United States Postal Service v. CyberBusiness Associates
Claim Number: FA0510000572827
Complainant is United States Postal Service (“Complainant”), represented by Christopher T. Pierson, of Lewis and Roca LLP, 40 North Central Avenue, Phoenix, AZ 85004. Respondent is CyberBusiness Associates (“Respondent”), 2222 E. Foothill Blvd. Suite E346, La Canada, CA 91011.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <uspsstamps.com>, registered with BulkRegister, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his her knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 5, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 7, 2005.
On October 10, 2005, BulkRegister, LLC confirmed by e-mail to the National Arbitration Forum that the <uspsstamps.com> domain name is registered with BulkRegister, LLC and that Respondent is the current registrant of the name. BulkRegister, LLC has verified that Respondent is bound by the BulkRegister, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 11, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 31, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@uspsstamps.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 4, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <uspsstamps.com> domain name is confusingly similar to Complainant’s USPS mark.
2. Respondent does not have any rights or legitimate interests in the <uspsstamps.com> domain name.
3. Respondent registered and used the <uspsstamps.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, the United States Postal Service, was created on July 26, 1775 as the Post Office Department. In 1971, it became the United States Postal Service, an Independent Establishment of the Executive Branch of the Government of the United States. Complainant holds the U.S. Patent and Trademark Office (“USPTO”) registration for many marks incorporating the term “USPS,” including USPS ELECTRONIC POSTMARK (Reg. No. 2,451,172), filed on November 27, 1996 and registered on May 15, 2001. The trademark registrations claim first use dates dating back to 1976.
Respondent, CyberBusiness Associates, registered the <uspsstamps.com> domain name on June 25, 1999. Respondent is using the disputed domain name to advertise “US Postal Service Approved Postage.” The website associated with the domain name links to Stamps.com, Complainant’s licensee that sells postage on-line. Respondent asserts that it is a affiliate of Stamps.com on the resultant website. Respondent’s website also offers links to Complainant’s competitors—“FedEx, UPS, and more.”
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."
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(e), 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 (Nat. Arb. 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.”).
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 has offered its USPTO registration to
demonstrate that it has rights in the USPS ELECTRONIC POSTMARK mark. The Panel accepts Complainant’s trademark
registration as evidence that it has rights in the USPS ELECTRONIC POSTMARK
mark pursuant to Policy ¶ 4(a)(i). See
Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Nov. 11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Respondent has registered the <uspsstamps.com> domain name. The Panel finds that Respondent’s domain name is confusingly similar to Complainant’s USPS mark because it merely adds the word “stamps,” which does not significantly distinguish the domain name from the mark and is obviously related to Complainant’s mail services. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark).
Complainant has established Policy ¶ 4(a)(i).
The Panel infers that Respondent receives referral fees for
being enrolled in the Stamps.com affiliate program. Therefore, Respondent is appropriating Complainant’s trademarks
to generate revenues through referral fees and refer Internet users to
Complainant’s competitors. The Panel
finds that generating revenues and referring potential customers to
Complainant’s competitors by using Complainant’s mark is neither a bona fide
offering of a good nor service or a legitimate noncommercial or fair use of the
<uspsstamps.com> domain name.
See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent
lacks rights in the disputed domain names because Respondent competes with
Complainant by selling Complainant's used parts without a license from
Complainant to do so.”); see also Computerized Sec. Sys., Inc.
v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s
appropriation of [Complainant’s] SAFLOK mark to market products that compete
with Complainant’s goods does not constitute a bona fide offering of goods and
services.”).
Respondent is not a licensee of Complainant and does not
present any proof, including the WHOIS registration information, that it is
commonly known by the disputed domain name.
The Panel finds that Respondent does not have rights or legitimate
interests pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark).
Complainant has established Policy ¶ 4(a)(ii).
Respondent is appropriating Complainant’s mark to generate
traffic to Stamps.com, presumably so it can commercially benefit from the
Stamps.com affiliate program. Consequently, Stamps.com is a licensee of Complainant, offering
U.S. Postal Service stamps to the public.
Complainant remarks that even if Respondent were a licensee of Complainant,
its license agreement would not allow Respondent to use Complainant’s marks in
a domain name. Therefore, the Panel
finds that Respondent is attempting to create confusion as to the source of the
<uspsstamps.com> domain name for commercial gain, which is bad
faith pursuant to Policy ¶ 4(b)(iv). See
Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the
website, offering Usag products, together with the domain name may create the
(incorrect) impression that Respondent is either the exclusive distributor or a
subsidiary of Complainant, or at the very least that Complainant has approved
its use of the domain name.”); see also Hewlett-Packard Co. v. Ali, FA
353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its
domain name] to benefit from the goodwill associated with Complainant’s HP
marks and us[ed] the <hpdubai.com> domain name, in part, to provide
products similar to those of Complainant.
Respondent’s practice of diversion, motivated by commercial gain,
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
In addition, the website associated with the disputed domain
name refers Internet traffic to Complainant’s competitors. The Panel finds that appropriating
Complainant’s mark to refer Internet traffic to Complainant’s competitors is
evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business).
Complainant has established 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 <uspsstamps.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 16, 2005
National
Arbitration Forum
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