United States Postal Service v. Martin Cohn
Complainant is United States Postal Service (“Complainant”), represented by Nathaniel Edwards of Lewis Roca Rothgerber LLP, Arizona, United States. Respondent is Martin Cohn (“Respondent”), Missouri, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <uspostalinspectors.com> and <uspsoig.com> registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 6, 2015; the Forum received payment on February 6, 2015.
On Feb 9, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <uspostalinspectors.com> and <uspsoig.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, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2015 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@uspostalinspectors.com, postmaster@uspsoig.com. Also on February 10, 2015, 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 March 16, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 names be transferred from Respondent to Complainant.
Complainant’s Contentions
A. <uspostalinspectors.com>
a. Complainant uses the U.S. POSTAL INSPECTOR mark to identify its services relating to conducting business investigations for fraud, waste and criminal activity and police protection services, namely, protection of postal employees, real and personal property; criminal activity investigations, research and consultation related thereto. Complainant has registered the U.S. POSTAL INSPECTOR mark with the likes of the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,529,123, registered May 13, 2014).
b. Policy ¶ 4(a)(i)
i. The <uspostalinspectors.com> domain name is confusingly similar to the U.S. POSTAL INSPECTOR mark.
c. Policy ¶ 4(a)(ii)
i. Respondent has not been commonly known by the disputed domain name. Further, Respondent is not sponsored by or legitimately affiliated with Complainant in any way.
ii. Respondent is not using the disputed domain name to provide a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Respondent uses the <uspostalinspectors.com> domain name which resolves to a blank page which constitutes an inactive holding.
d. Policy ¶ 4(a)(iii)
i. Respondent is using the <uspostalinspectors.com> domain name in bad faith. Respondent had actual knowledge of Complainant’s rights in the U.S. POSTAL INSPECTOR mark at the time the disputed domain name was registered.
B. <uspsoig.com>
a. Complainant uses the USPS mark to identify its services as it relates to sorting, handling, and receiving packages, envelopes, and letters. Complainant has registered the USPS mark with the USPTO (e.g., Reg. No. 2,423,574, registered Jan. 23, 2001).
b. Policy ¶ 4(a)(i)
i. The <uspsoig.com> domain name is confusingly similar to the USPS mark.
c. Policy ¶ 4(a)(ii)
i. Respondent has not been commonly known by the disputed domain name. Further, Respondent is not sponsored by or legitimately affiliated with Complainant in any way.
ii. Respondent is not using the <uspsoig.com> domain name to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Respondent uses the disputed domain name to redirect Internet users to Complainant’s official website at <uspsoig.gov>.
d. Policy ¶ 4(a)(iii)
i. Respondent is using the disputed domain name in bad faith. Respondent had actual knowledge of Complainant’s rights in the USPS mark at the time the disputed domain name was registered.
Respondent’s Contentions
Respondent did not submit a Response.
1. Respondent’s <uspostalinspectors.com> and <uspsoig.com> domain names are confusingly similar to Complainant’s U.S. POSTAL INSPECTOR mark.
2. Respondent does not have any rights or legitimate interests in the <uspostalinspectors.com> and <uspsoig.com> domain names.
3. Respondent registered or used the <uspostalinspectors.com> and <uspsoig.com> domain names 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(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.”).
Complainant claims to own the U.S. POSTAL INSPECTOR mark through its trademark registrations with the USPTO (e.g., Reg. No. 4,529,123, registered May 13, 2014). The Panel determines that such registrations confer rights in the mark dating back to September 19, 2013, the date on which Complainant first filed for trademark protection with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). The Panel notes that Respondent’s February 21, 2005 registration of the <uspostalinspectors.com> domain name predates Complainant’s earliest USPTO filing. Previous panels have found, however, that a complainant does not need to own a valid trademark registration in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i). Instead, a complainant may establish its rights in the mark through common law rights. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Previous panels have held that a complainant may establish common law rights in a trademark through evidence such as the manner and amount of promotion of goods available under the mark, the extent of complainant’s use of the mark, and a degree of consumer recognition, all of which contribute to the establishment of a secondary meaning in a mark. Complainant urges that it has used the U.S. POSTAL INSPECTOR mark in connection with business investigations for fraud, waste, and criminal activity as well as police protection services, namely, protection of postal employees, real and personal property; criminal activity investigations, research and consultation related thereto since at least 1971. See Compl., at Attached Ex. 10 (Dilley Aff.). The Panel determines that Complainant has established common law rights in the U.S. POSTAL INSPECTOR mark for the purposes of Policy ¶ 4(a)(i). See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
Complainant argues that the <uspostalinspectors.com> domain name is confusingly similar to Complainant’s U.S. POSTAL INSPECTOR mark. Specifically, Complainant asserts that the disputed domain name is essentially identical to the U.S. POSTAL INSPECTOR mark. The only difference being the omission of spaces and punctuation, and the addition of an “s” at the end. Complainant also contends that the addition of the generic top-level domain (“gTLD”) is irrelevant to the confusingly similar analysis. Previous panels have affirmed such arguments. Panels have found that such alterations to marks do not rebut an assertion of confusing similarity under Policy ¶ 4(a)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees that the <uspostalinspectors.com> domain name is confusingly similar to the U.S. POSTAL INSPECTOR mark because the elimination of spacing and punctuation, the addition of an “s”, and the addition of a gTLD are insufficient to an analysis of Policy ¶ 4(a)(i).
Complainant also claims to own the USPS mark through trademark registrations with the USPTO (e.g., Reg. No. 2,423,574, registered Jan. 23, 2001). The Panel determines that such registrations confer rights in the mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Complainant claims to use the USPS mark in connection with its business in handling and receiving packages, envelopes, and letters, among other things. See Compl., at Attached Ex. 10. Complainant also asserts that it has registered <usps.com> (registered July 10, 1997) in conjunction with its official website. Id. The Panel agrees that Complainant’s registration of the USPS mark with the USPTO evinces rights in the mark for purposes of Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant argues that the <uspsoig.com> domain name is confusingly similar to the USPS mark as the disputed domain name merely adds the acronym “oig” and the gTLD “.com.” Complainant urges that the “oig” acronym stands for “Office of Inspector General” which is a common and well-known abbreviation. See Compl., at Attached Ex. 10. Further, the Panel notes that USPSOIG is an acronym of Complainant’s UNITED STATES POSTAL SERVICE OFFICE OF INSPECTOR GENERAL mark registered with the likes of the USPTO (e.g., Reg. No. 3,825,155, registered July 27, 2010), which evinces rights in the mark. The Panel agrees that the addition of the acronym “oig” and the gTLD “.com” to Complainant’s USPS mark does not negate the confusing similarity of the <uspsoig.com> domain name per Policy ¶ 4(a)(i). See Victoria’s Secret v. Plum Promotions, FA 96503 (Nat. Arb. Forum Feb. 27, 2001) (“The mere addition of the generic term “tv” does not reduce the likelihood of confusion under Policy 4(a)(i).”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the <uspostalinspectors.com> and <uspsoig.com> domain names. Complainant urges that Respondent is not commonly known by the disputed domain name or any variant of U.S. POSTAL INSPECTOR or USPS. Further, Complainant asserts that it has never given Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of Complainant’s marks. The Panel notes that the WHOIS information merely lists “Martin Cohn” as registrant of the disputed domain names. As Respondent has failed to add any evidence for the Panel’s consideration, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain names per Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Further, Complainant claims that Respondent is not making a bona fide offering of goods or services through the disputed domain names, nor a legitimate noncommercial or fair use. Complainant contends that the disputed domain names are used by Respondent to trade off Complainant’s marks to gain advertising revenue and/or reselling the domain names at a premium to Complainant or a third party; additionally, Complainant contends that the <uspspoig.com> domain name redirects users to Complainant’s official site. See Compl., at Attached Exs. 3, 10. Previous panels have found that respondents’ use of disputed domain names to advertise or trade off complainants’ marks, especially by redirecting Internet users to Complainant’s official websites are not a bona fide offering of goods or services per Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Nat. Arb. Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). This Panel agrees that Respondent’s use of confusingly similar domain names to gain advertising revenue and/or resell the disputed domain names to Complainant or a third party, as evidenced by the redirection to Complainant’s official website, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant argues that because Respondent is involved in a case in which multiple domain names that infringe upon Complainant’s marks, this is evidence of a pattern of bad faith registration per Policy ¶ 4(b)(ii). Past panels have found a bad faith pattern with regards to two disputed domain names under Policy ¶ 4(b)(ii). See YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark). The Panel here agrees that Respondent’s registration of multiple domain names constitutes bad faith per Policy ¶ 4(b)(ii).
Complainant believes that Respondent is using the disputed domain names for its own commercial gain by creating a likelihood of confusion as to its relationship with Complainant and intentionally diverting Internet users to its own website. Complainant believes that such actions indicate that Respondent is acting in bad faith under Policy ¶ 4(b)(iv). Previous panels have agreed with this argument. See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website). As such, the Panel finds that Respondent’s behavior is evidence of bad faith under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the U.S. POSTAL INSPECTION SERVICE and USPS marks prior to registration of the domain names because of Complainant's widespread use of the mark, its trademark registrations with the USPTO, and because Respondent uses the disputed domain names to redirect confused Internet users to Complainant’s own website. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
Lastly, Complainant argues that Respondent’s use of the domain names to redirect Internet users to Complainant’s official website is evidence of bad faith under Policy ¶ 4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Nat. Arb. Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”). The Panel agrees that Respondent’s use of the domain names to redirect Internet users to Complainant’s own site is evidence of bad faith 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 <uspostalinspectors.com> and <uspsoig.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 27, 2015
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