WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nexways Cargo Korlátolt Felelősségű Társaság v. Kővári Endre

Case No. D2020-2285

1. The Parties

The Complainant is Nexways Cargo Korlátolt Felelősségű Társaság, Hungary, represented by SBGK Law Office, Hungary.

The Respondent is Kővári Endre, Hungary.

2. The Domain Name and Registrar

The disputed domain name <nexwayscargo.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2020. On September 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 2, 2020, 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 sent an email communication to the Complainant on September 4, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 9, 2020.

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 the Respondent of the Complaint, and the proceedings commenced on September 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2020.

The Center appointed Zoltán Takács as the sole panelist in this matter on October 8, 2020. 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.

The language of this administrative proceeding is English, that being the language of the registration agreement.

4. Factual Background

The Complainant is majority owned by Waberer’s International Nyrt. (Waberer’s International Plc., hereinafter referred to as Waberer’s) with its main business being road freight and provision of other transportation support services.

According to the trademark license agreement of June 14, 2019 signed with Waberer’s, the Complainant is a non-exclusive licensee of the Hungarian Trademark Registration No. 228033 for the word mark NEXWAYS registered on June 14, 2019 for services of classes 36 and 39 of the Nice Agreement Concerning the International Classification of Good and Services for the Purposes of the Registration of Marks.

The Respondent, a former employee of Waberer’s registered the disputed domain name on August 26, 2019, and used it to redirect Internet users to a third party website offering services identical to those of Waberer’s and the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the NEXWAYS trademark since it is composed of the trademark and the descriptive term “cargo”.

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the Policy.

The Complainant claims that the Respondent obtained the disputed domain name with actual knowledge of the NEXWAYS trademark and activities of Waberer’s and the Complainant. The Complainant contends that the Respondent’s redirection of the disputed domain name to a third party competing website and offer to sell the disputed domain name amounts to bad faith registration and use of the disputed domain name.

The Complainant requests that the disputed domain name be transferred from the Respondent to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules requires that the Panel’s decision be made “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”.

It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.

It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.

The trademark license agreement the Complainant signed with Waberer’s on June 14, 2019 explicitly authorizes the Complainant to take any action and commence any proceedings against any third party infringing upon, among others Waberer’s Hungarian Trademark Registration No. 228033 for the word mark NEXWAYS.

According to section 1.4 of the WIPO Overview 3.0, the Panel finds that clear authorization from the owner of the Hungarian Trademark Registration No. 228033 for the word mark NEXWAYS to enforce any and all of its trademark rights in and to the NEXWAYS mark (including domain name disputes) amounts to the Complainant having rights in the Hungarian Trademark Registration No. 228033 for the word mark NEXWAYS under the UDRP for purposes of standing to file a Complaint.

The Panel next assesses whether the disputed domain name is identical or confusingly similar to the NEXWAYS trademark.

According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.

According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test.

The NEXWAYS trademark is clearly recognizable in the disputed domain name, the only difference being addition of the word “cargo” to the trademark, a term which describes the principal business of the Complainant.

The Panel finds that the disputed domain name is confusingly similar to the NEXWAYS trademark in which the Complainant has rights and that requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:

(i) its use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;

(ii) it has been commonly known by the domain name;

(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the NEXWAYS trademark for the purposes of the first element of the Policy.

The Respondent has never been authorized to use the NEXWAYS trademark in any way, and prior rights in the NEXWAYS trademark precede the date of registration of the disputed domain name.

According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.

As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

The Respondent failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:

(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 website or other online 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.

In the present case, the Respondent has registered a disputed domain name that fully incorporates the NEXWAYS trademark in which the Complainant has rights in conjunction with the word “cargo” commonly used for transportation services. The Respondent’s full reproduction of the inherently distinctive NEXWAYS trademark in the disputed domain name convince the Panel that the Respondent was clearly aware of the trademark at the time of obtaining the disputed domain name and chose to register it in order to capitalize on the value behind the NEXWAYS trademark without any authorization or rights to do so.

The Respondent, a former employee of the Complainant’s licensor used the disputed domain name to redirect Internet users to a third party website offering competing services, which conduct falls within definition of paragraph 4(b)(iv) of the Policy.

The Respondent’s lack of any rights or legitimate interests in the disputed domain name, the failure to present any evidence or rationale for registering the disputed domain name, and the attempt to sell the disputed domain name, further support the Respondent’s evident targeting the Complainant’s rights.

In view of this Panel, noting the above discussed facts and circumstances, paragraph 4(a)(iii) of the Policy is satisfied.

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 disputed domain name <nexwayscargo.com> be transferred to the Complainant.

Zoltán Takács
Sole Panelist
Date: October 22, 2020