WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Averitt Express, Inc. v. Protection of Private Person / Roman Emec

Case No. D2018-0249

1. The Parties

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

The Respondent is Protection of Private Person of Moscow, Russian Federation / Roman Emec of Doneckaya obl., Doneck, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <averittair.com> (the “Domain Name”) is registered with REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2018. On February 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 7, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and disclosing that the language of the registration agreement was Russian. On February 12, 2018, the Center sent an email communication to the parties in English and Russian regarding the language of the proceeding, and invited the Complainant to respond by February 15, 2018 and the Respondent to respond by February 17, 2018. On February 12, 2018, the Complainant sent an email to the Center confirming that the request for the language of proceedings to be English was included into the Complaint. The Respondent did not comment on the language of the proceeding by the specified due date.

The Center verified that 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 February 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 14, 2018.

The Center appointed Olga Zalomiy as the sole panelist in this matter on March 16, 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

The Complainant is a U.S.-based transportation company, which owns multiple trademark registrations for the AVERITT and AVERITT AIR trademarks, such as:

-U.S. Trademark Registration for the AVERITT AIR mark, No. 3745949, registered on February 9, 2010;

-U.S. Trademark Registration for the AVERITT mark, No. 2619908, registered on September 17, 2002.

The Respondent registered the Domain Name on November 27, 2017 and initially used it to direct to a website featuring pornographic content. Currently, the Domain Name is inactive, but remains registered by the Respondent.

On January 26, 2017, the Complainant sent the Respondent a cease-and desist letter in both Russian and English.

5. Parties’ Contentions

A. Complainant

The Complainant claims that prior to the Respondent’s registration of the Domain Name, the Complainant owned the Domain Name and used it in connection with a website advertising services offered by the Complainant and others in the transportation industry, namely, transportation and aviation business consulting, aircraft chartering, acquisition, and maintenance services. The Complainant contends that it inadvertently failed to renew its registration, and shortly after it lapsed, the Respondent registered the Domain Name and began using it to direct to a website featuring pornographic content.

The Complainant claims that it is the owner and proprietor of the registered AVERITT and AVERITT

AIR trademarks (collectively, the “AVERITT Marks”), and is one of the leading freight transportation and supply chain management providers in the U.S. The Complainant alleges that the Complainant and its predecessors have been using the AVERITT mark since at least as early as 1969 and the AVERITT AIR mark since at least as early as 1998, both in connection with transportation services. The Complainant asserts that it owns (directly or through its agents) many domain names incorporating the AVERITT mark, including but not limited to the following: <averitt.com>, <averittexpress.com> and <averittcareers.com>. The Complainant contends that the Domain Name is identical or confusingly similar to the AVERITT trademark, because the mark is the first and most prominent element of the Domain Name and the addition of the generic Top-Level Domain (“gTLD”) “.com” does not impact the analysis. The Complainant further contends that the Domain Name also incorporates the AVERITT AIR trademark in its entirety.

The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant alleges that neither “Averitt” nor “Averitt Air” is the Respondent’s name, and the Respondent is not, and has never been commonly known as “Averitt” or “Averitt Air”. The Complainant alleges that the Respondent is not, and has never been a licensee or franchisee of the Complainant. The Complainant maintains that the Respondent has never been authorized by the Complainant to register or use the Complainant’s AVERITT Marks or to apply for or use any domain names incorporating the marks. The Complainant contends that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, or in a legitimate noncommercial or fair manner. The Complainant claims that as of the date of the Complaint, the Domain Name does not resolve to a live website. The Complainant alleges that previously, the Respondent used the Domain Name to direct to a website with explicit thumbnail images linking to a variety of pornographic videos under the title “Free porn movies – Russian teen porn” and the Respondent derived no rights or legitimate interests from using the Complainant’s trademark to divert Internet users to pornographic websites. The Complainant contends that even assuming that the Respondent had been engaged in legitimate business activities related to the marketing and promotion of lawful, adult content, there is no apparent or legitimate reason for Respondent’s selection of a domain name comprised of the AVERITT and AVERITT AIR trademarks for a Polish website advertising pornographic videos. The Complainant argues that the Respondent’s opportunistic registration after Complainant inadvertently allowed its own registration to expire serves as additional evidence the Respondent has no rights or legitimate interests in respect of the Domain Name.

The Complainant contends that the Respondent registered and is using the Domain Name in bad faith. The Complainant argues that given its trademark registrations for the AVERITT Marks, the Complainant’s ownership of various domain names incorporating the AVERITT Marks, which previously included

The Domain Name, and the international reach of the Complainant’s service offerings, it is not plausible that the Respondent could have been unaware of the Complainant at the time of the Domain Name registration. The Complainant claims that the Complainant and its predecessors have used the AVERITT mark for nearly fifty years, and the mark is highly distinctive and universally associated with the Complainant. The Complainant argues that the Respondent’s knowledge of the Complainant is furthermore evidenced by inclusion of the word “air” in the Domain Name, as the Complainant’s business involves the provision of transportation services by various methods including via air. The Complainant contends that the Respondent used the Domain Name in bad faith because he used the Domain Name for the purpose of disrupting the Complainant’s business, tarnish the distinctiveness and repute of the AVERITT Marks, and/or generate commercial gain for the Respondent. The Complainant claims that previously, the Respondent was using the Domain Name to divert Internet users to a website featuring a variety of sexually explicit and degrading images with links to pornographic videos. The Complainant argues that the Respondent’s current “passive holding” of the Domain Name does not prevent a finding of bad faith, and a panel must look at the totality of the circumstances to determine whether a respondent is acting in bad faith. The Complainant contends that the fact that the Respondent only registered the Domain Name after the Complainant failed to renew its own registration does not negate Respondent’s bad faith behavior.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the proceeding

Paragraph 11(a) of the Rules provides that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

Because the language of the Registration Agreement for the Domain Name is Russian, the default language of the administrative proceeding would be Russian. However, the Complainant requested that the language of the proceeding be English because requiring translation of the Complaint and annexes to the Complaint from English to Russian would subject the Complainant to disproportionate expense for translation services and would cause undue delay and inconvenience.

Previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. “Such scenarios include … (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, … (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint...”.¹

The Panel finds that under the circumstances of this case English is an appropriate language of this proceeding. Specifically, the Panel finds that it is likely that the Respondent understands English. First, the Respondent registered the Domain Name comprised of the Complainant’s trademark AVERITT, which has no meaning in Russian, and the English word “air”. Second, the Respondent selected the Domain Name with Latin, rather than Cyrillic, characters. Third, the Respondent was using the Domain Name to direct to a pornographic website with mostly Polish text and some English references.

In addition, the Respondent had ample opportunity to object to the Complainant’s request for English to be the language of this administrative proceeding, but failed to do it. The Center notified the Parties in both Russian and English of the potential language issue, providing the Respondent with an opportunity to comment on or object to any such language request that may be made by the Complainant.

Therefore, to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving the present dispute, the Panel will conduct this administrative proceeding in English.

6.2. Discussion and Findings

Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

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

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

A. Identical or Confusingly Similar

Under the first UDRP element, the Complainant is required to prove that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.

The Complainant has established its rights in the AVERITT Marks by submitting copies of various trademark registrations. Pursuant to section 1.2.1 of the WIPO Overview 3.0, “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”.

It is well established that the test for confusing similarity under the first UDRP element “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.”² “Where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”³ “Where trademark is recognizable within the disputed domain name, the addition of other terms … would not prevent finding of confusing similarity.”⁴

Here, the Domain Name consists of the Complainant’s AVERITT trademark, the word “air” and gTLD suffix “.com”. A side-by-side comparison of the Domain Name shows that the Domain Name incorporates the Complainant’s trademark in its entirety and the AVERITT trademark is easily recognizable in the Domain Name. As a result, the addition of the word “air” does not prevent finding of confusing similarity. The Domain Name incorporates the Complainant’s AVERITT AIR mark in its entirety. The addition of the gTLD “.com” is disregarded under the confusing similarity test.

Thus, the Domain Name is identical or confusingly similar to the Complainant’s AVERITT Marks and the first element of the UDRP has been satisfied.

B. Rights or Legitimate Interests

Under the second UDRP element, the Complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the Respondent.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant relies on the following arguments to support its contention:

-the Respondent is not, and has never been a licensee or franchisee of the Complainant;

-the Respondent has never been authorized by the Complainant to register or use the Complainant’s AVERITT Marks or to apply for or use any domain name incorporating the marks;

- the Respondent is not commonly known by the Domain Name. Neither “Averitt” nor “Averitt Air” is the Respondent’s name, and the Respondent is not, and has never been commonly known as “Averitt” or “Averitt Air”;

- the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, or in a legitimate noncommercial or fair manner;

- previously, the Respondent used the Domain Name to direct to a website with explicit thumbnail images linking to a variety of pornographic videos under the title “Free porn movies – Russian teen porn” and the Respondent derived no rights or legitimate interests from using the Complainant’s trademark to divert Internet users to pornographic websites;

- even assuming that the Respondent had been engaged in legitimate business activities related to the marketing and promotion of lawful, adult content, there is no apparent or legitimate reason for the Respondent’s selection of a domain name comprised of the AVERITT and AVERITT AIR trademarks for a Polish website advertising pornographic videos;

-the Respondent’s opportunistic registration after the Complainant inadvertently allowed its own registration to expire serves as additional evidence the Respondent has no rights or legitimate interests in respect of the Domain Name.

After having considered the totality of evidence and reviewed the Complainant’s submissions, the Panel finds that the Complainant’s assertions are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Panel also finds that the Complainant’s interpretation of the circumstances of the case is supported by the previous UDRP decisions. Other UDRP panels have recognized that no rights or legitimate interests derive from using another’s trademark to divert Internet users to pornographic websites. See, e.g., Andrey Ternovskiy dba Chatroulette v. Protection of Private Person / Aleksandr Katkov, WIPO Case No. D2017-0381 (finding the respondent’s use of the domain name <chatroulettelolz.com> to redirect Internet users to pornographic websites “should and could not be considered a bona fide offering of goods or services”); L’Oréal v. Robert Caceres, Dollarviews, WIPO Case No. D2015-1200 (finding that use of a domain name for a website displaying pornographic videos “does not constitute an example of rights and legitimate interests as per paragraph 4(c) of the Policy”); Neste Oil Oyj v. Nesin Dmitry / Privacy Protection Service INC, WIPO Case No. D2014-0883 (noting that “pornographic content of the Respondent’s website ought to be regarded as a proof of lacking right or legitimate interest”).

The Panel notes that it cannot give any consideration to the Complainant’s contention of the Respondent’s opportunistic registration of the Domain Name, because the Complainant provided no evidence of its prior ownership of the Domain Name.

Once the complainant has made out the prima facie case, the respondent carries the burden of producing evidence demonstrating it has rights or legitimate interests in the domain name. Where the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.

Because the Respondent has failed to rebut the Complainant’s case, the Panel holds that the second element of the UDRP has been satisfied.

C. Registered and Used in Bad Faith

Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.

Pursuant to paragraph 4(b) of the UDRP, any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on the respondent’s website or location.

Based on the totality of evidence, the Panel concludes that the Respondent registered and is using the Domain Name in bad faith. It is well-established that non-use of a domain name does not prevent finding of bad faith. “[P]anelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding”. In similar situations, UDRP panelists look into the totality of circumstances in a specific case, including the following: “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”

Here, the Complainant’s trademark registrations for the AVERITT Marks predate the Domain Name registration by the Respondent. It is more likely than not that the Respondent knew about the Complainant’s rights in the AVERITT Marks.

Currently, the Domain Name does not point to a website. However, in the past, the Domain Name used to direct a website featuring a variety of sexually explicit and degrading images with links to pornographic video. Therefore, it is likely, that the Respondent used the Domain Name to intentionally attract, for commercial gain, Internet users to his website, by creating likelihood of confusion with the Complainant’s mark. See Red Bull GmbH v. Whois Agent, Domain Protection Services, Inc. / esco escortlar, escort sitesi, WIPO Case No.D2017-1639 (finding the respondent’s use of the domain for a pornographic website constituted “a strong indication of bad faith registration and use,” because it showed respondent’s main purpose was “to create a likelihood of confusion among customers and/or to tarnish the Complainant’s RED BULL trademark for commercial gain or any other illegitimate benefit”); Bank of Jerusalem Ltd. v. Shek Cheung Chung, WIPO Case No. D2017-1153 (finding bad faith where the domain resolved to a website “at

which adult content and links to websites at which pornographic contact [was] being offered, tarnishing Complainant and its trademark, and for which Respondent [was] likely receiving commercial gain”).

The following circumstances further support finding of the Domain Name bad faith registration and use: 1) the Respondent failure to respond to the Complainant’s cease and desist letter; 2) the Respondent’s failure to submit a response in this case or to provide any evidence of good faith registration and use; and 3) the Respondent concealing his identity.

All these factors cumulatively produce an overwhelming inference of bad faith registration and use and therefore the third element of the UDRP has been proven.

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 Domain Name <averittair.com> be transferred to the Complainant.

Olga Zalomiy
Sole Panelist
Date: March 27, 2018

¹Section 4.5.1, Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

²Section 1.7, WIPO Overview 3.0.

³ Id.

⁴Section 1.8, WIPO Overview 3.0.