WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Averitt Express, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Domain Admin, Boostability

Case No. D2018-0161

1. The Parties

Complainant is Averitt Express, Inc. of Cookeville, Tennessee, United States of America (“United States”), represented by Adams and Reese LLP, United States.

Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Domain Admin, Boostability, of Lehi, Utah, United States.

2. The Domain Name and Registrar

The disputed domain name <averittaviation.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2018. On January 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 26, 2018, 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 Complainant on January 29, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 30, 2018.

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 February 12, 2018. On February 15, 2018, the Center received an email communication from an unrelated third party. In accordance with the Rules, paragraph 5, the due date for the Response was March 4, 2018. The Respondent did not file a Response.

The Center appointed John C McElwaine as the sole panelist in this matter on March 14, 2018. 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, a Tennessee corporation, is a provider of freight transportation and supply chain management products and services.

Complainant owns numerous registrations for the marks AVERITT, AVERITT EXPRESS, and AVERITT AIR in multiple countries, namely, the United States, Canada, and Mexico (collectively the “AVERITT Marks”). See e.g., United States Registration No. 2,619,908, AVERITT, registered on September 17, 2002. Evidence of these registrations is provided in Annex 5 to the Complaint.

Complainant previously owned the Disputed Domain Name <averittaviation.com>, which was used by Complainant to advertise Complainant’s transportation and aviation business consulting, aircraft chartering, appraisal, maintenance, and repair services. Complainant inadvertently allowed the registration for the Disputed Domain Name to lapse. Respondent, Boostability, registered the Disputed Domain Name on November 30, 2017.

The Disputed Domain Name leads Internet users to a website with content in the field of transportation services under the title “averittaviation”.

On January 5, 2018, Complainant’s counsel sent a letter to Respondent but did not receive a response.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Name should be transferred to Complainant because each of the three elements required in paragraph 4(a) of the Policy has been established.

Complainant asserts that Averitt Express, Inc., is a leading freight transportation and supply chain management provider in the United States providing freight and other transportation services in the United States and to over 300 international destinations in 100 countries. Complainant alleges that its clients consist of corporate customers, such as Jack Daniels, Black and Decker, Chevron Global Lubricants, PetSmart, Dick’s Sporting Goods, Dollar General, Philips Electronics, DuPont, General Motors, Walmart, Gap Inc., and GlaxoSmithKline. The AVERITT Marks have been used in commerce in connection with transportation services since at least as early as 1969.

In addition to its registrations for the AVERITT Marks, Complainant owns numerous Averitt-formative domain names, including but not limited to <averitt.com>, <averittcareers.com>, <averittcompanystore.com>, <averittcompanystore.net>, <averittequipsyou.com>, <averittequipsyou.net>, <averittexpress.com>, <averittpowerofone.com>, <averittsalutesyou.com>, <goaveritt.com>, <joinaveritt.com>, and <work4averitt.com>.

Complainant argues that the Disputed Domain Name is confusingly similar to Complainant’s well-known AVERITT Marks, as it consists merely of the word “averitt”, the descriptive term “aviation”, and the generic Top-Level Domain (“gTLD”) “.com”. Complainant points out that the descriptive term “aviation” does not impact the overall impression of the dominant part of the Disputed Domain Name, which is “averitt” or alternatively, increases the confusing similarity because the descriptive term “aviation” is directly related to Complainant’s provision of transportation services via air.

Complainant contends that Respondent has no rights to or legitimate interests in the Disputed Domain Name based on Complainant’s continuous and long prior use of the AVERITT Marks. Complainant asserts that it has not licensed or otherwise permitted Respondent to use the AVERITT Marks, there is no relationship between the Parties, and nothing in the record, including the WhoIs information, suggests that Respondent is commonly known by the Disputed Domain Name. Complainant further contends that Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services or in a legitimate noncommercial or fair manner. Lastly, Complainant argues that Respondent’s opportunistic registration of the Disputed Domain Name further evidences Respondent’s lack of rights or legitimate interests in the Disputed Domain Name.

Complainant alleges that Respondent intentionally registered and is using the Disputed Domain Name in bad faith. Complainant asserts that Respondent could not have decided to use the word “averitt” in the Disputed Domain Name for any reason other than to trade off the goodwill and reputation of Complainant’s famous trademark or to otherwise create a false association, sponsorship, or endorsement with or of Complainant. Complainant argues that this point is evidenced by the fact that Respondent is using the Disputed Domain Name to host a website with content related to Complainant’s services. Complainant alleges that the Disputed Domain Name is being used to host a sham blog site and is being used to divert Internet users/potential customers in bad faith.

Since the Domain Name has no other meaning except for the reference to the name and trademark of Complainant, and there is no way in which it could be used legitimately by Respondent, Complainant requests this Panel to find that Respondent has registered and is using the Domain Name in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must prove its assertions with evidence demonstrating:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) 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.

Because of Respondent’s failure to file a Response, the Panel may accept as true the reasonable factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited. v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above-cited elements are as follows.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires Complainant to show that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. Complainant has provided evidence that it is the owner of the AVERITT, AVERITT EXPRESS, and AVERITT AIR marks. The Panel finds that Complainant owns trademark rights in the AVERITT Marks.

It is well established, and the Panel agrees, that the addition of a descriptive word to a trademark in a domain name does not avoid a finding of confusing similarity. See Mastercard International Incorporated v. Dolancer Outsourcing Inc., WIPO Case No. D2012-0619; Air France v. Kitchkulture, WIPO Case No. D2002-0158. Here, the addition of the descriptive word “aviation” does nothing to distinguish the Disputed Domain Name from Complainant’s AVERITT Marks.

The Panel finds that Complainant has met its burden of showing that the Disputed Domain Name is confusingly similar to the AVERITT Marks in which Complainant has rights.

B. Rights or Legitimate Interests

Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Disputed Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Disputed Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.

The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

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

Complainant contends, and the Panel agrees based on the uncontested facts, that Respondent is not commonly known by the name “Averitt”. Complainant denies having licensed or otherwise provided authorization for Respondent to use the AVERITT Marks or to register the Disputed Domain Name incorporating the AVERITT Marks. Complainant further asserts that Respondent’s opportunistic registration of the Disputed Domain Name after Complainant’s registration lapsed is further evidence that Respondent does not have rights or legitimate interests in the Disputed Domain Name.

The Panel notes that for numerous years prior to registration of the Disputed Domain Name by Respondent, Complainant actively used the Disputed Domain Name to redirect to an active website located at the <averittair.com> domain name promoting Complainant’s Averitt Air services. The Panel further notes that the uncontested records indicate that Respondent is not commonly known by “Averitt”. Accordingly, the Panel finds that Respondent’s opportunistic registration of the Disputed Domain Name is evidence that Respondent lacks rights or legitimate interests in the Disputed Domain Name.

Lastly, Complainant contends that Respondent’s use of the Disputed Domain Name is nothing more than a sham blog intended to divert Internet traffic and presumably generate click-through revenue as a result of the diverted traffic. As a result, Complainant asserts Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services nor using the Disputed Domain Name for any legitimate noncommercial or fair use.

After reviewing Respondent’s website that resolves at the Disputed Domain Name, the Panel notes that it is unclear whether the blog has a noncommercial purpose, if Respondent receives revenue from the Disputed Domain Name, or if the blog is a sham as Complainant contends. On one hand, the blog as translated contains uninteresting and simple statements that make the blog appear to be bogus, such as: “On this page I would like to tell you something about transport and share my knowledge and experiences with you”, “In today’s economy, transportation is an indispensable part of the economy thanks to its well-developed import and export structure”, and “The name transport company refers to a company that deals with the transport of goods and merchandise.”

Providing Respondent the benefit of the doubt, the Panel notes that the blog’s content is generally related to Complainant’s field of activity, namely, the transportation industry. However, Respondent is not making any commentary in the nature of information, news, fan, or criticism related to Complainant or Complainant’s services. There is no mention of the term “Avertitt” or “aviation”. The Panel agrees “that the right to express one’s views is not the same as the right to use another’s trademark in a confusing manner (in a domain name) to identify one’s self as the source of those views.” Red Bull GmbH v. Maxwell Arnold, WIPO Case No. D2014-1589, citing, Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 and Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300; see also SiBeam Inc. v. Smelser Incorporated, WIPO Case No. D2015-0242 (finding no legitimate interest in a blog containing articles in the activity field of Complainant). Here, there is nothing on the website to suggest that Complainant is not in fact the author of the blog. Accordingly, the Panel finds that Respondent’s blog in connection with use of the Disputed Domain Name does not amount to fair use of Complainant’s AVERITT Marks, and as such, does not confer any rights or legitimate interests in the Disputed Domain Name to Respondent.

Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Respondent had the opportunity to put on evidence of its rights or legitimate interests yet provided no substantive response as to why its conduct amounts to rights or legitimate interests in the Disputed Domain Name under the Policy. In the absence of such a response and combined with the factors as detailed above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Disputed Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.

Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and nevertheless registered a domain name in which it had no rights or legitimate interests. See Accor S.A. v. Kristen Hoerl, WIPO Case No. D2007-1722. As detailed above, Respondent registered the Disputed Domain Name, which is comprised of Complainant’s AVERITT Marks and a descriptive term directly related to Complainant’s services, and is using the Disputed Domain Name to host a blog that makes no fair use commentary regarding Complainant. As such there is no explanation for Respondent to have chosen to register the Disputed Domain Name and use it as Respondent currently has other than to trade off the goodwill and reputation of Complainant’s trademark or otherwise create a false association with Complainant. The addition of the term “aviation” increases the likelihood of confusion because the descriptive term is directly related to Complainant’s various aircraft-related services rendered under the AVERIIT Marks and creates an association with Complainant. See Statoil ASA (Statoil) v. Liheng, Just Traffic Supervision Consulting, WIPO Case No. D2016-2115; Dassault Aviation, Groupe Industriel Marcel Dassault v. N Rahmany, WIPO Case No. D2015-0999. With no response from Respondent, this claim is undisputed.

In addition, the content of the website displayed at the Disputed Domain Name indicates that Respondent is using the AVERITT Marks to attract Complainant’s customers, and then to encourage those customers to click through to other websites they might similarly assume were associated with Complainant. Respondent likely generates revenues for each click-through of the links, thereby illegitimately capitalizing on Complainant’s name and reputation. The Panel finds that Respondent registered the Disputed Domain Name with the intent of attracting Internet users for commercial gain by creating a likelihood of confusion as to Complainant’s sponsorship of or affiliation with Respondent’s website and likely with Complainant’s former website that existed at the Disputed Domain Name. Such registration and use is in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Lastly, the Panel finds that Respondent’s opportunistic registration of the Disputed Domain Name after Complainant inadvertently allowed its registration of the Disputed Domain Name to lapse is additional evidence of bad faith registration and use of the Disputed Domain Name. See Theodoor Gilissen Bankiers N.V. v. AbdulBasit Malaani, WIPO Case No. D2013-1229 (“Prior UDRP panels have previously found that a respondent’s registration of a domain name after a complainant’s registration lapsed is in itself evidence of bad faith”); Carla Sozzani Editore S.R.L. v. Michael D. Darr, WIPO Case No. D2017-1237; PN II, Inc. v. Isaac Goldstein, WIPO Case No. D2016-0765; Donna Karan Studio v. Raymond Donn, WIPO Case No. D2001-0587 (“The fact that the domain name had been registered in the name of the complainant and had expired does not eliminate this bad faith”).

The Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Disputed Domain Name in bad faith.

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 <averittaviation.com> be transferred to Complainant.

John McElwaine
Sole Panelist
Date: March 28, 2018