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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Burlington Networks Inc. v. Igor Sashin

Case No. D2005-1036

 

1. The Parties

The Complainant is Burlington Networks Inc., Irvine, United States of America, represented by Knobbe, Martens, Olson & Bear, LLP, United States of America.

The Respondent is Igor Sashin, St. Petersburg, Russian Federation.

 

2. The Domain Name and Registrar

The disputed domain name <bax-global.org> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2005. On October 3, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On October 8, 2005, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 11, 2005. In accordance with the Rules, Paragraph 5(a), the due date for Response was November 1, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2005.

The Center appointed James A. Barker as the Sole Panelist in this matter on November 9, 2005. 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 following facts are drawn from the Complainant, and are not contested by the Respondent.

The Complainant is Burlington Networks Inc., a Delaware corporation which is a 100% owned subsidiary of BAX Global Inc.

The Complainant and its affiliates, including its parent, BAX Global Inc., operate a $2 billion international supply chain management and transportation solutions company. BAX Global specializes in managing the movement of heavyweight packages and cargo of all shapes and sizes. With nearly 500 offices in 133 countries, BAX Global has one of the largest service networks in the industry. The company offers expedited and standard air freight, ocean forwarding, customs brokerage, documentation and banking services across the globe. BAX Global’s website is located at <baxglobal.com> and <baxworld.com>. The Complainant has offered transport services since at least as early as 1997 under the BAX and BAX GLOBAL marks. In Russia, where the Respondent is located, the Complainant has offered transport services since at least as early as 1997 under those marks.

The Respondent registered the disputed domain name on July 27, 2005.

The disputed domain name resolves to a website that describes transport services that are identical to Complainant’s, including air and ocean freight, courier services, and international business consulting. However, most of the website appears to merely describe services rather than allow a user to actually initiate or use such services. The only apparent function that a user can perform is to register with the website for an apparent employment opportunity. Other links on the website, that purport to lead to news clippings, instead return the user to the home page of the website.

The Complainant discovered the registration of the disputed domain name after being contacted by a prospective employee. That prospective employee had noticed an employment advertisement on the website to which the disputed domain name refers. In response to a query, that prospective employee received an emailed response which stated (among other things) that “Eligible candidates who wish to apply for this job can fill in the form” to which a link was included in the response. Before providing personal information in the form, the prospective employee checked the bona fides of the advertisement with the Complainant, who confirmed that the website was not associated with the Complainant.

 

5. Parties’ Contentions

A. Complainant

I. Identical or Confusingly Similar

The Complainant is the owner of all rights in and to a family of “BAX” trademarks, including the marks BAX, BAX GLOBAL, BAX GLOBAL and design, BAXSUITE, BAX CONNEX, BAXSAVER, BAXTRAX, BAXSHIP and BAX FORWARDER NETWORK. Among others, the Complainant has a United States trademark registration for the mark BAX GLOBAL, on the principal register of the US Patent and Trademark Office, evidence of which was attached to the Complaint. The Complainant is also the owner of a Russian trademark registration for the same mark (evidence of which was apparently attached to the Complainant, although not accompanied by an English translation).

In analyzing identical or confusing similarity under Paragraph 4(a)(i) of the Policy, it is proper to accord little or no significance to the “.com” generic top-level domain. See Royal Crown Company, Inc. v. New York Broadcast Services, Inc., WIPO Case No. D2000-0315. Thus, the appropriate confusing similarity analysis is a comparison of the second level of the domain name, “bax-global”, to Complainant’s BAX GLOBAL mark. The only difference is the use of a hyphen rather than a space between the two words. The removal of a space, a character not permitted in domain names, does not eliminate the confusing similarity between the disputed domain name and the Complainant’s mark. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

Moreover, the Complainant’s BAX GLOBAL mark is a coined mark that is inherently distinctive. Other panels have stated that “[w]hen a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar”. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Accordingly, the disputed domain name is confusingly similar to the Complainant’s BAX GLOBAL mark under the Policy, Paragraph 4(a)(i).

II. Rights or Legitimate Interests

The Respondent is not affiliated with the Complainant. The Respondent has never been a BAX agent, nor is there any contractual relationship between the Complainant and the Respondent. The Complainant has not licensed or otherwise authorized the Respondent to use any of its trademarks or to apply for any domain name incorporating its trademarks.

Paragraph 4(c) of the Policy lists three methods by which a respondent can establish rights or legitimate interests in a domain name. None of the activities of the Respondent, comprising its use of the website to which the disputed domain name refers, demonstrate rights under Paragraph 4(c).

III. Bad faith

The Respondent has demonstrated bad faith within the meanings of both paragraphs 4(a)(iii) and (iv) of the Policy.

In relation to Paragraph 4(a)(iii), the Respondent has disrupted the Complainant’s business by creating a likelihood of confusion with the Complainant’s BAX GLOBAL mark. The Respondent represents itself to be a direct competitor of the Complainant in offering transportation, freight, and related services. The Respondent has adopted a domain name that is confusingly similar to the Complainant’s mark and registered the disputed domain name with the intention of forcing a business relationship with the Complainant and disrupting the Complainant’s business.

In relation to Paragraph 4(a)(iv), the Respondent has intentionally attempted to attract consumers to its website by creating a likelihood of confusion with the Complainant, as to the source, sponsorship and affiliation of the disputed domain name and the services advertised therein. The disputed domain name is so likely to create confusion among Internet users that one can only conclude that it was chosen specifically to achieve that very goal.

In view of the copied artwork from the Complainant’s website, the selection of the disputed domain name, and the response sent to the prospective employee, it is apparent that the Respondent was aware of the Complainant, its business, its rights in the BAX GLOBAL mark, and its reputation in the transportation industry. Nevertheless, the Respondent registered a domain name incorporating the Complainant’s well-known BAX GLOBAL mark, and uses the domain name to promote services, and continues to promote employment opportunities under the BAX GLOBAL mark, in violation of the Complainant’s rights.

B. Respondent

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

 

6. Discussion and Findings

Under the Policy, Paragraphs 4(a)(i)-(iii), for the Complainant to succeed and have the disputed domain name transferred to it, the Complainant must prove that:

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name was registered and is being used in bad faith.

Paragraph 4(a) of the Policy provides that the Complainant must prove all of these three elements, which are discussed as follows.

A. Identical or Confusingly Similar

There is no dispute in this case that the Complainant has registered rights in the trademark BAX GLOBAL in the US, on the principal register of the US Patent and Trademark Office, and in Russia where the Respondent is apparently located, and in other countries. In support of those rights, the Complainant provided relevant copies of its trademark registrations.

It is well-established that the gTLD extension is to be disregarded by panels in determining whether a domain name is identical or confusingly similar to a trademark.

Disregarding the gTLD extension, the disputed domain name is substantially identical to the Complainant’s mark, phonetically and visually. The only difference between the Complainant’s mark, and the relevant part of the domain name is that a hyphen appears in the domain name, rather than a space between the elements BAX and GLOBAL. The inclusion of the hyphen is immaterial in comparing the disputed domain name and the Complainant’s mark.

For these reasons, the Panel finds that the disputed domain name is identical to the mark – BAX GLOBAL – in which the Complainant has rights.

B. Rights or Legitimate Interests

Panels have consistently found that the burden is on the Respondent to provide evidence of its rights or legitimate interests under Paragraph 4(c). (See for example Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753.) That burden arises once the Complainant establishes a prima facie case against the Respondent, which the Complainant has done in this case.

The Respondent did not contest the statements and arguments presented by the Complainant. The Complainant states that the Respondent has no rights to the Complainant’s marks, and that there is no relationship between them. There is otherwise no evidence that there is any legitimate relationship between the Respondent and the disputed domain name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iii)

The Complainant submits that the Respondent registered the disputed domain name primarily for the purpose of disrupting its business, which constitutes bad faith under Paragraph 4(b)(iii) of the Policy. However, the Panel does not make such a finding. There is no evidence that the Respondent has sought to establish a business in fact. In addition, Paragraph 4(b)(iii) requires that a respondent and complainant are competitors. A respondent does not make itself a competitor merely by confusing Internet users about its relationship with a complainant. If that were the case, most cases under the Policy would involve an allegation under Paragraph 4(b)(iii), or a complete overlap with the separate grounds (that the domain name is confusingly similar) to be established under 4(a)(i).

Paragraph 4(b)(iv)

The Complainant additionally submits that the Respondent has demonstrated bad faith within the meanings of Paragraph 4(a)(iv) of the Policy. Paragraph 4(a)(iv) provides that bad faith is demonstrated where, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.

For the Complainant to establish a case under Paragraph 4(b)(iv), the Respondent must have had some knowledge of the Complainant’s mark. It is clear that the Respondent had that knowledge. The Complainant’s trademark is well-known and distinctive. The Panel finds that the Respondent knew of the Complainant’s mark when it registered the disputed domain name, and so registered it in bad faith. Such a finding is greatly supported by the nature of the Respondent’s website, which copies the appearance of the Complainant’s website. Such an apparently deceptive imitation is strong evidence that the Respondent well knew of the Complainant and its rights, and sought to obtain some advantage by exploiting them.

It is not entirely clear, and the Respondent gave no explanation, for why it chose and registered the disputed domain name in particular. The Respondent must have chosen it for some advantage. It is not hard to speculate that the Respondent sought to obtain some financial advantage from obtaining personal details from those Internet users mistakenly confused into believing that it was the Complainant, even though there is little direct evidence of this. In the absence of any explanation from the Respondent, the Panel concludes that the Respondent registered and used the domain name for the purposes described in Paragraph 4(b)(iv) of the Policy. The Respondent provided no evidence to the contrary.

Other Evidence of Bad Faith

Evidence of bad faith is not limited to the circumstances set out in Paragraph 4(b) of the Policy. There is other evidence in this case which suggests bad faith by the Respondent. The Respondent appears to have held itself out to be the Complainant by replicating the look and feel of the Complainant’s website. As such, the Respondent appears to be practicing a deception about its identity which, in the circumstances of this case, provides evidence of bad faith.

Accordingly, the Panel finds that the disputed domain name was registered, and is being used, in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <bax-global.org> be transferred to the Complainant.


James A. Barker
Sole Panelist

Dated: November 23, 2005

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1036.html

 

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