United States Postal Service v. John Hayes / Easy Print and Design
Claim Number: FA1905001843758
Complainant is United States Postal Service (“Complainant”), represented by Jennifer A. Van Kirk of Lewis Roca Rothgerber Christie LLP, Arizona, USA. Respondent is John Hayes / Easy Print and Design (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eddm.us>, registered with 101domain GRS Limited.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 17, 2019; the Forum received payment on May 17, 2019.
On May 17, 2019, 101domain GRS Limited confirmed by e-mail to the Forum that the <eddm.us> domain name is registered with 101domain GRS Limited and that Respondent is the current registrant of the name. 101domain GRS Limited has verified that Respondent is bound by the 101domain GRS Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 29, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 18, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@eddm.us. Also on May 29, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 20, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, the second oldest department or agency of the United States of America, founded on July 26, 1775, serves millions of customers daily, and sets the global industry standard for mailing and shipping related goods and services. Complainant has rights in the EDDM mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,144,233, registered May 15, 2012). Respondent’s <eddm.us> domain name is confusingly similar to Complainant’s EDDM mark as the domain name incorporates the entirety of the mark with no added distinguishing feature except for the country-code top-level domain (“ccTLD”) “.us.”
Respondent has no rights of legitimate interest in the <eddm.us> domain name in that Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to register any variant of EDDM in a domain name. Nothing in the available evidence indicates that Respondent has rights in a mark identical to the disputed domain name which would serve to satisfy Policy ¶ 4(c)(i). Respondent failed to make a bona fide offering of goods or services or prove a legitimate noncommercial or fair use. Instead, Respondent’s domain name operates to misdirect Complainant’s customers to a website advertising competitive goods and services.
Respondent registered and used the disputed domain name in bad faith by using the <eddm.us> domain name to attract, for commercial gain, users to its own website, and by creating confusion as to the source, sponsorship, or affiliation of the disputed domain name. Respondent had actual knowledge of Complainant’s rights in the EDDM mark based on the goodwill attached to the mark, in addition to Complainant’s exclusive, widespread, and longstanding use of the mark. Furthermore, the fact that a disclaimer appears in small print at the bottom of the website does not absolve the bad faith use of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is United States Postal Service (“Complainant”), of Washington D.C., USA. Respondent is the owner the domestic registration for the mark EDDM, which it has continuously used since at least as early as 2011, in connection with mailing and direct mail marketing services.
Respondent is John Hayes / Easy Print and Design (“Respondent”), of Denver, CO, USA. Respondent’s registrar’s address is listed as Dublin, Ireland. The Panel notes that Respondent registered the disputed domain name <eddm.us> on or about October 7, 2016.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims to have rights in the EDDM mark through its registration with the USPTO. Registration of a mark with the USPTO or other governmental agency is sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its trademark registration with the USPTO for the EDDM mark (e.g. Reg. No. 4,144,233, registered May 15, 2012). The Panel here finds that Complainant has rights in the EDDM mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <eddm.us> domain name is confusingly similar to Complainant’s EDDM mark as Respondent’s domain name incorporates the entirety of the mark with no added distinguishing feature except for the ccTLD “.us.” The addition of a ccTLD to a complainant’s mark fails to distinguish the domain name from the mark. See Thomson Reuters Global Resources v Matthew Krawitz, FA 1548336 (Forum Apr. 21, 2014) (“Respondent adds the country-code top-level domain (“ccTLD”) “.co” to Complainant’s mark in the disputed domain name, which also fails to distinguish the domain name from Complainant’s mark… Accordingly, the Panel finds that Respondent’s <rueters.co> domain name is confusingly similar to Complainant’s REUTERS mark.”). The Panel here finds that Respondent’s <eddm.us> is confusingly similar to Complainant’s EDDM mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <eddm.us> domain name in that Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to register any variant of the EDDM mark in a domain name. Panels have held that a respondent lacks rights or legitimate interests where the respondent was not commonly known by the domain per Policy ¶ 4(c)(iii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Here, Complainant provides the Panel with WHOIS information that identifies Respondent as “John Hayes / Easy Print and Design.” Additionally, Complainant has provided screenshots indicating that the resolving website identifies Respondent as “Catdi Printing”. The Panel here finds that Respondent is not commonly known by the <eddm.us> domain name under Policy ¶ 4(c)(iii).
As Respondent provided no answer to Complainant’s assertions, the Panel finds nothing in the available evidence that indicates Respondent has rights in a mark identical to the disputed domain name, in satisfaction of Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). The Panel here finds that Respondent has failed to show any rights or legitimate interests per Policy ¶ 4(c)(i).
Complainant further argues that Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Instead, Respondent’s <eddm.us> domain name operates to misdirect Complainant’s customers to a website advertising competitive goods or services. Use of a disputed domain name to divert internet users to a website featuring competitive goods and services in not a bona fide offering of goods or services nor a legitimate noncommercial or fair use per Policy ¶ 4(c)(ii) and (iv). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Here, Complainant has provided the Panel with a screenshot of Respondent’s domain name website, which displays Complainant’s mark and purportedly offers competing goods and services. The Panel here finds that Respondent failed to make a bona fide offering of goods or services, or prove a legitimate noncommercial or fair use per Policy ¶ 4(c)(ii) and (iv).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and used the disputed domain name in bad faith by using the <eddm.us> domain name to attract, for commercial gain, users to its own website. Use of a domain name for commercial gain can be evidence of bad faith registration or use per Policy ¶ 4(b)(iv). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Complainant has provided the Panel with a screenshot of Respondent’s domain name that includes offerings of similar shipping services in addition to the prominent display of the EDDM mark. The Panel here finds that Respondent engaged in bad faith registration and use of the disputed domain name per Policy ¶ 4(b)(iv).
Complainant further argues that Respondent had actual knowledge of Complainant’s rights in the EDDM mark prior to registration of the disputed domain name through the goodwill attached to the mark and Complainant’s exclusive, widespread, and longstanding use of the mark. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). The Panel again notes Complainant has provided the Panel with a screenshot of Respondent’s domain name website, which displays Complainant’s mark and purportedly offers competing goods and services. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the EDDM mark thus constituting bad faith registration and use per Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the usTLD Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <eddm.us> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 5, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page