DECISION

 

US Bancorp Licensing, Inc. v. United Parcel Service of America, Inc.

Claim Number: FA0111000102616

 

PARTIES

The Complainant is U.S. Bancorp Licensing, Inc., Minneapolis, MN (“Complainant”) represented by Michael L. Gannon, of Fish & Richardson P.C., P.A..  The Respondent is United Parcel Service of America, Inc., Mahwah, NJ (“Respondent”) represented by Keith E. Sharkin, of King & Spalding.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <powertrack.com> and <powertrack.org>, registered with Network Solutions, Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as Panelists in this proceeding.

 

John J. Upchurch, G. Gervaise Davis, III and M. Scott Donahey as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on November 28, 2001; the Forum received a hard copy of the Complaint on November 30, 2001.

 

On November 29, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <powertrack.com> and <powertrack.org> are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On November 30, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 20, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@powertrack.com, postmaster@powertrack.org by e-mail.

 

A timely Response was received and determined to be complete on December 20, 2001.

 

Complainant filed its Additional Written Statement of Complaint on December 26, 2001.  Respondent filed its Additional Written Statement on December 31, 2001.

 

On January 4, 2002, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed John J. Upchurch, G. Gervaise Davis, III and M. Scott Donahey, as Panelists.

 

On January 25, 2002 the Panel entered its Order For Additional Submissions and Extending Time for Rendering Decision.

 

On February 12, 2002 Complainant filed its Additional Submissions under Rule 12 of the UDRP.  On February 27, 2002 Respondent filed its Additional Submission.  On March 4, 2002 Complainant filed its Reply Brief.

 

RELIEF SOUGHT

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Respondent’s <powertrack.com> and <powertrack.org> domain names are confusingly similar to Complainant’s POWERTRACK and POWERTRACK and Design trademarks.

 

Respondent does not have rights or legitimate interests in <powertrack.com> and <powertrack.org>.

 

Respondent registered and used the <powertrack.com> and <powertrack.org> domain names in bad faith.

 

B. Respondent

 

There is no confusing similarity between Complainant’s trademarks and the disputed domain names. 

 

Respondent does have rights or legitimate interests in <powertrack.com> and <powertrack.org>.

 

Respondent did not register the <powertrack.com> and <powertrack.org> domain names in bad faith.

 

FINDINGS

We find for the Complainant.  The subject domain names, <powertrack.com> and <powertrack.org> are identical in every material respect to the trademarks set forth in the Complaint and in which Complainant has rights. 

 

Respondent has failed to demonstrate any rights or legitimate interests in the subject domain names which it registered but is not using.

 

We find that the domain names at issue were registered for the primary purpose of disrupting the business of Complainant, a competitor, and were accordingly registered in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

 

Identical and/or Confusingly Similar

 

Complainant is the owner of ten U.S. trademark and service mark registrations for the mark POWERTRACK and its variations in connection with banking and freight-related services.

 

Respondent's <powertrack.com> and <powertrack.org> domain names are identical to Complainant's mark because they incorporate the entirety of Complainant's mark and merely add “.com” and “.org”, respectively.  The addition of a top-level domain indicator such as “.com” or “.org” does not sufficiently distinguish the domain name in order to create a distinct mark capable of overcoming a claim of identical or confusing similarity.  See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark); see also Amherst v. IFC Corp., FA 96768 (Nat. Arb. Forum Apr. 3, 2001) (finding that Respondent’s domain name <customcommerce.com> is identical to Complainant’s CUSTOM COMMERCE trademark registration).

 

Rights or Legitimate Interests

 

Respondent argues a number of points and facts for the proposition that it registered the domain names in question in good faith and for future use, and that it therefore has rights or legitimate interests in them.  The Panel finds these arguments untenable, especially given the negotiations between the parties, the timing of the registration, and the delaying tactics of Respondent in relationship to Complainant’s several requests that they be signed over to Complainant because they were identical to Complainant’s trademarks.  Furthermore, these arguments of Respondent are all the more untenable when considering the fact that Respondent is even now not using the domain name for any bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and that Respondent has never made use of the disputed domain names since they were first registered by Respondent in September 1999.  It has been held that passively holding a domain name for over a year without constructing a website is not a bona fide use, because mere registration of a domain name is not enough to create legitimate rights and interests.  See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way); see also American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name). In the view of this Panel, passive non-use of a domain name alone might not be sufficient to find a lack of rights, but the combination of facts here convinces us that Respondent has no legitimate claim to the domains at issue and never did.

 

Further, Respondent is not known as <powertrack.com> or <powertrack.org> and has not otherwise demonstrated any rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).

 

Registration and Use in Bad Faith

 

Complainant and Respondent are direct competitors in the fields of supply chain management, e-commerce, and financial services.  This is true now, as it was in September of 1999 when Respondent registered the subject domain names, as is apparent from an examination of the declarations of Complainant’s witnesses and Respondent’s 1999 form 10-K.  We reject the notion that the parties are not competitors; parties do not have to be competitors in all lines of business to be competitors for purposes of the UDRP evidentiary tests.

 

Respondent registered the POWERTRACK domain names during the course of negotiating a “PowerTrack Carrier Agreement” with Complainant.  During the approximately three years of negotiations the parties were in regular contact with one another, during which time Complainant provided Respondent with a variety of promotional literature, marketing materials, and draft agreements, each piece of which bore the POWERTRACK® mark.  Given the extent of communications between the parties prior to Respondent’s registration of the POWERTRACK domain names, it is not credible to conclude that Respondent was not fully aware of Complainant’s POWERTRACK service mark.  The timing and relationship of Respondent’s registration of the POWERTRACK domain names to the parties’ negotiations plainly demonstrate Respondent’s intent to “disrupt the business of a competitor.”  See UDRP § 4(b)(iii)

 

Accordingly, we find that Respondent registered the disputed domain names with the intent to disrupt Complainant's business and prevent Complainant from reflecting its trademark in a corresponding domain name.  This behavior is evidence of bad faith pursuant to Policy ¶ 4(b)(ii).  See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the Complainant's marks suggests that the Respondent, the Complainant’s competitor, registered the names primarily for the purpose of disrupting the Complainant's business); see also Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of a domain name (by Respondent that incorporates another’s trademark) goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services; it prevents the trade mark owner from reflecting that mark in a corresponding domain name”).

 

DECISION

 

Having established all three elements required under the ICANN policy, the Panel concludes that the requested relief should be granted.

 

Accordingly, it is ordered that the domain names <powertrack.com> and <powertrack.org> be transferred from Respondent to the Complainant.

 

 

Dated: March 13, 2002

 

 

 

 

John J. Upchurch, Chair

 

 

G. Gervaise Davis, III, Panelist

 

 

M. Scott Donahey, Panelist