United States Postal Service v. Affirmed Capital
Claim Number: FA1805001788296
Complainant is United States Postal Service (“Complainant”), represented by Jennifer A. Van Kirk of Lewis Roca Rothgerber Christie LLP, Arizona, USA. Respondent is Affirmed Capital (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue are <expressmailcanna.com>, <expressmailcannabis.com>, <expressmailmarijuana.com>, <expressmailbud.com>, <cannabisexpressmail.com> and <expressmailweed.com>, registered with GoDaddy.com, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 23, 2018; the Forum received payment on May 23, 2018.
On May 24, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <expressmailcanna.com>, <expressmailcannabis.com>, <expressmailmarijuana.com>, <expressmailbud.com>, <cannabisexpressmail.com> and <expressmailweed.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 May 24, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 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@expressmailcanna.com, postmaster@expressmailcannabis.com, postmaster@expressmailmarijuana.com, postmaster@expressmailbud.com, postmaster@cannabisexpressmail.com, and postmaster@expressmailweed.com. Also on May 24, 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 18, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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. Respondent’s <expressmailcanna.com>, <expressmailcannabis.com>, <expressmailmarijuana.com>, <expressmailbud.com>, <cannabisexpressmail.com> and <expressmailweed.com> domain names are confusingly similar to Complainant’s EXPRESS MAIL mark.
2. Respondent does not have any rights or legitimate interests in the <expressmailcanna.com>, <expressmailcannabis.com>, <expressmailmarijuana.com>, <expressmailbud.com>, <cannabisexpressmail.com> and <expressmailweed.com> domain names.
3. Respondent registered and uses the <expressmailcanna.com>, <expressmailcannabis.com>, <expressmailmarijuana.com>, <expressmailbud.com>, <cannabisexpressmail.com> and <expressmailweed.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, the United States Postal Service, delivers forty-seven percent (47%) of the world’s mail. Complainant uses its EXPRESS MAIL to promote its products and services and holds a registration for the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,194,853, Oct. 13, 1998).
Respondent registered the <expressmailcanna.com>, <expressmailcannabis.com>, <expressmailmarijuana.com>, <expressmailbud.com>, <cannabisexpressmail.com> and <expressmailweed.com> domain names on April 21, 2017, and uses them to resolve to divert Internet users to adult-oriented websites with pay-per-click links.
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.”).
The Panel finds that Complainant has established rights in the EXPRESS MAIL mark under Policy ¶ 4(a)(i) through registration with the USPTO. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)).
Respondent’s <expressmailcannabis.com>, <expressmailmarijuana.com>, <expressmailbud.com>, <cannabisexpressmail.com> and <expressmailweed.com> domain names add a generic term unrelated to Complainant and the gTLD “.com” to Complainant’s mark. These changes do not distinguish a domain name from a mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s EXPRESS MAIL mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 does not have rights or legitimate interests in the disputed domain name, and is not commonly known by the disputed domain names. Complainant has not licensed or otherwise authorized Respondent to use its EXPRESS MAIL mark. The WHOIS information of record for the domain names list “Affirmed Capital” as the registrant. Therefore, the Panel finds that there is no evidence to support a finding that Respondent is commonly known by the disputed domain names. 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); see also State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)).
Complainant alleges that Respondent uses the disputed domain names to resolve to parked websites featuring pay-per-click links for adult-oriented material. Use of a domain name to resolve to a website featuring pay-per-click links for adult oriented material may not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See InnoTown AS v. Forest, D2003-0718 (WIPO Oct. 27, 2003) (holding that because there was “no immediate or apparent connection between the name selected by the Respondent and its web site offering links to various [adult-oriented] web sites” the panel held that this activity was not a bona fide offering of goods or services). Complainant provides screenshots of the websites resolving from the disputed domain names with links such as “Adult Cam Sex, “Sex Dating,” and “Casual Sex.” Therefore, the Panel finds that Respondent failed to use the domain names for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent has engaged in a pattern of bad faith registration. Registration of multiple domain names that infringe upon a complainant’s mark may evince a pattern of bad faith registration under Policy ¶ 4(b)(ii). See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). The Panel notes that Respondent registered six domain names that include Complainant’s EXPRESS MAIL mark, and finds that this establishes a pattern of bad faith registration under the Policy.
Complainant claims that Respondent attempts to tarnish or disrupt Complainant’s business by registering domain names that incorporate Complainant’s EXPRESS MAIL mark and terms related to cannabis products. Registration of a domain name to convey a false and tarnishing message about a complainant’s business constitutes bad faith. See Philip Morris USA Inc. v. Hector Serra, THZ, D2017-0084 (WIPO April 18, 2017) (holding the domain <marbloromj.com> was used in bad faith because it conveyed the false and tarnishing message that Phillip Morris sold Marlboro brand marijuana cigarettes and the website linked to the domain name offered no content to explain or correct the false message). Accordingly, the Panel finds that Respondent registered the disputed domain names for the purpose of disrupting Complainant’s business, in bad faith under Policy ¶ 4(b)(iii).
Complainant alleges that Respondent uses the <expressmailcanna.com>, <expressmailcannabis.com>, <expressmailmarijuana.com>, <expressmailbud.com>, <cannabisexpressmail.com> and <expressmailweed.com> domain names to create confusion with Complainant’s mark for Respondent’s commercial gain. Use of a domain name to attract Internet users and create confusion as to the source, sponsorship, affiliation or endorsement therein is evidence bad faith. See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). The Panel thus finds that Respondent uses the disputed domain names to create confusion with Complainant’s EXPRESS MAIL mark for commercial gain and in bad faith under Policy ¶ 4(b)(iv).
The Panel finds that Complainant has satisfied 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 <expressmailcanna.com>, <expressmailcannabis.com>, <expressmailmarijuana.com>, <expressmailbud.com>, <cannabisexpressmail.com> and <expressmailweed.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 19, 2018
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