United Parcel Service of America, Inc. v. Yabani Eze / Sugarcane Internet Nigeria Limited
Claim Number: FA2004001892853
Complainant is United Parcel Service of America, Inc. (“Complainant”), represented by Sabina A. Vayner of Greenberg Traurig, LLP, Georgia, USA. Respondent is Yabani Eze / Sugarcane Internet Nigeria Limited (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <unitedpaecelservice.com>, registered with Sav.com, LLC.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 20, 2020; the Forum received payment on April 20, 2020.
On April 24, 2020, Sav.com, LLC confirmed by e-mail to the Forum that the <unitedpaecelservice.com> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.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 April 29, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 2020 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@unitedpaecelservice.com. Also on April 29, 2020, 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 May 21, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, United Parcel Service of America, Inc., is one of the largest logistics, transportation, shipping, and delivery companies in the world. Complainant has rights in the trademark UNITED PARCEL SERVICE based upon its use in commerce beginning in 1927 and its registrations of the mark with the United States Patent and Trademark Office (“USPTO”) dating back to 1949. Respondent’s <unitedpaecelservice.com> domain name, registered on December 6 2019, is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s UNITED PARCEL SERVICE mark, simply substituting the letter “e” for the letter “r” in the word “parcel” and adding the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <unitedpaecelservice.com> domain name. Respondent is not licensed or authorized to use Complainant’s UNITED PARCEL SERVICE mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to resolve to a site which contains pay-per-click advertisements.
Respondent registered and uses the <unitedpaecelservice.com> domain name in bad faith. Respondent is attempting to attract Internet users to its webpage which resolves to pay-per-click advertisements. Additionally, by registering a domain name that incorporates a minor misspelling of Complainant’s UNITED PARCEL SERVICE mark, Respondent is engaged in typosquatting. Finally, Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s rights in the UNITED PARCEL SERVICE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is 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:
(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 and is being used in bad faith.
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 asserts rights in the UNITED PARCEL SERVICE mark based upon its registration of the mark with the USPTO. Registration of a mark with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i)”). Complainant provides copies of its USPTO registration certificates for the UNITED PARCEL SERVICE mark. Therefore, the Panel finds that Complanant has rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <unitedpaecelservice.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s UNITED PARCEL SERVICE mark, with the mere substitution of the letter “e” for the letter “r” in the word “parcel” and the addition of the “.com” gTLD. The substitution of a single letter and the addition of a gTLD may not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy”); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names”). Complainant notes that the only differences between the disputed domain and the mark is the substitution of a single letter and the addition of the “.com” gTLD. Thus, the Panel finds that the disputed domain name is confusingly similar to the UNITED PARCEL SERVICE mark under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the <unitedpaecelservice.com> domain name because Respondent is not authorized or licensed to use Complainant’s UNITED PARCEL SERVICE mark and is not commonly known by the disputed domain name. In considering this issue, WHOIS information can be used to show that a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names”). Additionally, lack of authorization to use a mark can constitute a further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies the registrant as “Yabani Eze/Sugarcane Internet Nigeria Limited” and no information in the record suggests that Respondent is known otherwise or that it is authorized to use the UNITED PARCEL SERVICE mark in any way. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to a website containing pay-per-click advertisements. Use of a disputed domain name to resolve to a site displaying pay-per-click advertisements generally does not qualify as a bona fide offering of goods or services. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering”). Here, Complainant has provided screenshots of Respondent’s web page which displays a commercial parking page that includes sponsored links to, among other goods and services, “Package Delivery Tracking Software”, “Email and SMS Notification System”, and “Job Posting Board,” Respondent has not filed a Response or made any other submission in this case. In light of the available evidence, the Panel agrees with Complainant that Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the UNITED PARCEL SERVICE mark when registering the disputed domain name. Actual knowledge of a complainant’s rights in a mark at the time of registration of a domain name can be assumed based upon the fame of the asserted mark or it may be shown by use of a confusingly similar domain name in direct competition with a complainant and show bad faith per Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark”). Also see iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues that Respondent must have had actual knowledge of Complainant’s rights due to the fame of the UNITED PARCEL SERVICE mark, Respondent’s use of the mark in its entirety, and Complainant’s long-standing use of the UNITED PARCEL SERVICE mark. In support thereof, Complainant submits into evidence copies of various articles, polls, and brand rankings showing the strong reputation of the UNITED PARCEL SERVICE mark. The Panel considers this sufficient evidence of the fame of Complainant’s mark. This, combined with the uniqueness of the mark, the minor mis-spelling used in the disputed domain name, and the content of the links displayed at Respondent’s website, the Panel presumes that Respondent had actual knowledge of Complainant’s mark at the time it registered the disputed domain name.
Next, Complainant argues that Respondent has registered and uses the <unitedpaecelservice.com> domain name in bad faith. Specifically, Complainant alleges that Respondent uses the disputed domain name to misdirect users to a commercial website which hosts advertisements and links to third-party sites. Using a confusingly similar domain name to commercially benefit via, pay-per-click links can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA 1543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees”); see also Vivint, Inc. v. Online Management, FA 1549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). As previously mentioned, Complainant has provided screenshots of Respondent’s website which features advertisements and links to third-party websites that are directly in, or tangentially related to Complainant’s field of business. The Respondent has not participated in this case and so it does not dispute Complainant’s assertions. Thus, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Furthermore, Complainant contends that Respondent engages in typosquatting. Misspelling of a complainant’s mark in order to commercially benefit from a confusing similarity between a disputed domain name and the mark can be evidence of bad faith per Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii)”). The Panel is reminded Complainant asserts that Respondent merely substitutes the letter “e” for the letter “r” in the word “parcel” of the UNITED PARCEL SERVICE mark. Thus, the Panel finds that Respondent’s substitution of a single letter in Complainant’s mark constitutes typosquatting and that this further supports the finding of bad faith by Respondent per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <unitedpaecelservice.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: May 22, 2020
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