United States Postal Service v. I S / ICS INC / ICS Inc / Ics Inc / Internet Services / ICS inc
Claim Number: FA1705001733383
Complainant is United States Postal Service (“Complainant”), represented by Nathaniel Edwards of Lewis Roca Rothgerber LLP, Arizona, USA. Respondent is I S / ICS INC / ICS Inc / Ics Inc / Internet Services / ICS inc (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <theuspsstorelocal.com>, <pusps.com>, <uspseverydoordirect.com>, <eddmtool.com>, <uspsholidays.com>, registered with Tucows Domains Inc.; and <htusps.com>, and <myregisteredmail.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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 25, 2017; the Forum received payment on May 26, 2017.
On May 26, 2017, Godaddy.Com, Llc and Tucows Domains Inc. confirmed by e-mail to the Forum that the <uspsholidays.com>, <theuspsstorelocal.com>, <htusps.com>, <pusps.com>, <uspseverydoordirect.com>, <eddmtool.com>, and <myregisteredmail.com> domain names are registered with Godaddy.Com, Llc and Tucows Domains Inc. and that Respondent is the current registrant of the names. Godaddy.Com, Llc and Tucows Domains Inc. have verified that Respondent is bound by the Godaddy.Com, Llc and Tucows Domains Inc. registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 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@uspsholidays.com, postmaster@theuspsstorelocal.com, postmaster@htusps.com, postmaster@pusps.com, postmaster@uspseverydoordirect.com, postmaster@eddmtool.com, and postmaster@myregisteredmail.com. Also on June 2, 2017, 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 June 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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.
A. Complainant
USPS.COM Mark
Complainant has rights in the USPS.COM mark based on its registration, for example, with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,423,573, registered Jan. 23, 2001). See Compl., at Attached Ex. 8. Respondent’s <uspsholidays.com>, <theuspsstorelocal.com>, <htusps.com>, <pusps.com>, and <uspseverydoordirect.com> are confusingly similar as they each incorporate the USPS.COM mark entirely, while merely adding one or more of the following generic/descriptive elements: “the,” “store,” “local,” “ht,” “holidays,” “p,” “every,” “door,” “direct.”
EDDM Mark
Complainant has rights in the EDDM mark based on its registration with the USPTO (Reg. No. 4,144,233, registered May 15, 2012). See Compl., at Attached Ex. 9. Respondent’s <eddmtool.com> is confusingly similar as it incorporates the entire EDDM mark and merely adds the term “tool” and the “.com” generic top-level domain (“gTLD”).
REGISTERED MAIL Mark
Complainant has rights in the REGISTERED MAIL mark pursuant to the Trademark Trial and Appeal Board determination that said mark is inherently distinctive. U.S. Postal Service v. RPost Int’l Ltd., Cons. Nos. 91158431, 91158514, 92044260 and 92043665 (TTAB June 17, 2013). Respondent’s <myregisteredmail.com> incorporates the mark entirely, less the space, and merely adds the term “my” and the gTLD “.com”—creating confusing similarity with the mark.
Respondent is not an authorized vendor or licensee of Complainant, and is not commonly known by the domain names. Further, Respondent is not using the domain names in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Rather, the resolving websites vary between mere click-through websites with links to Complainant’s competitors, to malware and phishing sites. See Compl., at Attached Ex. 10.
Respondent has offered to sell <theuspsstorelocal.com>, <htusps.com> and <uspseverydoordirect.com> on the resolving page of each, demonstrating bad faith under Policy ¶ 4(b)(i) for each.
Respondent is a well-known and recalcitrant cybersquatter. Respondent has
been the named respondent in 112 UDRP cases before the FORUM. The disputed domain names were ordered transferred in 111 of these cases. See Compl., at Attached Ex. 3. Respondent has also been the named Respondent in approximately eighty (80) WIPO UDRP cases. See Compl., at Attached Ex. 9. Complainant is not aware of a WIPO UDRP case decided in Respondent’s favor. Coupled with the registration of several infringing domain names in the case at bar, Respondent has engaged in bad faith per Policy ¶ 4(b)(ii).
Respondent’s registration of several domain names incorporating several of Complainant’s marks, coupled with the fame associated with each of Complainant’s marks, indicates that Respondent had actual and/or constructive knowledge of Complainant and its rights in or to the marks when registering and subsequently using the domain names, indicating nonexclusive bad faith per Policy ¶ 4(a)(iii).
Respondent’s malware/phishing behavior also indicates bad faith under Policy ¶ 4(a)(iii).
Lastly, Respondent has engaged in typosquatting with respect to <htusps.com> and <pusps.com> because they merely add “ht” and “p,” respectively. Typosquatting is additional evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain names were created on the following dates:
<uspsholidays.com> October 17, 2016;
<theuspsstorelocal.com> September 16, 2012;
<htusps.com> October 26, 2014;
<pusps.com> December 7, 2011;
<uspseverydoordirect.com> June 11, 2012;
<eddmtool.com> May 23, 2012; and
<myregisteredmail.com> June 13, 2016.
The Panel finds that the disputed domain names are confusingly similar to the various trademarks held by Complainant; that Respondent has no rights or legitimate interests in or to the disputed domain names; and that Respondent has engaged in bad faith use and registration of the disputed domain names.
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(f), 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 (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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that Current Whois database records identify ICS INC, ICS Inc or Ics Inc or ICS inc as the registrant organization of the disputed domain names. These registrant names are identical except for capitalization variations. Further, the registrant telephone numbers for the disputed domain names are identical.
As such, the Panel finds that the disputed domain names are controlled by the same entity and, as such, Respondent is the appropriate party to these proceedings.
The Panel finds that the disputed domain names are confusingly similar to the valid and subsisting trademarks of Complainant. Complainant has adequately pled its rights and interests in and to the various trademarks at issue here. Respondent adds generic words or deletes spaces and otherwise includes Complainant’s various trademarks in total to arrive at each of the disputed domain names. This is insufficient to distinguish the various disputed domain names from the various and corresponding trademarks.
As such, the Panel finds that the various disputed domain names are confusingly similar to Complainant’s various trademarks.
Further, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain names. Respondent has no license or permission to use or register the disputed domain names.
The registrant names for the disputed domain names are as follows:
<uspsholidays.com> Registration Private;
<theuspsstorelocal.com> ICS Inc;
<htusps.com> Internet Services;
<pusps.com> ICS Inc;
<uspseverydoordirect.com> ICS Inc;
<eddmtool.com> ICS Inc; and
<myregisteredmail.com> Registration Private.
As such, the Panel finds that Respondent is not commonly known by any of the disputed domain names.
Further, the Panel finds that Respondent is not using the domain names in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Rather, the resolving websites vary between mere click-through websites with links to Complainant’s competitors, to malware and phishing sites. Such uses cannot be construed as bona fide offerings of goods or services or for any legitimate noncommercial or fair use. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Complainant has provided screenshots of the disputed domain names’ resolving websites which indicate evidence of phishing schemes and click-through sites and malware distribution. See Compl., at Attached Ex. 10.
As such, the Panel finds that Respondent is not using the domain names in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use and, therefore, lacks any rights or legitimate interests in or to the disputed domain names.
The Panel further finds that Respondent engaged in bad faith use and registration of the disputed domain names. Complainant contends that Respondent has offered to sell <theuspsstorelocal.com>, <htusps.com> and <uspseverydoordirect.com> on the resolving page of each, demonstrating bad faith under Policy ¶ 4(b)(i) for each. General offers for sale may indicate bad faith use and registration; however, from Complainant’s proffered evidence, it is not entirely clear what specific language it is claiming constitutes these offers for sale. Therefore, the Panel declines to find bad faith under Policy ¶ 4(b)(i) on this claim alone.
Complainant contends that Respondent is a well-known and recalcitrant cybersquatter. Respondent has apparently been the named respondent in 112 UDRP cases before the Forum. The disputed domain names were ordered transferred in 111 of these cases. See Compl., at Attached Ex. 3. Respondent has also been the named Respondent in approximately eighty (80) WIPO UDRP cases. See Compl., at Attached Ex. 9. Complainant claims it is not aware of a WIPO UDRP case decided in Respondent’s favor. A history of adverse UDRP decisions or several infringing domain names in a single dispute may lead to a finding of Policy ¶ 4(b)(ii) bad faith. Therefore, Respondent’s history of adverse UDRP findings, coupled with the registration of several infringing domain names in this case, leads the Panel to conclude Respondent has engaged in bad faith use and registration per Policy ¶ 4(b)(ii).
Complainant next contends that Respondent’s registration of several domain names incorporating several of Complainant’s marks, coupled with the fame associated with each of Complainant’s marks, indicates that Respondent had actual knowledge of Complainant and its rights in or to the marks when registering and subsequently using the domain names, indicating nonexclusive bad faith per Policy ¶ 4(a)(iii). Therefore, given the fame of Complainant’s marks and the totality of the circumstances, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain names.
The Panel further finds that Respondent’s malware/phishing behavior also indicates bad faith under Policy ¶ 4(a)(iii). Malware/phishing behavior has been considered sufficient on its own to support findings of bad faith. See eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com FA1505001621663 (FA1505001621663 (FORUM July 2, 2015) July 2, 2015) (“In addition, Respondent has used the disputed domain name to install malware on Internet users’ devices. The Panel finds that this is bad faith under Policy ¶ 4(a)(iii).”); see also Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). It appears from Complainant’s Annex 10, supra, that Respondent has attempted to engage in malware and/or phishing use of the domain names, which amounts to bad faith use and registration under nonexclusive Policy ¶ 4(a)(iii).
The Panel may note that Respondent has engaged a privacy service with respect to <uspsholidays.com> and <myregisteredmail.com>, and in doing so withholds identifying information. See Compl., at Attached Ex. 2. The consensus view among panels 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”). Therefore, as it appears that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding. As such, the Panel finds that Respondent has registered and used the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Lastly, Respondent has engaged in typosquatting with respect to <htusps.com> and <pusps.com> because Respondent merely adds “ht” and “p,” respectively. Typosquatting is evidence of bad faith. See Zone Labs, Inc. v. Zuccarini, FA 190613 (FA1505001621663 (FORUM July 2, 2015) Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As such, the Panel finds that Respondent has engaged in typosquatting and that this, too, supports a finding of bad faith use and registration under Policy ¶ 4(a)(iii).
In conclusion, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <uspsholidays.com>, <theuspsstorelocal.com>, <htusps.com>, <pusps.com>, <uspseverydoordirect.com>, <eddmtool.com>, and <myregisteredmail.com> domain names be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: June 28, 2017
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