United Parcel Service of America, Inc. v. Franklin Fennell / militarydodn
Claim Number: FA2011001920060
Complainant is United Parcel Service of America, Inc. (“Complainant”), represented by Sabina A. Vayner, United States. Respondent is Franklin Fennell / militarydodn (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <upsdeliverycompany.com>, registered with NameCheap, Inc.
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 November 9, 2020; the Forum received payment on November 9, 2020.
On November 10, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <upsdeliverycompany.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 November 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 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@upsdeliverycompany.com. Also, on November 16, 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 December 14, 2020, 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 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., operates one of the largest logistics, shipping, and delivery companies in the world. Complainant has rights in the UPS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. 966,774, registered Aug. 21, 1973). Respondent’s <upsdeliverycompany.com> domain name is confusingly similar to Complainant’s UPS mark, only differing by adding the generic terms “delivery” and “company” with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <upsdeliverycompany.com> domain name as it is not commonly known by the disputed domain name and is not an authorized user or licensee of the UPS mark. Additionally, Respondent does not use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass itself off as Complainant, offering competing shipping, delivery, and logistics services.
Respondent registered and uses the <upsdeliverycompany.com> domain name in bad faith as it offers competing services that disrupt Complainant’s business. Additionally, Respondent attempts to pass itself off as Complainant in connection with a phishing scheme using the email connected to the disputed domain name. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the UPS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is United Parcel Service of America, Inc. (Complainant), of Atlanta, GA, USA. Complainant is the owner of domestic and international registrations for the mark UPS, and variations thereof constituting the UPS family of marks. Complainant has continuously used the UPS mark since at least as early as 1927 in connection with its provision of various types of transportation services along with logistics, consulting, insurance, and other related products. Complainant has also provided services on the web at its <ups.com> site since 1992.
Respondent is Franklin Fennell / militarydodn (Respondent), of San Francisco, CA, USA. Respondent’s registrar’s address is listed as Phoenix, AZ, USA. The Panel notes that the disputed domain name was registered on or about May 20, 2020.
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”).
Identical and/or Confusingly Similar
Complainant asserts rights in the UPS mark through its registration with the USPTO. Registration of a mark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of registration with the USPTO (Reg. 966,774, registered Aug. 21, 1973). The Panel here finds that Complainant has rights in the UPS mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <upsdeliverycompany.com> domain name is confusingly similar to Complainant’s UPS mark, only adding the generic terms “delivery” and “company” along with the “.com” gTLD. Addition of generic terms and a gTLD does not necessarily negate any confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Disney Enters. Inc. v. McSherry, FA 154589 (Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). The Panel here finds the disputed domain name is confusingly similar to Complainant’s UPS mark under Policy ¶ 4(a)(i).
Respondent raises no contentions regarding 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 lacks rights and legitimate interests in the <upsdeliverycompany.com> domain name as it is not commonly known by the disputed domain name and is not an authorized user or licensee of the UPS mark. When no response is submitted, relevant WHOIS information may be used to demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, the WHOIS information on record identifies “Franklin Fennell / militarydodn,” and nothing in the record rebuts the Complainant’s contention that it never authorized Respondent to use the UPS mark. The Panel here finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent does not use the <upsdeliverycompany.com> domain name in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair use. Rather, Complainant states that Respondent uses the disputed domain name to pass itself off as Complainant, offering competing shipping, delivery, and logistics services using the UPS mark. Use of a disputed domain name to attempt to pass off as a complainant does not constitute a bona fide offer of goods or services under Policy ¶ 4(c)(i), nor does it equate to a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Furthermore, claiming to sell services that compete with a complainant under the complainant’s mark also fails to equate to either a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“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” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Here, Complainant provides screenshots of the landing page for the disputed domain name, noting the promotion of shipping, delivery, and logistics services akin to those of Complainant. The Panel here finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions regarding Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Registration and Use in Bad Faith
Complainant claims that Respondent registered and uses the <upsdeliverycompany.com> domain name in bad faith as Respondent purports to offer competing services. Offering competing services supports a finding of bad faith disruption of business under Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). Complainant provides screenshots of the resolving webpage for the disputed domain name, which uses Complainant’s UPS mark and promotes shipping, logistics, and delivery services. The Panel here finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant also contends that Respondent registered the <upsdeliverycompany.com> domain name with actual knowledge of Complainant’s rights in the UPS mark. Registration of a disputed domain name with actual knowledge of a Complainant’s rights in a mark displays bad faith under Policy ¶ 4(a)(iii). 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”); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Here, Respondent uses Complainant’s UPS mark and logo to purportedly offer highly similar services to those offered by Complainant. Complainant asserts that Respondent must have registered the disputed domain name with Complainant’s UPS mark in mind. The Panel here finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark and therefore finds bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent raises no contentions regarding Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the applicable ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <upsdeliverycompany.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 28, 2020
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