WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Timberland Transportation, Inc. dba Priority Courier Experts v. Domain Administrator, See PrivacyGuardian.org / Mattrix, Epie Steve

Case No. D2021-3000

1. The Parties

The Complainant is Timberland Transportation, Inc. dba Priority Courier Experts, United States of America (“United States”), represented by Nilan Johnson Lewis, PA, United States.

The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Mattrix, Epie Steve, Cameroon.

2. The Domain Name and Registrar

The disputed domain name <prioritycourierexpress.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2021. On September 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 17, 2021, 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 September 21, 2021. The Respondent submitted an informal email communication to the Center on September 21, 2021.

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 “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 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2021. The Respondent did not submit any substantive Response to the Complaint, aside from the abovementioned informal email communication of September 21, 2021. Accordingly, on October 15, 2021, the Center notified the Parties that it would proceed to appoint the Administrative Panel.

The Center appointed David Taylor as the sole panelist in this matter on October 22, 2021. 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 United States logistics company, offering same-day services to customers in Minneapolis, St. Paul, throughout Minnesota, and the upper Midwest. For use in connection with its courier, transportation, and delivery services, the Complainant has registered the following trademarks:

- United States Trademark Registration No. 2,994,849, PRIORITY COURIER EXPERTS (stylized), registered on September 13, 2005; and

- United States Trademark Registration No. 4,570,798, PRIORITY COURIER EXPERTS, registered on July 22, 2014.

The Complainant also owns the domain name <priority.com>, from which it operates a consumer-facing Website whose homepage features the Complainant’s slogan “Every Time You Call Us… We Deliver!”, as well as images of the Complainant’s delivery vehicles affixing Complainant’s trademark.

The disputed domain name was registered using a privacy service on December 1, 2020. The disputed domain name resolves to a website (the “Respondent’s website”) titled “Priority Courier Express”, which is stylized in blue and red typeface in a manner similar to the way in which the Complainant’s PRIORITY COURIER EXPERTS trademark is stylized. The Respondent’s Website purports to offer logistics services to customers in “Minneapolis, St. Paul, and throughout Minnesota and the upper Midwest”, as well as internationally. The Respondent’s website features images of the Complainant’s delivery vehicles, bearing the Complainant’s PRIORITY COURIER EXPERTS trademark and the Complainant’s registered slogan “Every Time You Call Us… We Deliver!”.

5. Parties’ Contentions

A. Complainant

The Complainant asserts rights in the PRIORITY COURIER EXPERTS trademark. The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s trademark in that it is the same, save for the substitution of the word “experts” with the word “express”.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Rather, the Complainant argues that the Respondent’s business does not exist, and that the Respondent’s website has the effect of diverting Internet users away from the Complainant, thereby confusing Internet users as to the source of the Respondent’s website. The Complainant submits that there is no legitimate reason for the Respondent to have registered the disputed domain name, or for the use to which the disputed domain name has been put.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant submits that the Respondent is using the disputed domain name to drive Internet users away from the Complainant’s Website in order to create a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and services purportedly offered therein. The Complainant notes in this regard that the Respondent has populated its website with reproductions of the Complainant’s trademark, and has used images of the Complainant’s delivery vehicles, themselves displaying the Complainant’s trademark. The Complainant further notes that the Respondent’s website claims to provide services in Minnesota, while at the same time, the Respondent purports to be located in California, and makes use of a telephone number with an area code that corresponds to Ohio. The Complainant argues that these inconsistencies, coupled with the Respondent’s infringing use of the disputed domain name, amount to further evidence of the Respondent’s bad faith.

The Complainant requests transfer of the disputed domain name.

B. Respondent

The Respondent did not submit any substantive Response to the Complainant’s contentions.

6. Discussion and Findings

In order to prevail, the Complainant must demonstrate, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the PRIORITY COURIER EXPERTS trademark, the registration details of which are provided in the factual background section above.

The disputed domain name comprises the first two words making up the Complainant’s trademark (“priority courier”), replacing the final word “experts” with the term “express”. Spaces between the words making up the Complainant’s trademark have been omitted from the disputed domain name, a space being incapable of representation per se in a domain name. The Panel finds that the substitution of the term “experts” with “express” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark, whose dominant elements remain recognizable in the disputed domain name; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The applicable generic Top-Level Domain “.com” may be disregarded for purposes of comparison under the first element; see WIPO Overview 3.0, section 1.11.1.

The Panel finds the disputed domain name to be confusingly similar to the PRIORITY COURIER EXPERTS trademark in which the Complainant has rights. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

As noted above, the disputed domain name resolves to a website purporting to offer courier services. The Respondent’s website closely resembles that of the Complainant. The Respondent’s website goes so far as to reproduce textual elements of the Complainant’s website, the Complainant’s slogan, as well as images of the Complainant’s delivery vehicles displaying the Complainant’s trademark. Visitors to the Respondent’s website are likely to be misled into believing that they have arrived at the Complainant’s website. There is no evidence of any prior business relationship between the Parties, nor has the Respondent received any authorization to make use of the Complainant’s trademark, in a domain name, or otherwise. Prior UDRP panels have categorically held that the use of a domain name for purposes of impersonation or passing off can never confer rights or legitimate interests on a respondent; see WIPO Overview 3.0, section 2.13. The Panel finds that the Respondent’s use of the disputed domain name, as described above, does not amount to a bona fide offering of goods or services, as contemplated by paragraph 4(c)(i) of the Policy.

The Panel further finds that the Respondent’s use of the disputed domain name in a manner which misleads Internet users as to the source of the Respondent’s website does not give rise to any legitimate claim of being commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy. Nor does the Respondent’s website amount to legitimate noncommercial or fair use, as contemplated by paragraph 4(c)(iii) of the Policy.

The Respondent has not come forward with any evidence that would otherwise serve to demonstrate its rights or legitimate interests in the disputed domain name.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant’s rights in the PRIORITY COURIER EXPERTS trademark predate the Respondent’s registration of the disputed domain name by over 15 years. The Respondent’s knowledge of the Complainant and its trademark rights is apparent from the contents of the Respondent’s website, which reproduces textual elements of the Complainant’s website, including the Complainant’s slogan, and displays images of the Complainant’s delivery vehicles, which themselves display the Complainant’s trademark. The Panel infers that the Respondent registered the disputed domain name with knowledge of the Complainant, and in doing so sought to create a misleading impression of association between the disputed domain name, the Complainant, and the Complainant’s trademark. The Panel accepts the Complainant’s assertion that the Respondent’s registration of the disputed domain name was in bad faith.

The Respondent does not appear to be using the disputed domain name for any bona fide purpose. Rather, the Respondent’s website is misleading to the extent that it effectively impersonates the Complainant. Prior UDRP panels have consistently held that given that the use of a domain name for per se illegitimate activity can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith; see WIPO Overview 3.0, section 3.1.4.

The Panel notes that the Respondent’s website includes misleading contact information in that while the Respondent’s services purport to target customers in Minnesota, the Respondent’s website states that the Respondent’s business is based in California, the website lists a contact telephone number with an Ohio area code, and the underlying registrant appears to be based in Cameroon. The Panel finds that the Respondent’s registration of the disputed domain name using a privacy service, together with the provision of what appears to be false or misleading contact information, amounts to further evidence of the Respondent’s bad faith; see WIPO Overview 3.0, section 3.6.

The Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <prioritycourierexpress.com> be transferred to the Complainant.

David Taylor
Sole Panelist
Date: November 5, 2021