United States Postal Service v. Bing Zou
Claim Number: FA1902001829391
Complainant is United States Postal Service (“Complainant”), represented by Jennifer A. Van Kirk of Lewis Roca Rothgerber Christie LLP, Arizona, USA. Respondent is Bing Zou (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usps-mail.com>, registered with Chengdu West Dimension Digital Technology Co., Ltd.
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 February 11, 2019; the Forum received payment on February 11, 2019.
On February 12, 2019, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <usps-mail.com> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., 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 February 15, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 7, 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@usps-mail.com. Also on February 15, 2019, 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 March 11, 2019, 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 <usps-mail.com> domain name is confusingly similar to Complainant’s USPS mark.
2. Respondent does not have any rights or legitimate interests in the <usps-mail.com> domain name.
3. Respondent registered and uses the <usps-mail.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, the United States Postal Service, is a global provider of mailing and shipping related goods and services. Complainant holds a registration for the USPS mark with the United States Patent and Trademark Office (“USTPO”) (Reg. No. 2,423,574, registered on Jan. 23, 2001).
Respondent registered the <usps-mail.com> domain name on October 9, 2018, and uses it to redirect Internet users to Respondent’s gambling website.
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: Language of Proceeding
Complainant has alleged that Respondent is conversant in English, and thus this proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of this proceeding, taking into consideration the particular circumstances. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant shows that Respondent’s website available at the disputed domain name uses English characters and words therein, suggesting that Respondent is conversant in the English language. Complainant is not conversant in the Chinese language and it would be an administrative burden to conduct the proceeding in Chinese. Therefore, the Panel determines that this proceeding will be conducted in English.
The Panel finds that Complainant has established rights in the USPS mark for the purposes of Policy ¶ 4(a)(i) based upon its registration of the mark with the USTPO. 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 copies of its registration of the mark with the USTPO (e.g., Reg. No. 2,423,574, registered on Jan. 23, 2001).
Respondent’s <usps-mail.com> domain name incorporates the USPS mark in its
entirety, adds a hyphen, a descriptive term, and a gTLD. The addition of descriptive
words that are connected to a complainant’s business does not distinguish a
domain name from a mark under Policy ¶ 4(a)(i). See King Ranch IP, LLC v. E Miller, FA 1785596 (Forum June 6, 2018) (“Complainant’s trademark is used in-part with regard to barbecue
related goods and services; the term “bbq” is thus suggestive of the KING RANCH
trademark. Therefore, the Panel finds that the <kingranchbbq.com> domain
name is confusingly similar to Complainant’s KING RANCH mark.”). The addition
of a hyphen and a gTLD to a complainant’s mark does not mitigate the confusing
similarity. See Innomed Techs., Inc. v. DRP Servs., FA
221171 (Forum Feb. 18, 2004)
(finding that hyphens and top-level domains are irrelevant for purposes of the
Policy). Accordingly, the Panel finds that Respondent’s <usps-mail.com> domain name is confusingly similar to
Complainant’s USPS 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 argues that Respondent lacks rights and legitimate interests in the <usps-mail.com> domain name because Respondent is not authorized or permitted to use Complainant’s USPS mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See 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)). The lack of authorization from a complainant to use its mark is further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The WHOIS information of record identifies the Respondent as “Bing Zou.” Therefore, the Panel finds that Respondent is not commonly known by the <usps-mail.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <usps-mail.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the disputed domain name to sell services unrelated to Complainant and to generate click-through revenue. Using a disputed domain name to confuse users and commercially benefit is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services). Complainant provides screenshots of the disputed domain name’s resolving webpage, which displays Chinese characters, images of various numbers in English, and contains various links. Therefore, the Panel finds that Respondent does not use the disputed domain name for a bona fide offering or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant further alleges that Respondent uses the disputed domain name to facilitate an illegal online gambling operation. Using a domain name for an illegal purpose does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Nycomed Danmark ApS v. Diaz, D2006-0779 (WIPO Aug. 15, 2006) (concluding that the respondent’s use of a disputed domain name to operate a website promoting an illegal food supplement was not 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 demonstrates that there is an online gambling website at the disputed domain name, further supporting a finding that Respondent lacks rights in the disputed domain name. The Panel finds that Respondent’s use of the domain name to promote gambling fails to confer rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <usps-mail.com> domain name in bad faith because Respondent intends to confuse users as to the source, sponsorship, or affiliation of the Respondent’s website hosted on the disputed domain name. The Panel agrees and finds that Respondent uses the disputed domain name to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain).
Complainant contends that, due to its fame, Respondent was aware of the trademark and the goodwill attached to it. Complainant displays its fame by referencing its founding in 1775, its delivery of 47% of the world’s mail, and its service of 153.9 billion pieces of mail in 2016. Thus, the Panel agrees and finds that Respondent had actual knowledge of Complainant’s mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous).
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 <usps-mail.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 13, 2019
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