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Alpha Freight Systems, Inc. v. Garlepied Transfer, Inc. [2005] GENDND 1965 (7 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alpha Freight Systems, Inc. v. Garlepied Transfer, Inc.

Case No. D2005-0670

1. The Parties

Complainant is Alpha Freight Systems, Inc., Stow, Ohio, United States of America, represented by Buckingham, Doolittle & Burroughs, LLP, United States of America.

Respondent is Garlepied Transfer, Inc., Destrehan, Louisiana, United States of America, represented by Emile J. Garlepied, United States of America.

2. The Domain Name and Registrar

The disputed domain name <alphafreight.net> is registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2005. On June 27, 2005, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On June 27, 2005, Dotster, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an Amended Complaint on June 29, 2005. The Center verified that the Complaint and Amended 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 Respondent of the Complaint, and the proceedings commenced on July 6, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was July 26, 2005. Respondent filed its Response with the Center on July 26, 2005.

The Center appointed Carol Anne Been as the sole panelist in this matter on August 8, 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.

Complainant requested leave to make a Supplemental Filing on August 9, 2005, to provide additional facts not known to Complainant at the time of filing the Complaint. In its discretion, the Panel has considered the Supplemental Filing.

The Panel made a request for supplemental information from Respondent, which the Center transmitted to Respondent in Panel Order No. 1 dated August 25, 2005. Respondent was given until September 1, 2005, to provide the supplemental information. On September 9, 2005, Respondent requested an extension of time to respond to Panel Order No. 1, due to the hurricane that significantly damaged the area where Respondent is located. On September 13, 2005, the Panel issued Panel Order No. 2 extending Respondent’s time to submit supplemental information to October 27, 2005. The Center transmitted Panel Order No. 2 to Respondent on September 14, 2005. No supplemental information has been received from Respondent.

4. Factual Background

The facts as presented in the Complaint are as follows. Complainant is the owner of two federally registered trademarks, listed below, incorporating the phrase “Alpha Freight”. Complainant commenced use of these marks in 1993. The registrations were issued in 2002 and 2003.

Complainant registered the domain name <alphafreight.com> in 1999 and has used that domain name as its web address, in conjunction with its federally registered trademarks, to provide services including pickup, handling, transportation and delivery of freight.

The facts as presented in the Response are as follows. Respondent has used the name “Alpha Freight” and/or “Access Group” since 1984 for shipping and transportation services. Respondent registered the Domain Name in June 2000 and has used the Domain Name in connection with its shipping and transportation services.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Domain Name is confusingly similar to Complainant’s federally registered ALPHA FREIGHT SYSTEMS marks and its <alphafreight.com> domain name. Complainant also argues that Respondent has no legitimate interest or right in the Domain Name. Complainant points out that Respondent’s website found at the Domain Name does not mention the phrase “Alpha Trucking”, and that Respondent’s charter for its Alpha Trucking entity was revoked by the Louisiana Secretary of State. Complainant asserts that bad faith may be inferred from Respondent’s registration of the Domain Name, which incorporates Complainant’s federally registered marks and differs only slightly from the domain name registered to Complainant. Complainant asserts that the parties provide similar trucking services, and that Respondent incorrectly states that Complainant’s services are limited to “less than load” freight services. Complainant also alleges that Respondent’s offer to sell the Domain Name to it following filing of the Complaint is further evidence of bad faith.

B. Respondent

Respondent alleges that its use of “Alpha Trucking” since 1984 provides Respondent with a legitimate interest in the Domain Name. Respondent does not claim to have used and did not provide any evidence of use of the phrase “Alpha Freight” at any time prior to registration of the Domain Name.

Respondent alleges that Complainant’s services of pickup, handling, transportation and delivery of freight are different from Respondent’s services of handling containers and truck load freight.

Respondent alleges that the parties are located in different parts of the country, with Complainant located in Ohio and Respondent located in Louisiana.

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

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

(ii) that Respondent has no legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and used in bad faith.

To prevail, Complainant must establish each of the foregoing elements, which are separately addressed below.

A. Identical or Confusingly Similar

Complainant is the owner of two federally registered United States trademarks incorporating the phrase “Alpha Freight” and also is the owner of and uses the domain name <alphafreight.com>. The Domain Name <alphafreight.net> uses the same two words, “Alpha Freight”, as found in Complainant’s marks and domain name. While the Domain Name does not incorporate the word “Systems”, which also is found in both of Complainant’s trademark registrations, or the word “Inc.”, which is found in one of Complainant’s trademark registrations, those words are less distinctive and not the core words in Complainant’s marks. The Domain Name is confusingly similar to Complainant’s federally registered marks and registered domain name. Ownership of a registered trademark to which a domain name is confusingly similar has been held to meet the requirements of paragraph 4(a)(i) of the Policy. See, e.g., Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358 (July 16, 2002).

Thus, the Panel holds that the Domain Name is confusingly similar to Complainant’s trademark rights in the phrase “Alpha Freight”.

B. Rights or Legitimate Interests

Respondent has presented no evidence of its use of, or any rights or legitimate interest in, the phrase “Alpha Freight”, apart from use in the Domain Name.

Respondent had the opportunity to provide such evidence, both in the Response and when requested by the Panel, but did not do so. Therefore, the Panel may conclude from Respondent’s failure to respond and provide contrary evidence that no evidence of any use by Respondent of the phrase “Alpha Freight” exists, apart from the Domain Name. See, e.g., Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques., WIPO Case No. D2000-0004 (February 16, 2000) (“It is a general principle of United States law that the failure of a party to submit evidence on facts in its control may permit the court to draw an adverse inference regarding those facts.”).

Respondent’s use of the phrase “Alpha Trucking” since 1984 does not create rights or a legitimate interest in the phrase “Alpha Freight”. Respondent’s use of “Alpha Trucking” and Complainant’s use of “Alpha Freight” have both existed for many years. While the terms “Trucking” and “Freight” may be considered descriptive of the services rendered by the parties, the two terms are different and use of one does not create rights in the other when combined with “Alpha”. Therefore, although Respondent may hold legitimate rights in “Alpha Trucking”, the Panel finds that the phrase “Alpha Trucking” is sufficiently different from the phrase “Alpha Freight” so that Respondent’s use of “Alpha Trucking” did not create rights in the phrase “Alpha Freight”.

Thus, the Panel holds that Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Respondent selected a phrase for the Domain Name that is identical to the phrase in Complainant’s marks and domain name. Respondent has provided no explanation or evidence for its selection and use of that particular phrase in the Domain Name. Respondent’s use of “Alpha Trucking” does not support the proposition that use of the phrase “Alpha Freight” in the Domain Name was in good faith. Further, the absence of any use of “Alpha Trucking” in Respondent’s website at the Domain Name further suggests that Respondent’s use of the phrase “Alpha Trucking” is not the reason it selected the Domain Name.

Both parties are in the business of freight transportation. The nature of this business involves the shipping of freight to different locations. Since Respondent does not assert that it was not familiar with Complainant, or that its services are rendered in a different geographic area than those of Complainant, the Panel assumes that there is a geographic overlap of the parties’ services and that the parties are, at least to some extent, competitors. Thus, Respondent’s choice of the phrase in the Domain Name appears to have been intended to attract and divert Internet users seeking Complainant to Respondent’s site and cause confusion among the public, which is evidence of bad faith.

The Panel concludes that Respondent had no other basis for use of the phrase “Alpha Freight” in the Domain Name. See, e.g., SONAE S.G.P.S., S.A. v. José Alberto Oliveira, WIPO Case No. D2000-1429 (February 8, 2001), and other cases included in Index of WIPO UDRP Panel Decisions where bad faith was determined based on inconceivable legitimate use.

Thus, the Panel holds that Respondent has registered and used the Domain Name in bad faith. The Panel does not consider, and does not determine, whether Respondent’s offer to sell the Domain Name to Complainant after the Complaint was filed could be additional evidence of 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, <alphafreight.net>, be transferred to Complainant.

Carol Anne Been
Sole Panelist

Dated: November 7, 2005