United Parcel Service of America, Inc. v. Xavier Franck
Claim Number: FA1805001785633
Complainant is United Parcel Service of America, Inc. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia. Respondent is Xavier Franck (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <upsunitedparcelservice.com>, registered with Network Solutions, LLC.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 8, 2018; the Forum received payment on May 8, 2018.
On May 9, 2018, Network Solutions, LLC confirmed by e-mail to the Forum that the <upsunitedparcelservice.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 May 11, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2018 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@upsunitedparcelservice.com. Also on May 11, 2018, 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 4, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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
Complainant, United Parcel Service of America, Inc., is one of the world’s largest package delivery companies and has been doing business under the UPS and UNITED POSTAL SERVICE marks since 1907. Complainant claims rights in the (1) UPS and (2) UNITED PARCEL SERVICE marks based upon registration with the United States Patent and Trademark Office (“USPTO.”) (e.g., (1) Reg. No. 966,774, registered Aug. 21, 1973; (2) Reg. No. 513,500, registered Aug. 9,1949). Respondent’s <upsunitedparcelservice.com> domain name is confusingly similar to Complainant’s marks because it combines the marks in their entirety and adds the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights and legitimate interests in the <upsunitedparcelservice.com> domain name because Respondent is not commonly known by the domain name, nor has Complainant given Respondent permission to register a domain name incorporating Complainant’s marks. Further, Respondent has failed to make a legitimate noncommercial or fair use of the domain name. Instead, the <upsunitedparcelservice.com> domain name resolves to an inactive webpage.
Respondent registered and is using the <upsunitedparcelservice.com> domain name in bad faith. Respondent is passively holding the infringing domain name, failing to make an active use of it. Additionally, due to the fame of the UPS and UNITED PARCEL SERVICE marks—and the inclusion of both marks in the disputed domain name—Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <upsunitedparcelservice.com> domain name.
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.”).
Complainant claims rights in the (1) UPS and (2) UNITED PARCEL SERVICE marks based upon registration with the USPTO (e.g., (1) Reg. No. 513,500, registered Aug. 9, 1949; (2) Reg. No. 966,774, registered Aug. 21, 1973). Registration with the USPTO is sufficient to establish a complainant’s rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”) The Panel finds that the Complainant has established rights in the UPS and UNITED PARCEL SERVICE marks.
Respondent’s <upsunitedparcelservice.com> domain name combines the marks in their entirety and adds the gTLD “.com.” Combining a complainant’s marks and adding a gTLD does not sufficiently distinguish a resultant domain name from the incorporated marks. See Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”). The Panel finds that Respondent’s domain name is confusingly similar to the Complainant’s marks under Policy ¶ 4(a)(i).
Complainant has proved this element.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant alleges that Respondent lacks rights or legitimate interests in the <upsunitedparcelservice.com> domain name because Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the federally-registered marks. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (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). Under ¶ 4(c)(ii), WHOIS information can be used to support a finding that the respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information in the record states the registrant is “Xavier Frank.” The Panel finds that Respondent is not commonly known by the <upsunitedparcelservice.com> domain name and that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant further argues Respondent lacks rights or legitimate interests in the <upsunitedparcelservice.com> domain name because Respondent failed to use the domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant alleges that Respondent uses the domain name to host an inactive website. Inactive use of a disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial fair use. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Here, the disputed domain name resolves to an inactive website displaying the phrase “Hey, this domain used to be connected to a Wix website.” The Panel finds under Policy ¶¶ 4(c)(i) and (iii) that the Respondent failed to use the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
Complainant has proved this element.
Complainant argues that Respondent registered and is using the <upsunitedparcelservice.com> domain name in bad faith because Respondent failed to make an active use of the website that the disputed domain name resolves to. Use of a domain name to passively hold a website is evidence of bad faith under Policy ¶ 4(a)(iii). VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant alleges that the <upsunitedparcelservice.com> domain name resolves to an inactive website displaying the phrase “Hey, this domain used to be connected to a Wix website.” The Panel finds that the Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the marks due to the fame of Complainant’s UPS and UNITED PARCEL SERVICE marks. A respondent may be presumed to have actual knowledge of a complainant’s rights in a mark when the complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s UPS and UNITED PARCEL SERVICE marks are used in over 220 countries and Complainant’s business has over 10.3 million pick-up and delivery customers. Complainant also argues that Respondent’s inclusion of two of Complainant’s marks indicates actual knowledge. The Panel finds that Respondent had actual knowledge of Complainant’s rights and the <upsunitedparcelservice.com> domain name was registered and used in bad faith.
Respondent registered the domain name that fully incorporates the well-known UPS and UNITED PARCEL SERVICE marks. It is impossible to conceive of any potential legitimate use of the domain name. See Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). Here, the “Respondent has appropriated a trademark having a strong reputation and widely known.” Ferrari S.p.A. v. Joohee, D2003-0882 (WIPO Dec. 18, 2003). “[I]t is not possible to conceive of any plausible actual or contemplated active use of the Domain Name[s] by the Respondent that would not be illegitimate, such as passing off, or an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.” Id. Where a domain name is “so obviously connected with such a well-known name and products…its very use by someone with no connection with the products suggests opportunistic bad faith.” Parfums Christian Dior v. Quintas, D2000-0226 (WIPO May 17, 2000). Indeed, Respondent “could not have chosen or subsequently used… in its Domain Name[s] for any reason other than to trade on that name and to confuse Internet users and by that means to attract them to a website with a name which is the same as that of the prominent mark. That is, in itself, evidence of bad faith.” Control Techniques Ltd. v. Lektronix Ltd., D2006-1052 (WIPO Oct. 11, 2006). From the uncontested allegations and evidence the Panel finds Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <upsunitedparcelservice.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: June 7, 2018
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