been made and argues that such actions by the Respondent shows lack of rights or legitimate interests in the disputed domain name.
The Complainant has filed evidence of the Respondent putting the disputed domain name up for sale. The evidence is a screenshot of a webpage pertaining to the disputed domain name in the year 2015, from “www,archive.org”. On that page, the Respondent has used a different name “Santa Fe Packers and Movers” and the webpage clearly shows the disputed domain name has been put up for sale.
The Complainant states that it has no connection with the Respondent and has not licensed or authorized the Respondent to use the SANTE FE mark. The Complainant has argued that the Respondent has no proprietary right or contractual rights in the disputed domain name. The Complainant has filed evidence that the Respondent has provided a quotation for relocation services using the SANTE FE mark, such use of the Complainant’s mark, the Panel finds, is deceiving customers and is fraudulent use of the SANTA FE mark.
The Panel finds, the Respondent’s use of different variants of the Complainant’s mark in the registration records also demonstrate that the Respondent is trying to impersonate the Complainant. The WhoIs records display the Respondent’s name as “Packers Movers” and the registrant organization is “Sante fe Packers”. to attract Internet traffic based on the Complainant’s trademark and derive undue advantage from the SANTA FE mark owned by the Complainant.
From the emails sent by the Respondent to the Center, it is logical to infer that the Respondent is trying to impersonate the Complainant by using names such as “Santa Fe Movers and Packers” in the signature line. Furthermore, given the facts and circumstances of the case, it is logical and reasonable to conclude from the Respondent’s emails to the Center, that the Respondent is routinely trying to impersonate the Complainant and mislead people, specifically potential customers of the Complainant.
On the basis of the Complainant’s submissions, the Panel finds, that the Respondent is not affiliated with the Complainant in any manner. However, the facts and evidence shows that the Respondent is continuously using the Complainant’s mark in numerous ways. First in the registration records for the disputed domain name and in the disputed domain name, then in the website linked to the disputed domain name and then in email communications and in other business communications such as quotations, the Respondent uses the Complainant’s mark to mislead people that it is connected to the Complainant’s well known SANTA FE business.
The Panel finds based on all that has been discussed, that the evidence on record suggests that the Respondent has been carrying on activity of using the disputed domain name to exploit the fame and reputation associated with the Complainant’s mark. Activity based on impersonation and using the disputed domain name in this manner is not bona fide use and does not give rise to any legitimate rights or interests in favor of the Respondent. The Respondent has not provided any arguments or evidence to rebut the allegations and evidence submitted by the Complainant.
Accordingly, it is found that the Complainant has successfully established a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, as required under the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The third element requires the Complainant to establish the disputed domain name has been registered and is being used in bad faith by the Respondent.
As discussed in the previous section, the evidence on record shows that the Respondent has tried to develop a website and a business that is likely to mislead users. The Complainant’s potential customers are likely to believe that services offered from the disputed domain name are being offered by the Complainant. Under these circumstance, it is fair to assume that the Respondent ought to have known of the SANTA FE trademark, the Complainant’s rights in the mark and its connection to the business of “packing and moving”, when the disputed domain name was registered.
In the Respondent’s emails to the Center, the Respondent has made no attempted to challenge, dispute or rebut any of the factual and legal assertions and allegations made by the Complainant. The Complainant has also provided evidence that the disputed domain name was put up for sale in the year 2015. All these facts and circumstances support a finding of bad faith registration and use of the disputed domain name under the Policy.
Other indications of the Respondent’s bad faith can be drawn from the fact that the Respondent has provided incorrect or incomplete contact details, on the website and in the “Whois” records. The Panel finds there are at least two separate instances that corroborate that an incorrect or incomplete address was given by the Respondent. First, when Complainant’s cease and desist notice was returned, and then when the Complaint was sent by the Center to the Respondent’s postal address, it was returned due to incorrect or insufficient address.
The facts and evidence discussed support a finding of bad faith registration and use particularly under paragraph 4(b)(iv) of the Policy, as the Respondent is trying to create a false association with the Complainant’s mark and it is likely to be widely assumed by the public and Internet users that the trademark reproduced in the disputed domain name, is associated with the Complainant or is sponsored, affiliated with or endorsed by the Complainant. Use the Complainant’s mark in this manner by the Respondent, who is not the legitimate owner of the trademark, is recognized as bad faith registration and use of the disputed domain name under the Policy.
Given these findings, and in the absence of a proper response by the Respondent, the Panel concludes that the Complainant has successfully established the third element under paragraph 4(a) of the Policy, that the disputed domain name was registered and is being used in bad faith.
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 <santafepackersandmovers.com> be transferred to the Complainant.
Date: June 15, 2017