United Parcel Service of America, Inc. v. Irving Herrera / Bryan Jones
Claim Number: FA2002001881841
Complainant is United Parcel Service of America, Inc. (“Complainant”), represented by Sabina A. Vayner of Greenberg Traurig, LLP, Georgia, USA. Respondent is Irving Herrera / Bryan Jones (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names here at issue are <upshempdelivery.com> and <hempdeliveryups.com>, both registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 3, 2020; the Forum received payment on February 3, 2020.
On February 5, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <upshempdelivery.com> and <hempdeliveryups.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2020, by which Respondent could file a Response to the Complaint, via e-mail addressed to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, as well as to the attention of postmaster@upshempdelivery.com, postmaster@hempdeliveryups.com. Also, on February 10, 2020, a Written Notice of the Complaint, advising 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 March 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Uniform Domain Name 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 ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, operating under the mark “UPS,” is one of the largest logistics, transportation, shipping, and delivery companies in the world.
Complainant holds a registration for the UPS service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 966,774, registered August 21, 1973), renewed most recently as of June 24, 2013.
Respondent registered the domain name <upshempdelivery.com> on July 9, 2019, and the <hempdeliveryups.com> domain name on July 15, 2019.
Each of the domain names is confusingly similar to Complainant’s UPS mark.
Respondent has not been commonly known by either of the domain names.
Respondent has not been licensed or otherwise permitted by Complainant to use its UPS mark.
Respondent is not using the domain names to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use.
Rather, Respondent fails to make any active use of the domain names.
Respondent does not have rights to or legitimate interests in either of the domain names.
Respondent knew of Complainant’s rights in the UPS mark prior to registering the domain names.
Respondent has registered and uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of either of the domain names; and
(3) the domain names were registered and are being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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 has rights to the UPS service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum August 4, 2015) (finding that a UDRP complainant’s USPTO registrations for a mark sufficiently demonstrated its rights in that mark for purposes of standing to pursue a complaint under Policy ¶ 4(a)(i)).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <upshempdelivery.com> and <hempdeliveryups.com> domain names are each confusingly similar to Complainant’s UPS mark. The domain names incorporate the mark in its entirety, with only the addition of generic terms and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See, for example, Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum January 21, 2016) (finding that confusing similarity existed where a disputed domain name contained a UDRP complainant’s entire mark and differed only by the addition of a generic phrase and a Top Level Domain, the differences between the domain name and the trademark being insufficient to distinguish one from the other for purposes of the Policy.)
See also Trip Network Inc. v. Alviera, FA 914943 (Forum March 27, 2007) (concluding that affixing a gTLD to the mark of another in creating a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in either of the domain names <upshempdelivery.com> and <hempdeliveryups.com>, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the either of the domain name <upshempdelivery.com> and <hempdeliveryups.com>, and that Complainant has not licensed or otherwise authorized Respondent to use the UPS mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Irving Herrera / Bryan Jones,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without any objection from Respondent, that Respondent is not using either of the challenged domain names, <upshempdelivery.com> and <hempdeliveryups.com>, in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use, in that, Respondent fails to make any active use of either of them. Such passive use of the contested domain names over an extended period of time constitutes neither a bona fide offering of goods or services by means of the domain names under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of them under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in them name as provided in those subsections of the Policy. See, for example, Michelin North America, Inc. v. Energie Media Group, FA 451882 (Forum August 7, 2012), a panel there finding that inactive use, or “passive holding,” of disputed domain names by a respondent “permits the inference that [that respondent] lacks rights [to] and legitimate interests in the domain names.”
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s registration and deployment of the <upshempdelivery.com> and <hempdeliveryups.com> domain names tarnishes the reputation of Complainant in the marketplace by implying a close and active connection with the still socially and politically controversial hemp trade, which has the effect of disrupting Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain names. See, for example, U.S. Postal Serv. v. Affirmed Capital, FA 1788296 (Forum June 19, 2019):
Complainant claims that Respondent attempts to tarnish or disrupt Complainant’s business by registering domain names that incorporate Complainant’s EXPRESS MAIL mark and terms related to cannabis products. Registration of a domain name to convey a false and tarnishing message about a complainant’s business constitutes bad faith . . . . Accordingly, the Panel finds that Respondent registered the disputed domain names for the purpose of disrupting Complainant’s business, in bad faith under Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent registered the <upshempdelivery.com> and <hempdeliveryups.com> domain names while knowing of Complainant’s rights in the UPS mark. This further demonstrates Respondent’s bad faith in registering them. See, for example, Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum February 25, 2014) (finding that a respondent had knowledge of a UDRP complainant and its rights in a mark when it registered a confusingly similar domain name, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii)).
See also Yahoo! Inc. v. Butler, FA 744444 (Forum August 17, 2006) (finding bad faith registration of a domain name where a respondent was "well-aware” of a UDRP complainant's rights in a mark at the time it registered a confusingly similar domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <upshempdelivery.com> and <hempdeliveryups.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 16, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page