United States Postal Service v. PROXY PROTECTION LLC
Claim Number: FA1612001709298
Complainant is United States Postal Service (“Complainant”), represented by Jennifer A. Van Kirk of Lewis Roca Rothgerber Christie LLP, Arizona, USA. Respondent is PROXY PROTECTION LLC (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eddmuspostal.com>, registered with DreamHost, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 22, 2016; the Forum received payment on December 22, 2016.
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On December 28, 2016, DreamHost, LLC confirmed by e-mail to the Forum that the <eddmuspostal.com> domain name is registered with DreamHost, LLC and
that Respondent is the current registrant of the name. DreamHost, LLC has verified that Respondent is bound by the DreamHost, 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 December 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2017 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@eddmuspostal.com. Also on December 29, 2016, 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.
A timely Response was received and determined to be complete on February 13, 2017.
On February 21, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Carol Stoner, Esq., as Panelist.
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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.
Complainant requests that the domain name <eddmuspostal.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant, United States Postal Service, is an Independent Establishment of the Executive Branch of the Government of the United States. Complainant serves millions of customers daily and sets the global industry standard for mailing and shipping related goods and services. In connection with its business, Complainant holds United States Patent and Trademark Office (“USPTO”) registrations for both the EDDM mark (Reg. No. 4,144,233, registered May 15, 2012) and the U.S. POSTAL SERVICE mark (Reg. No. 2,709,131, registered Apr. 22, 2003), establishing rights in the marks. Respondent’s <eddmuspostal.com> is confusingly similar because it combines the marks, eliminating spacing, punctuation, and “SERVICE,” and adding the “.com” generic top-level domain (“gTLD”).
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Respondent has no rights or legitimate interests in <eddmuspostal.com>. Complainant has never given Respondent permission to use the marks in any context, and Respondent is not commonly known by <eddmuspostal.com>. Respondent uses the domain name to engage in competitive mail services while incorporating a logo that uses features of Complainant’s logo and trade dress. See Compl., at p. 8 (comparison). Respondent has not engaged in any bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent registered and used <eddmuspostal.com> in bad faith. Respondent incorporates confusingly similar content and offers competing services, attracting Internet users for commercial gain under Policy ¶ 4(b)(iv). Respondent also had actual knowledge when registering and using the domain name. Further, the privacy service Respondent has used shows bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Complainant’s representatives work with Respondent to develop the EDDM service and website.
Respondent built the website to handle referrals given to it by Complainant. Respondent does not compete with Complainant. Instead, Respondent wants to be placed on Complainant’s website as a resource for Complainant’s EDDM services. Respondent partnered with Complainant to offer EDDM services a year before the domain name was acquired. Respondent prints, designs, and delivers finished mail pieces under EDDM mailing guidelines, which is a bona fide offering of goods or services.
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Respondent has been a business partner for over twenty-five years, and has a Business Alliance Account with USPS account managers. From registration, the domain name has been used for better search engine optimization and streamlining the search for EDDM.
(1) the domain name <eddmuspostal.com> 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<eddmuspostal.com> domain name; and
(3) the domain name has been registered and is being used 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
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(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.
Complainant holds USPTO registrations for both the EDDM mark (Reg. No. 4,144,233, registered May 15, 2012) and the U.S. POSTAL SERVICE mark (Reg. No. 2,709,131, registered Apr. 22, 2003), establishing rights in the marks. USPTO registrations confer rights. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). The Panel, therefore concludes that Complainant has established rights in the EDDM and USPTO marks under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <eddmuspostal.com> is confusingly similar because it combines the marks, eliminating spacing, punctuation, and “SERVICE,” and adding the “.com” gTLD. Such alterations have been deemed confusingly similar. See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (“The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i).”); see also VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).); see also Memoirs, Inc. v. Patel, FA 98244 (Forum Aug.
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28, 2001) (finding the domain name to be confusingly similar where a period was omitted from the I.MEMOIRS mark and the gTLD “.com” was added); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). For the abovestated reasons, Panel concludes that <eddmuspostal.com> is confusingly similar to the EDDM and U.S. POSTAL SERVICE marks 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 that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
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Complainant has made a convincing argument that Respondent has no rights or legitimate interests in <eddmuspostal.com>. Complainant asserts it has never given Respondent permission to use the marks in any context, and Respondent is not commonly known by <eddmuspostal.com>. Where a Respondent does not argue it is known by the terms of the domain name, the WHOIS information is seen as pertinent in determining Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Here, Complainant had not authorized Respondent to use the domain name, and the WHOIS lists “PROXY PROTECTION LLC” as registrant.
Next, Complainant argues that Respondent uses the domain name to engage in competitive mail services while incorporating a logo that uses features of Complainant’s logo and trade dress. See Compl., at p. 8 (comparison). Where a Respondent offers competing services and incorporates design elements of a complainant’s offerings, no bona fide offering or legitimate use is established. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the
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complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). See Complainant’s Exhibit 7, consisting of a screenshot of Respondent’s website, evidencing competing services and design elements of a Complainant’s offerings. Therefore, the Panel rules that Respondent has not engaged in any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant has therefore made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Respondent has subsequently failed to satisfy its burden to show that it does have rights or legitimate interests.
The Panel therefore concludes that Respondent lacks rights and legitimate interests pursuant to Policy ¶4c(ii).
Registration and Use in Bad Faith
Complainant has offered credible evidence that Respondent has registered <eddmuspostal.com> in bad faith. Respondent registered the domain
name in May, 2013, at least two years after Complainant first used its EDDM marks and more than four decades after Complainant first used its UNITED STATES POSTAL SERVICE marks. And Respondent states in its Response that “We have been partnering with the USPS to offer EDDM services a year before the domain name was acquired.”
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This evidence shows that Respondent had actual knowledge of Complainant’s marks when Respondent registered its domain name. Actual knowledge is shown through the use made of a domain name, along with the arrangement of a domain name itself. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, the Panel concludes that Respondent has incorporated two of Complainant’s marks, and that both parties operate in the mail industry.
Respondent also used the domain name <eddmuspostal.com> in bad faith.
Respondent incorporates confusingly similar content and offers competing services, attracting Internet users for commercial gain under Policy ¶ 4(b)(iv). Where a respondent engages in competitive conduct, Policy ¶ 4(b)(iv) may be present. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant states that it has not authorized Respondent’s use, and that Respondent has engaged in unauthorized competitive behavior and copied its logo and trade dress. See Compl., at Attached Ex. 7. Panel thus concludes that Respondent has engaged in bad faith use under Policy ¶ 4(b)(iv).
Further, Panel notes that Respondent has engaged a privacy service, and in doing so, withholds identifying information. The consensus view amongst panels
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is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Here, Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding.
Accordingly, Panel finds that Respondent’s conduct constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
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Accordingly, it is Ordered that the <eddmuspostal.com> domain name be TRANSFERRED from Respondent to Complainant.
Carol Stoner, Esq., Panelist
Dated: March 07, 2017
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