United Parcel Service of America, Inc. v. United
Claim Number: FA0707001026907
Complainant is United Parcel Service of America, Inc. (“Complainant”), represented by Larry
C. Jones, of Alston & Bird, LLP, Bank of America
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <uk-ups.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On July 3, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 23, 2007 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <uk-ups.com> domain name is confusingly similar to Complainant’s UPS mark.
2. Respondent does not have any rights or legitimate interests in the <uk-ups.com> domain name.
3. Respondent registered and used the <uk-ups.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, United Parcel
Service of America, Inc., is a
Complainant also holds more
than 2,000 trademark registrations throughout the world based on its UPS
mark. Specifically, Complainant has
operated in the
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
As Complainant’s UPS mark is registered with the USPTO, as
well as with the UKIPO, Complainant has established rights in the mark under
Policy ¶ 4(a)(i). See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
domain name simply adds the geographic term “uk” along with a hyphen
to Complainant’s mark and appends the mark with the generic top-level domain
(“gTLD”) “.com.” These additions to
Complainant’s UPS mark are insufficient to create a new, distinct mark. Therefore, Complainant has satisfied the
further requirement under Policy ¶ 4(a)(i) that the disputed domain name be
confusingly similar to Complainant’s mark.
See Health Devices Corp. v.
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) requires that Complainant present a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant has met its burden by asserting that Respondent holds no rights or legitimate interests in the disputed domain name. Therefore, the burden shifts to Respondent to show that rights exist. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
By not submitting a Response in this case, Respondent has failed to meet its burden of proof under Policy ¶ 4(a)(ii). When a Respondent fails to submit a Response, the presumption is that Respondent has failed to establish rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”) Although not required, the Panel will now examine the evidence to determine if there is anything further that will establish Respondent’s rights and legitimate interests in the disputed domain name under Policy ¶ 4(c).
Respondent’s use of the disputed domain name in connection with a fraudulent scheme for financial gain and to obtain Internet users’ private information, without Complainant’s authorization to use its mark, is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. Therefore, the Panel finds that Respondent has no rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Although the WHOIS record could lead to the conclusion that Respondent,
listed as “United Parcel Service
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has adequately shown that the disputed domain name is likely to cause confusion with its mark. In fact, the evidence confirms that Respondent registered and used the disputed domain in coordination with Complainant’s mark and emblem, without its authorization, with the intent to confuse Internet users by giving them the false impression that Respondent was Complainant or was, at least, officially associated with Complainant. Respondent utilized this confusion for commercial gain primarily through the use of sending e-mails to induce people into wiring Respondent money. The Panel finds Respondent’s conduct consistent with a finding that it registered and used the domain name in bad faith under Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion."); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).
The Panel would also like to note its concern that Respondent’s attempt to gain further personal information, especially passport information, may have been used in the fraudulent scheme to further accommodate a “phishing scheme.” See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“‘Phishing’ involves the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit cards, passwords, social security numbers and other personal information to the ‘phishers’ who intend to use such information for fraudulent purposes.”); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”). “Phishing” is further evidence of Respondent’s bad faith registration and use of the disputed domain name. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to fraudulently acquire personal information from the complainant’s clients); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that the respondent registered and used the domain name in bad faith because it was used to fraudulently acquire personal information from the complainant’s potential associates).
The Panel concludes that Complainant has satisfied 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 <uk-ups.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 9, 2007
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