United States Postal Service v. She had khan
Claim Number: FA1805001788585
Complainant is United States Postal Service (“Complainant”), represented by Jennifer A. Van Kirk of Lewis Roca Rothgerber Christie LLP, Arizona, USA. Respondent is She had khan (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <uspstrackingservice.com>, registered with BigRock Solutions Ltd.
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.
David S. Safran, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 24, 2018; the Forum received payment on May 24, 2018.
On May 25, 2018, BigRock Solutions Ltd confirmed by e-mail to the Forum that the <uspstrackingservice.com> domain name is registered with BigRock Solutions Ltd and that Respondent is the current registrant of the name. BigRock Solutions Ltd has verified that Respondent is bound by the BigRock Solutions Ltd 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 25, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 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@uspstrackingservice.com. Also on May 25, 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.
A timely Response was received and determined to be complete on June 5, 2018.
On June 7, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David S. Safran, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, United States Postal Service (“USPS”), serves millions of customers daily and sets the global industry standard for mailing and shipping related goods and services. See Compl. p.8. Complainant asserts rights in the (1) USPS and (2) USPS TRACKING marks through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., (1) Reg. No. 2,423,574, registered Jan. 23, 2001, (2) Reg. No. 4,589,424, registered Aug. 19, 2014). See Compl. Ex. 6. Respondent’s <uspstrackingservice.com> domain name is confusing similar to Complainant’s marks because it incorporates the marks in their entirety and adds the highly descriptive term “service” as well as the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights and legitimate interests in the domain name because Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to register domain names using the marks. Furthermore, Respondent fails to use the domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial fair use. Instead, Respondent uses the <uspstrackingservice.com> domain name host a website that contains pay-per-click links for commercial benefit.
Respondent registered and is using the domain name in bad faith. Respondent uses the domain name to create initial interest confusion with Complainant’s customers and divert customers to Respondents website. Furthermore, the Respondent uses the <uspstrackingservice.com> domain name to host a webpage that contains pay-per-click links in order to generate revenue.
B. Respondent
The domain was only used for an information blog, not a competing site, and the site to which the domain resolved has been taken down. If Complainant wants the domain, it should reimburse Respondent for its costs incurred to obtained it.
Complainant’s trademarks are famous, are incorporated into the domain at issue. The site to which the domain named at issue resolved is still action and contains links to competitors of Complainant such as UPS. The Respondent’s site is not properly considerable as being an information blog.
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.
Complainant asserts rights in the (1) USPS and (2) USPS TRACKING marks through registration with the USPTO (e.g., (1) Reg. No. 2,423,574, registered Jan. 23, 2001, (2) Reg. No. 4,589,424, registered Aug. 19, 2014) See Compl. Ex. 6. Registration of a domain name with the USPTO is sufficient to establish complainant’s rights in a mark. 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.”) Therefore, the Panel finds that Complainant established rights in the USPS and USPS TRACKING marks per Policy ¶ 4(a)(i).
Next, Complainant asserts Respondent’s <uspstrackingservice.com> domain name is confusingly similar to Complainant’s marks because it combines the marks in their entirety, adds the highly descriptive term “service,” and adds the gTLD “.com.” Combining a Complainant’s marks, adding a descriptive term, and adding a gTLD may not sufficiently distinguish a resultant domain name from the incorporated marks in a Policy ¶ 4(a)(i) analysis. 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.”); see also YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark). Here, Respondent combines the USPS and USPS TRACKING marks and adds the gTLD “.com” as well as the highly descriptive “service” term. Therefore, the Panel concludes that the Respondent’s name is confusingly similar to the Complainants marks under Policy ¶ 4(a)(i).
The Panel recognizes that 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 right and legitimate interests in the <uspstrackingservice.com> domain name because Respondent is not commonly known by the domain name, nor has Complainant authorized the Respondent to use the USPS and USPS TRACKING marks. WHOIS information can substantiate a finding that a respondent has not been commonly known by a disputed domain name per Policy ¶ 4(c)(ii). 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). Further, lack of a complainant’s authorization to use a mark can further evince a finding that a respondent is not commonly known by a disputed domain name per Policy ¶ 4(c)(ii). 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). Here, Complainant asserts that it never authorized Respondent to register a domain name that includes Complainant’s federally registered marks. Further, while Complainant does not explicitly argue this, the WHOIS information of record names shows “She had khan” as the registrant of the disputed domain name. See Compl. Ex. 2. Therefore, the Panel finds that the Respondent is not commonly known by the <uspstrackingservice.com> domain name.
Next, Complainant argues that Respondent lacks rights and legitimate interests in the <uspstrackingservice.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 is using the domain name to direct internet users to pay-per-click links on its website to derive click-through fees. Use of a domain name to host a pay-per-click webpage may not be considered a bona fide offering of goods and services under Policy ¶ 4(i) and (iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites). Here, Complainant alleges that the resolving website from the <uspstrackingservice.com> domain name displays multiple pay-per-click hyperlinks from which Respondent derives a profit. See Compl. Ex. 3. Accordingly, the Panel finds the Respondent has failed to use the domain name in connection with a bona fide offering of goods and services under Policy ¶ 4(i) and (iii).
Complainant argues Respondent registered and is using the domain name in bad faith. Use of a disputed domain name to divert customers and generate income via pay-per-click links represents bad faith pursuant to Policy ¶ 4(b)(iii) See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent uses pay-per-click hyperlinks on the resolving website, which redirects users to competing websites. The use of hyperlinks to disrupt and compete with a complainant’s business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).”). Complainant alleges Respondent operates the <uspstrackingservice.com> domain name to divert Complainant’s customers in an attempt to generate revenue through pay-per-click advertisements. Accordingly, the Panel finds that the Respondent registered and is using the domain name in bad faith per Policy ¶ 4(b)(iii).
Complainant alleges that Respondent attempts to initially confuse internet users to believe that the <uspstrackingservice.com> domain is connected with Complainant’s USPS and USPS TRACKING marks and because Respondent is diverting customers using the <uspstrackingservice.com> domain name to generate revenue through pay-per-click ads. Use of a domain name to create confusion as to the source, sponsorship, affiliation or endorsement therein for commercial gain via pay-per-click advertisements may evidence bad faith per Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed). Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); see also 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). Here, Complainant alleges Respondent uses both the USPS and USPS TRACKING marks in the domain name and incorporates Complainant’s marks in the resolving website to generate funds via pay-per-click advertisements. See Compl. Ex. 3. Therefore, the Panel may find that Respondent registered and is using the domain name in bad faith.
Next, Complainant argues Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration. A respondent may have actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 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 USPS and USPS TRACKING marks are used to serve millions of customers daily for mailing and shipping related goods and services. See Compl. p.8. Additionally, the presence of a disclaimer evidences that Respondent knew of Complainant. See PADI Americas, Inc. v. Admin Department FA1802001770164 (Forum Mar. 13, 2018) (“The disclaimer may well be correct, but it also shows that Respondent was very much aware of the existence of the Association whose initials were taken to make the word PADI, as the disclaimer uses the full name of the association. The Panel therefore concludes that Respondent knew of the PADI name and brand when it registered the domain name and was deliberately invoking the PADI brand when it chose the domain name, even if it then purported to dissociate itself from it.”). Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights when the <uspstrackingservice.com> domain name were registered and used.
Last, Complainant alleges that Respondent’s inclusion of a disclaimer does not defeat a finding of bad faith. Typically, use of a disclaimer does not mitigate finding of bad faith under Policy ¶ 4(a)(iii)”). See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”); see also Google Inc. v. Domain Admin / Whois Privacy Corp, FA 1726692 (Forum May 16, 2017) (finding that the mere existence of a disclaimer on a webpage is not sufficient to confer rights and legitimate interests in a disputed domain name). Complainant argues that the disclaimer Respondent uses is located on the “Contact Us,” and does little to diminish the confusion that results from the use of Complainant’s marks. See Compl. Ex. 3. Therefore, the Panel holds that Respondent’s use of a disclaimer does not mitigate bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <uspstrackingservice.com> domain name be TRANSFERRED from Respondent to Complainant.
___________________________________________________________
David S. Safran, Panelist
Dated: June 19, 2018
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