WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dunshaw, LLC dba Lex Pack & Ship v. REDACTED FOR PRIVACY, NameCheap, Inc. / Ayuk Agbor, Afa Designs Inc.
Case No. D2020-1872
1. The Parties
The Complainant is Dunshaw, LLC dba Lex Pack & Ship, United States of America (“United States”), represented by IPLA, United States.
The Respondent is REDACTED FOR PRIVACY, NameCheap, Inc., United States / Ayuk Agbor, Afa Designs Inc., Cameroon.
2. The Domain Name and Registrar
The disputed domain name <lexpackshipment.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2020. On July 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 20, 2020, 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 the Complainant on July 24, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 27, 2020.
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 the Respondent of the Complaint, and the proceedings commenced on August 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2020. The Respondent1 contacted the Center by email on August 11 and 12, 2020. On August 18, 2020, the Center acknowledged receipt of the Respondent’s communication dated August 12, 2020 and asked the parties if they wished to suspend the proceedings to arrange a settlement. On September 1, 2020, the Center received a communication from the Complainant requesting the Center to proceed with the appointment of a Panel to determine the proceeding. Accordingly, the Center notified the commencement of Panel Appointment on September 4, 2020.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 18, 2020. 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 was established and commenced operating a business providing packing and shipping goods and delivery services in New York in the United States in July 2011. It has done so since then under the name “Lex Pack & Ship” and a device or logo:
Amongst other things, it has premises in Lexington Avenue in New York and an online presence at <www.lexpackandship.com>. It also has had a Facebook account under its name since 2012 and a Yelp account since 2013.
According to the declaration of the Complainant’s founder and operator of the business, the Complainant has annual revenues of USD 950,000 and conducts online advertising. More concretely, the Complainant has some 15,000 active customers. They are located in every state of the United States and around the world in Hong Kong, Poland, Australia, Ireland, Estonia, Germany, Monaco, Czech Republic, France, Portugal, the United Kingdom, and Italy. Approximately 35 per cent of its business is derived from its international customers.
The Complainant has achieved a 5/5 star rating on Facebook; a 4.5/5 rating on Yelp and a 4.6/5 rating on Google.
The disputed domain name was registered by the Respondent on June 11, 2020.
Before the Complaint was filed, the disputed domain name resolved to a website offering packing and shipping services. Amongst other things, the Respondent’s website:
(a) features a “logo” identical to the Complainant’s device save that the wording is “Lex & Ship” with “Worldwide delivery” as the strap line;
(b) states in a prominent banner or headline “Welcome to Lex Pack & Ship”;
(c) contains a further headline “Welcome to LexPacks Shipping Company”;
(d) states that “Lex Pack & Ship” is located at the address in New York which is the Complainant’s address and includes a photograph of the Complainant’s New York storefront;
(e) states “Lex Pack & Ship is fully approved by the US Department of Homeland Security – TSA, as a certified Indirect Air Carrier”.
The “contact us” link on the website redirected to a website at <fedeltylogistics.com>. The content of which was essentially the same as on the website to which the disputed domain name resolved save that references to Lex Pack & Ship and the like were replaced with references to Fedelty Logistics and the Complainant’s device “logo” was not used. The Fedelty Logistics website claimed the business has been operating since 1995 and stated its headquarters is in Chicago in the United States.
According to the Complainant, it has received numerous telephone calls and complaints from the public claiming to have paid money to the Respondent, but not receiving any services. The Complaint includes evidence of two such complaints submitted by email.
In his email on August 12, 2020, the Respondent relevantly stated:
“I have read the proceedings and policies regarding the domain name for lexpackshipment.com, I will like to first apologize for the wrong usage of the domain, as I wasn’t well informed of it’s usage and registration status. I barely understand how to resolve the issue, but will like to give a go ahead to the cancellation or transfer of the domain name to the Complainant, if that is the case.
I have discussed the issue with the Domain Registrar about cancellation and Transfer of the domain name to the Complainant, but it seems there is little or nothing they can do. I urge that the domain name be transferred to the complainant, or cancelled if need be.”
At some point after the Complaint was filed, the website to which the disputed domain name resolved has been taken down.
5. Discussion and Findings
As set out above, the email from the Respondent on August 12, 2020 consents to transfer of the disputed domain name to the Complainant.
There is a longstanding practice under the Policy of panels accepting that an order for transfer is appropriate when consented to by a respondent, either immediately or on a showing of a prima facie case by the Complainant. See e.g.WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 4.10 of the WIPO Overview 3.0 notes:
“a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits. Scenarios in which a panel may find it appropriate to do so include (i) where the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct, (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision, (iv) where there is ambiguity as to the scope of the respondent’s consent, or (v) where the panel wishes to be certain that the complainant has shown that it possesses relevant trademark rights.”
In the present case, the Panel is satisfied that the Complainant has provided sufficient evidence to establish (common law or unregistered) rights in the expression “Lex Pack & Ship”, either alone or with the device element. See WIPO Overview 3.0, section 1.3. In the case of the device composite mark, the verbal element is at least as prominent and significant as the device and is certainly not overtaken or subsidiary to the device component. See WIPO Overview 3.0, section 1.10.
The disputed domain name is confusingly similar to the Complainant’s trademark. It is visually and aurally very close to the Complainant’s trademark.
The Panel is reinforced in both conclusions by the evidence of the public contacting the Complainant to complain that it has not provided them with the services they have paid “it” for.
The Panel notes the apology offered by the Respondent in his email dated August 12, 2020. However, noting:
(1) the Fedelty Logistics business claims to have been operating in the shipping business since 1995; and
(2) the blatant copying of the Complainant’s name and device trademark, including usage of the Complainant’s address and a photograph of the Complainant’s New York storefront,
the Panel considers it both appropriate and necessary to record formally findings based on the above-described record in this case that the Respondent does not have rights or legitimate interests in the disputed domain name and, moreover, has registered and used the disputed domain name in bad faith.
6. 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, <lexpackshipment.com> be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: October 2, 2020
1 As the first-named Respondent appears to be a privacy or proxy service used by the second-named Respondent, for simplicity the Panel will refer to the second-named Respondent simply as the Respondent unless it becomes necessary to distinguish between them.
