United States Postal Service v. Derek Crawley / ThinkCrawley
Claim Number: FA1509001639516
Complainant is United States Postal Service (“Complainant”), represented by Nathaniel W. Edwards of Lewis Roca Rothgerber LLP, Arizona, USA. Respondent is Derek Crawley / ThinkCrawley (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <moversguide.co>, registered with NameCheap, Inc.
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 September 25, 2015; the Forum received payment on September 25, 2015.
On September 28, 2015, NameCheap, Inc. confirmed by e-mail to the Forum that the <moversguide.co> 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 September 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 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@moversguide.co. Also on September 29, 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 October 26, 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 name be transferred from Respondent to Complainant.
A. Complainant:
1. Policy ¶ 4(a)(i) - Complainant has rights in the MOVER’S GUIDE mark through its two registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,614,173, registered on September 3, 2002; Reg. No. 2,603,119, registered July 30, 2002). See Compl., at Attached Ex. 7. Respondent’s <moversguide.co> domain name is identical to the MOVER’S GUIDE mark because it contains the entire mark, less the apostrophe and space, combined with the country-code top-level domain (“ccTLD”) “.co.”
2. Policy ¶ 4(a)(ii) - Respondent is not commonly known by the <moversguide.co> domain name because Respondent was not so known before the domain was registered. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving webpage is designed to deceive Internet users by offering services in competition with Complainant.
3. Policy ¶ 4(a)(iii) - Respondent uses the <moversguide.co> domain name in bad faith because the resolving website is used to deceive Internet users into paying Respondent a higher cost for a service that Complainant offers. Respondent registered the <moversguide.co> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the MOVER’S GUIDE mark.
B. Respondent:
1. Respondent has failed to submit a formal Response.
1. Respondent’s <moversguide.com> domain name is confusingly similar to Complainant’s MOVER’S GUIDE mark.
2. Respondent does not have any rights or legitimate interests in the <moversguird.com> domain name.
3. Respondent registered or used the <moversguide.com> domain name 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 alleges it has rights in the MOVER’S GUIDE mark through its two registrations with the USPTO (Reg. No. 2,614,173, registered on September 3, 2002; Reg. No. 2,603,119, registered July 30, 2002). Complainant has provided this registration in Exhibit 7. Past panels have found that registrations with the USPTO suffice to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has rights in the MOVER’S GUIDE mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <moversguide.co> domain name is identical to the MOVER’S GUIDE mark because it contains the entire mark, less the apostrophe and space, combined with the ccTLD “.co.” Past panels have found that spaces and punctuation cannot be displayed in domain names and that ccTLDs are irrelevant. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Audigier Brand Mgmt. Grp., LLC v. bai wentao, FA 1286108 (Nat. Arb. Forum Nov. 16, 2009) (holding that even after the “addition of a ccTLD the disputed domain name is still identical to Complainant’s mark.”). As such, the Panel finds that Respondent’s <moversguide.co> domain name is identical to Complainant’s MOVER’S GUIDE 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), 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 alleges that Respondent is not commonly known as the <moversguide.co> domain name. Complainant offers evidence, in Exhibits 5 & 8, that Respondent does business as “Address Change LLC dba Movers Guide,” but notes that such LLC was incorporated on July 7, 2015. Past panels have held that despite appearances of being known by a domain, a respondent that has not established such prior to use of the domain is not so commonly known under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”). Therefore, the Panel finds that Respondent is not commonly known by the <moversguide.co> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent fails to use the <moversguide.co> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the resolving website to deceive Internet users by offering services in competition with Complainant. Complainant has attached Exhibit 4, showing the resolving webpage, in which the MOVER’S GUIDE mark is displayed. Complainant has also provided a secondary website in Exhibit 5, linked to by the <moversguide.co> domain name, which purports to offer change of address services, in competition with Complainant, for $39.95. Past panels have found competitive use to show a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). The Panel finds such use here, and the Panel finds that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant alleges that Respondent uses the <moversguide.co> domain name in bad faith because the resolving website is used to deceive Internet users into paying Respondent a higher cost for a service that Complainant offers. Complainant has attached Exhibit 4, showing the resolving webpage, in which the MOVER’S GUIDE mark is displayed. Complainant has also provided a secondary website in Exhibit 5, linked to by the <moversguide.co> domain name, which purports to offer change of address services, in competition with Complainant, for $39.95. Complainant urges that this is done in a deceptive manner, designed to foster an association, in the minds of Internet users, between Complainant and the domain name. Past panels have found bad faith use under Policy ¶ 4(b)(iv) when websites use domain names identical to marks, while offering competing services in a manner likely to confuse Internet users with the respect to the source. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). The Panel finds such behavior by Respondent here, and the Panel finds that Respondent uses the <moversguide.co> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant alleges that Respondent registered the <moversguide.co> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the MOVER’S GUIDE mark. Complainant urges that Respondent’s very use of the resolving website, including displaying the MOVER’S GUIDE mark suffices to show actual knowledge in Complainant’s rights. Past panels have found that when respondents have actual knowledge of a complainant’s rights in a mark, the registration of a confusingly similar domain name is done in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the MOVER’S GUIDE mark at the time of registration, and the Panel finds that Respondent registered the <moversguide.co> domain in bad faith under 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 <moversguide.co> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 9, 2015
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