Postmates Inc. v. jamal wamache
Claim Number: FA1812001822148
Complainant is Postmates Inc. (“Complainant”), represented by Chelsea E. Carbone of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Jamal Wamache (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <postmates.website>, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 20, 2018; the Forum received payment on December 20, 2018.
On December 20, 2018, Network Solutions, LLC confirmed by e-mail to the Forum that the <postmates.website> 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 December 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2019 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@postmates.website. Also on December 21, 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 January 13, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant is an on-demand delivery platform and service with customers in over 500 U.S. cities and Mexico City. Complainant has rights in the POSTMATES trademark based on its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,548,033, registered June 10, 2014). Respondent’s <postmates.website> domain name is identical and confusingly similar to Complainant’s trademark because Respondent merely adds the generic top-level domain (“gTLD”) “.website.”
Respondent lacks rights or legitimate interest in the <postmates.website> domain name because Respondent is not commonly known by the disputed domain name nor is Respondent licensed or authorized to use Complainant’s trademark. Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Instead, Respondent uses the disputed domain name to mimic Complainant’s website in an attempt to divert internet users to Respondent’s scam website.
Respondent registered and uses the <postmates.website> domain name in bad faith. Respondent registered the domain name to disrupt Complainant’s business and take advantage of the value and goodwill associated with the POSTMATES trademark by attracting users to its website where it attempts to pass off as Complainant to cause confusion among Internet users.
Further, upon visiting the web site connected to the infringing domain name, users are prompted to enter in their personal information as part of a likely phishing scheme. Additionally, Respondent had actual knowledge of Complainant’s rights in the POSTMATES trademark when it registered the infringing domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the U.S. trademark registration No. 4,548,033 POSTMASTERS (word), registered June 10, 2014 for goods and services in classes 9 and 41.
The Respondent registered the <postmates.website> domain name on December 2, 2018.
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 asserts rights in the POSTMATES trademark based in its registration with the USPTO, which is sufficient to establish a complainant’s rights in a trademark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides a copy of its trademark Reg. No. 4,548,033.
Therefore, the Panel finds that Complainant has established rights in the POSTMATES trademark.
Complainant argues that the disputed domain name <postmates.website> is identical and confusingly similar to Complainant’s mark because Respondent only adds the “.website” gTLD to Complainant’s fully incorporated trademark. The sole addition of a gTLD is insufficient to differentiate a disputed domain name from a fully incorporated mark. See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”).
Therefore, the Panel find that the disputed domain name is in fact identical to Complainant’s trademark.
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 argues that Respondent is not commonly known by the <postmates.website> domain name nor is Respondent licensed or authorized to use the POSTMATES mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name).
Additionally, lack of authorization to use a complainant’s trademark may indicate that a respondent is not commonly known by a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain names per Policy ¶ 4(c)(ii)”).
The WHOIS information for the disputed domain name <postmates.website> identifies the Respondent as “Jamal Wamache,” and there is no evidence to suggest that Respondent was authorized to use the POSTMATES trademark for any purpose.
Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <postmates.website> domain name. Complainant alleges that Respondent instead uses the disputed domain name to confuse and divert Internet users to the disputed domain name. Using a disputed domain name to divert Internet users and confuse them into believing an affiliation exists between the disputed domain name and a complainant’s website is generally not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel notes that - based on the evidence provided by the Complainant - <postmates.website> is linked to a website which displays Complainant’s POSTMATES trademark and logo.
Therefore, the Panel finds that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Complainant argues that Respondent registered and uses the <postmates.website> domain name in an attempt to attract Internet users for commercial gain by passing off as Complainant. Such use in definitely an example of bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Thus, the Panel agree with the Complainant’s conclusion and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant alleges that Respondent uses <postmates.website> in furtherance of a phishing scheme. Such use is also a clear demonstration of bad faith registration and use under Policy ¶ 4(a)(iii). See FIL Limited v. Li jie, FA 1718900 (Forum Mar. 17, 2017) (finding the <fidelity.cn.com> domain name was registered and used in bad faith as it resolved to a website which mimicked the complainant’s login page in an attempt to gain Internet users’ personal and financial information).
Complainant contends the disputed domain name prompts users to enter their email address and password, purportedly in an attempt to collect personally identifying information.
The Panel agree that Respondent attempts to unfairly collect personal information, and find that Respondent registered and uses the <postmates.website> domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues Respondent had actual knowledge of Complainant’s rights in the trademark at the time of registration. Actual knowledge of a complainant’s trademark prior to registering can adequately support a finding of bad faith under Policy ¶ 4(a)(iii). 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.”); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant argues Respondent displays Complainant’s POSTMATES trademark, mimics Complainant’s website layout and color scheme, and uses images containing Complainant’s trademark on the disputed domain name, all of which demonstrates Respondent had actual knowledge of Complainant’s rights in the mark.
The Panel again agree with the Complainant’s conclusion, and therefore find that Respondent had actual knowledge of Complainant’s rights in the POSTMATES trademark and thus registered the <postmates.website> domain name in bad faith under 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 <postmates.website> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: January 22, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page