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Burlington Networks Inc. v. Tope Lawal [2005] GENDND 1952 (11 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Burlington Networks Inc. v. Tope Lawal

Case No. D2005-0974

1. The Parties

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

The Respondent is Tope Lawal, of Atherton, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <baxglobalexpress.com> is registered with Schlund+Partner AG.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2005. On September 13, 2005, the Center transmitted by e-mail to Schlund+Partner a request for registrar verification in connection with the domain name at issue. On September 14, 2005, Schlund+Partner transmitted by e-mail 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 contacts. 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 September 26, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2005. The Respondent did not submit a formal response. Accordingly, the Center notified the Respondent’s default on October 18, 2005.

The Center appointed Douglas M. Isenberg as the Sole Panelist in this matter on October 28, 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

Complainant states that it and its affiliates, including its parent, BAX Global Inc. (“BAX Global”), operate a $2 billion international supply chain management and transportation solutions company. Complainant states that BAX Global specializes in managing the movement of heavyweight packages and cargo of all shapes and sizes. Complainant states that BAX Global has nearly 500 offices in 133 countries and offers expedited and standard airfreight, ocean forwarding, customs brokerage, documentation and banking services across the globe. Complainant states that it has offered transport services under the BAX and BAX GLOBAL names, including in Nigeria, since at least as early as October 1, 1997.

Complainant states that it is the owner of all rights in and to a family of “BAX” trademarks, including the following federal registrations in the United States: BAX GLOBAL (U.S. Reg. No. 2,203,322); BAX GLOBAL and Design (U.S. Reg. No. 2,216,761); BAX GLOBAL and Design (U.S. Reg. No. 2,293,335); BAXSUITE (U.S. Reg. No. 2,546,975); BAXSAVER (U.S. Reg. No. 2,479,764); BAXCONNEX (U.S. Reg. No. 2,343,185); BAXTRAX (U.S. Reg. No. 2,216,497); BAXSHIP (U.S. Reg. No. 2,633,086); and BAX FORWARDER NETWORK and Design (U.S. Reg. No. 2,932,624). Although Complainant does not state when any of these marks were registered or when they were first used, a copy of a trademark registration certificate for U.S. Reg. No. 2,203,322 provided by Complainant as an exhibit to its complaint indicates that this mark was registered on November 10, 1998, and first used in commerce on October 1, 1997.

Complainant states that BAX Global’s website is located at <baxglobal.com> and <baxworld.com>.

Respondent is the registrant of the domain name <baxglobalexpress.com>, which was created on November 18, 2004.

5. Parties’ Contentions

A. Complainant

Complainant contends that, on or around May 31, 2004, a person identifying himself as “Johnson Elvis”, managing director of “Bax Global Intercontinental Express”, sent an e-mail to Colin Beaumont, the Director-General of the British International Freight Association, proposing a business relationship between Bax Global Intercontinental Express and BAX Global. In this e-mail, a copy of which was provided by Complainant, Elvis applied to be the clearing agent of BAX Global in Nigeria and explained that Bax Global Intercontinental Express had “inhouse agency offices at all main ports and inland locations in Nigeria”.

Complainant contends that, on or around June 2, 2004, Elvis sent an e-mail to Philip R. Wyllie, managing director of BAX Global South Africa. The e-mail, a copy of which was provided by Complainant, appears to solicit BAX Global as a business partner. The letter alleged that Bax Global Intercontinental Express had three offices in Lagos, Nigeria, and had the ability to conduct business throughout Nigeria.

Complainant apparently contends that Elvis is, or acted for, Respondent, seemingly based on the fact that a website using the domain name <baxglobalexpress.com> claimed to identify a company known as “Bax Global Intercontinental Express Limited”.

Complainant contends that the website using the domain name <baxglobalexpress.com> contains not only Complainant’s BAX GLOBAL trademark but also copyrighted images from Complainant’s own website. Complainant contends that “Respondent’s website attempts to replicate the layout, content, and colors found on Complainant’s website”. Black-and-white website printouts provided by Complainant as exhibits confirm similarities between the two websites.

Complainant contends that the domain name <baxglobalexpress.com> is confusingly similar to Complainant’s trademarks, despite the addition of the word “express” to the domain name (a word that is not present in Complainant’s trademarks) because the word “express” is a common term in the shipping industry that does not distinguish the domain name from Complainant’s trademarks and because the domain name includes a distinctive mark in its entirety.

Complainant contends that Respondent has no rights or legitimate interests in the domain name <baxglobalexpress.com> because: (1) before any notice of the dispute, Respondent did not use or make 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, (2) Respondent (as an individual, business, or other organization) had not been commonly known by the domain name, nor has it acquired any trademark or service mark rights in BAX GLOBAL, BAX GLOBAL EXPRESS or BAXGLOBALEXPRESS.COM, and (3) Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the service mark at issue.

Finally, Complainant contends that the domain name <baxglobalexpress.com> was registered and is being used in bad faith because (1) Respondent registered and is using the domain name to direct Internet users to its own website, which provides services that directly compete with Complainant’s, (2) Respondent registered and is using the domain name to disrupt the business of Complainant, in part by exploiting the confusion generated by such registration and use, and (3) there is no plausible explanation for the Respondent’s registration of the domain name other than to trade upon the goodwill the Complainant has developed in its marks.

B. Respondent

The Respondent did not submit a formal Response. However, Respondent sent an e-mail to the Center on September 22, 2005, stating the following:

“1) We were the ones who registered this domain name.

2) We run a web hosting/domain registration business

3) Many people use our proxy services as credit cards were not available in Nigeria until this year and even now are still limited by the banks.

4) From time to time, we come into contact with fraudulent and suspected fraudulent sites. When we register names or make payments for hosting with our Card we do not really check up the sites. It is mails such as these that let us know that some sites are fraudulent. We do not of course totally reject sites with such words as trust, bank etc unless tangible evidence of genuine business is presented.

5) Based on your mail, I am 99% sure this is a fraudulent site.

6) Please retrieve the name as you wish.”

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the domain name <baxglobalexpress.com> 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 <baxglobalexpress.com>; and (iii) the domain name <baxglobalexpress.com> has been registered and is being used in bad faith. Policy, Paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the registrations cited by Complainant (and the certificate for U.S. Reg. No. 2,203,322 provided as an exhibit) and Complainant’s stated use of the mark BAX and BAX GLOBAL names since at least 1997, the Panel is convinced that Complainant has rights in the marks BAX and BAX GLOBAL.

As to whether the domain name <baxglobalexpress.com> is identical or confusingly similar to Complainant’s BAX or BAX GLOBAL trademarks, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “baxglobalexpress”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., United States Patent and Trademark Office’s Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.’) nor the TLD have any source-indicating significance”).

The domain name <baxglobalexpress.com> is not identical to a trademark in which Complainant has rights, given the presence of the word “express” in the domain name. However, Complainant need prove only that the domain name is “confusingly similar” to a mark in which Complainant has rights. The Panel agrees with the Complainant that the addition of the word “express” is “a common term that does nothing to distinguish the domain name from Complainant’s mark under the Policy, particularly given that “[t]he word ‘express’ is an extremely common term in the shipping industry” (citing trademark registrations for FEDERAL EXPRESS and AIRBORNE EXPRESS, among others). See also Yahoo!, Inc. v. Cupcake Patrol and John Zuccarini, WIPO Case No. D2000-0928 (“The panel finds the misspelling of no significance in determining whether Respondents’ disputed domain names are identical or confusingly similar to Complainant’s ‘Yahoo!’ trademark because Complainant’s famous trademark forms the nongeneric part of each and every one of the disputed domain names.”).

Therefore, Complainant has proven that the domain name is confusingly similar to Complainant’s BAX GLOBAL mark, and Complainant has proven the first of the three elements required by the Policy.

B. Rights or Legitimate Interests

Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1, “http://arbiter.wipo.int/domains/search/overview/index.html” (visited November 10, 2005).

Accordingly, as a result of Complainant’s allegations and without any evidence of Respondent’s rights or legitimate interests in the domain name <baxglobalexpress.com>, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

Complainant contends, and the Panel agrees, that Respondent has acted in bad faith pursuant to paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. Specifically, with respect to subparagraph (iii), the Panel observes that Respondent is offering, via its website using the domain name <baxglobalexpress.com>, services that are competitive with those offered by Complainant.¹ While offering competitive services online is certainly not prohibited by the Policy, Respondent’s further selection of a domain name containing Complainant’s trademark is clearly evidence of bad faith. See, e.g., Ticketmaster Corporation v. Woofer Smith, WIPO Case No. D2003-0346. Further, with respect to subparagraph (iv), the Panel finds that by using the BAX GLOBAL trademark not only in its domain name but also on its website, along with copyrighted images apparently taken from Complainant’s website, Respondent has likely caused visitors to Respondent’s website to be confused that Respondent’s website is somehow affiliated with Complainant when it is not.

Therefore, the Panel is convinced of the existence of bad faith, and Complainant has proven the third of the three elements required by the Policy.

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 <baxglobalexpress.com> be transferred to the Complainant.

Douglas M. Isenberg
Sole Panelist

Dated: November 11, 2005

¹ The connection between the Respondent and “Elvis Johnson”, the author of the e-mails discussed in this decision, is unclear, but the Panel need not find a connection to find bad faith.