WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Federal Express Corporation v. Alfredas Grubliauskis, Fredex Europa ltd
Case No. D2020-2881
1. The Parties
The Complainant is Federal Express Corporation, United States of America (“United States”), represented by Baker & McKenzie Advokatbyrå KB, Sweden.
The Respondent is Alfredas Grubliauskis, Fredex Europa ltd, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <fredexeuropa.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2020. On October 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2020, the Registrar transmitted by email to the Center its verification response:
(a) confirming it is the Registrar for the disputed domain name;
(b) disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint;
(c) indicating the Respondent registered the disputed domain name on July 20, 2011;
(d) indicating the language of the registration agreement is English;
(e) confirming that the registration agreement included an acknowledgement that the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”).
The Center sent an email communication to the Complainant on November 2, 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 amendment to the Complaint on November 6, 2020.
On November 7, 2020, the Center received an email purporting to be from the Respondent requesting information about the Complaint.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy, 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 November 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2020.
On November 27, 2020, the Center received a request to extend the response due date for an additional four calendar days “as the parties are communication on the possibility to settle the dispute amicably”. On December 1, 2020, the Center sent the Possible Settlement email but no request to suspend the Proceeding has been received. On December 8, 2020, the Center granted an automatic four-calendar day extension for response under paragraph 5(b) of the Rules. The new due date for Response was December 12, 2020. The Response was filed with the Center on December 11, 2020.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 22, 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.
4. Factual Background
The Complainant was founded in the United States in 1971 to provide courier and delivery services. Since then, it has expanded to operating in or providing services to more than a claimed 220 countries and territories.
It claims to have some 425,000 “team” members around the world and carries more than 14 million shipments each day. In its 2019 fiscal year, its revenues were USD 69 billion.
In addition to physical premises, the Complainant also operates its business from a website to which the domain name <fedex.com> resolves. The Complainant registered this domain name in 1991. According to the Complaint, it receives tens of millions of unique visitors from around the world each month.
According to the publication Supply Chain Dive, published on March 6, 2018, the Complainant was the second most valuable logistics brand in the world with a brand value of USD 18.2 billion.
According to the Complaint, the Complainant has had registered trademarks for FEDEX in both standard script and stylized forms since 1984. For present purposes, it is sufficient to note that the Complaint includes evidence of registered trademarks for FEDEX including:
(a) European Union Trade Mark (EUTM) No. 00219642 for services in International Classes 12, 16, 38, and 39, which has been registered on September 3, 2001;
(b) Norwegian Registered Trademark No. 19841048 for services in International Class 39, which had been registered on February 7, 1985.
The Complaint also indicates the Complainant has a national registered trademark in Lithuania for FEDEX for services in International Class 39, No. 9889, which was registered on March 3, 1994. The Complainant also has a national registered trademark for FEDEX in Sweden, No. 197278, for International Class 39 services which appears to have been registered on July 26, 1985.
The disputed domain name was registered on July 20, 2011.
When the Complaint was filed, the disputed domain name resolved to a website which appears to promote the courier and delivery business of “Fredex North”. The website is in what the Panel assumes is Lithuanian. In addition to promoting various courier and delivery services, the website lists contact numbers in Lithuania and Norway. The footer of the home page includes a copyright notice “© 2005-2017 Fredex Europa Ltd.”
In addition to a fillable contact form, the contact page states:
“FREDEX EUROPA LTD.
“Company Number. 7712906
“57 Blegborough road,
“London, SW16 6DL.
“D. Britanijoje: +447835929248
The communications to the Center, including the Response, were provided from the email address identified above on the contact page of the website. Two of the communications, including the Response, are from a person who describes himself as a director of Fredex East Ltd.
5. Discussion and Findings
A Response has been received. It is not from the Respondent, but from or on behalf of persons claiming to be the successors in title to the Respondent. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. In these circumstances, the Panel considers that the Respondent has been given a fair opportunity to present its case and proceeds on the basis that the Response is the Response of the Respondent or, at the least, the Respondent has nothing further to add.
Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the 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 11 of the Rules, the default language of the proceeding is the language of the registration agreement – here English. The Response has in fact been submitted in English and did not include a request for any different rule.
A. Does the Policy apply to the dispute?
The Response objects to the competency of the dispute, claiming the party (or parties) using the disputed domain name have no relationship with the Registrar, the Complainant or anyone other than AB Telia Lietuva (formerly, UAB Hostex). Accordingly, it contends that the party (or parties) using the disputed domain name are not bound by the Policy.
The Panel must reject this contention.
The Policy has been adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) and all ICANN-accredited registrars. It is incorporated by reference into all registration agreements for domain names in ICANN-administered Top-Level-Domains (“TLDs”).
AB Telia Lietuva is not listed as an accredited registrar by ICANN and so does not itself issue domain names in ICANN controlled domains. It appears to be a “reseller” of domain names for the Registrar.
The Registrar is an ICANN-accredited registrar. The Registrar itself has confirmed that it is the registrar for the disputed domain name. The terms and conditions of its registration agreement, even if via a reseller, expressly incorporate the Policy.
In these circumstances, the Panel rejects the objection to the competency of the proceeding and finds that the Policy applies to the disputed domain name.
B. Who is the Respondent?
Paragraph 1 of the Rules defines the “Respondent” for the purposes of a dispute under the Policy as the holder of a domain-name registration against which a complaint is initiated.
According to the Registrar, that is Fredex Europa Ltd.
The Complainant has provided evidence, however, that Fredex Europa Ltd was deregistered on October 9, 2018. Therefore, it no longer exists.
On October 8, 2018, two other companies registered in the United Kingdom under the names Fredex North Ltd and Fredex East Ltd were also deregistered. Two new companies were registered under those names on, respectively, October 31, 2018 and November 1, 2018.
The communications received in response to the filing of the Complaint have been received from, or on behalf of, a Fredex East Ltd, using the email address which the Registrar has confirmed is the email address of the registrant of the disputed domain name.
The Response states that the owners of Fredex East Ltd bought Fredex Europa Ltd from its then owner in 2013. In 2013, these owners decided to restructure the business. They closed Fredex Europa Ltd and continued operations under two new companies, Fredex North Ltd and Fredex East Ltd.
The Response does not conclude evidence to corroborate these claims other than the fact that Response has been filed using the email address formerly used by Fredex Europa Ltd
While under the Rules the Respondent must formally be Fredex Europa Ltd, it is not in dispute that that entity no longer exists.
The Panel will therefore accept the Response from the persons who appear to be continuing to carry on the business formerly conducted by Fredex Europa Ltd and using the email address confirmed by the Registrar as the email address for the registrant.
C. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, a trademark in which the Complainant has rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of, amongst other things, a number of registered trademarks for FEDEX as identified in Section 4 above.
The second stage of this inquiry typically involves a visual and/or aural comparison of the disputed domain name to the proven trademarks. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations (such as those that may be relevant to an assessment of infringement under trademark law) are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level-Domain (“gTLD”) component as a functional aspect of the domain name system. See WIPO Overview 3.0, section 1.11.
Disregarding the “.com” gTLD, the disputed domain name consists of the Complainant’s registered trademark with the letter “r” interpolated and the term “Europa”. As this requirement under the Policy is essentially a standing requirement, the addition of descriptive or geographic terms such as “Europa” does not prevent a finding of confusing similarity. See e.g., WIPO Overview 3.0, section 1.8. Moreover, the interpolation of the letter “r” into the Complainant’s trademark is the kind of variation which has frequently been found to be confusingly similar under the Policy in cases such as “typosquatting”. See e.g.,WIPO Overview 3.0, section 1.9. Viewed as a whole, the Complainant’s trademark is recognisable within the disputed domain name.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
D. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Previous UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.
The disputed domain name also appears to be used in respect of the very services for which the Complainant’s trademark is registered in the territories covered by those registered trademarks.
All of these are factors which go to establishing an absence of rights or legitimate interests in the disputed domain name.
Against this, it is contended in the Response that the name “Fredex Europa” was adopted by the founder of Fredex Europa Ltd, one Mr. Alfredas G. (Mr G.) who, according to the Response, was known to his friends as “Fred”. Those currently using the disputed domain name are simply the successors in title to Fredex Europa Ltd.
The Panel notes that the Response does not provide any objective or external evidence of Mr. G. being known as “Fred”. The Panel can accept, however, that “Fred” appears to be a fairly obvious nickname for someone whose name is Alfredas.
More problematic is how and why Mr. G. came to adopt “Fredex” for the name of his company and business.
While the Complainant has provided evidence of the scale of its operations in the immediate past rather than July 2011 when both Fredex Europa Ltd and the disputed domain name was registered, or 2013 when the current operators apparently assumed control of the business, the Panel considers it highly unlikely that a person wishing to enter the courier and delivery business at either of those would have been unaware of the Complainant and its FEDEX trademark. The Complainant has been operating since 1971 and has been well established in international markets for many years prior to 2011. In that connection, the Panel notes from the Complainant’s website that operations in the United Kingdom (where Fredex Europa Ltd, Fredex North Ltd and Fredex East Ltd are all incorporated), Germany, The Netherlands, and Belgium commenced in 1984, operations in Sweden, Finland, and Denmark started in 2001-2002 and Norway in 2004.
In those circumstances, it appears most unlikely that Mr. G. would not have been aware of the potential for confusion arising from adoption of the name “Fredex Europa” for competing services. The adoption of the name “Fredex” in circumstances where it was highly likely potential customers especially including Internet users would confuse or associate it with the Complainant’s long-established business is not conduct which qualifies as a good faith offering of services under the Policy.
These considerations would apply equally, if not with greater force, in 2013 if that is when the persons currently operating the business became involved.
The Response does contend that most of its customers are longstanding customers who do not confuse the “Fredex” business with the Complainant’s business. First, that fact (if it be a fact) does not address how and when those persons first became customers. Secondly, it does not address the potential risk of for confusion of new customers especially including Internet users who have not previously dealt with the “Fredex business”.
The length of time the “Fredex business” has been operating has given the Panel pause for consideration. Delay, however, is not usually a disentitling factor under the Policy. See WIPO Overview 3.0, section 4.17. Moreover, that does not appear to have been the case here as the Complainant states it became aware of the “Fredex business” only in January 2020. In addition, the Response has not exposed whether legal advice was sought when the business was acquired from Mr G. or, if it was, the substance of that advice.
Having regard to these matters, the Panel finds that the Complainant has established a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent has not rebutted that case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
E. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
As discussed in section 5D above, the Panel considers it was highly likely that Mr G. was aware of the Complainant and its trademark and the risk of confusion when he registered (or acquired) the company Fredex Europa Ltd and the disputed domain name. Proceeding with registering the disputed domain name in such circumstances does not qualify as good faith conduct under the Policy. Accordingly, the Panel finds that registering the disputed domain name in the face of that risk of confusion was registration in bad faith.
Even if the persons currently operating the “Fredex business” had transferred the disputed domain name into the name of one or other of their companies, they would not be in any better or different position having regard to the matters discussed in section 5D above.
The subsequent use of the disputed domain name to provide services falling within the scope of the Complainant’s trademark registrations in the territories covered by those registrations without permission and in circumstances where there is likely to be a high risk of confusion with the Complainant’s trademark is use in bad faith.
Accordingly, the Complainants have established all three requirements under 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, <fredexeuropa.com>, be transferred to the Complainant.
Warwick A. Rothnie
Date: December 28, 2020