The Complainant is United States Postal Service, Washington, DC, USA ("Complainant") represented by David M Kelly, of Finnegan, Henderson, Farabow, Garrrett & Dunner LLP. The Respondent is Reflex Publishing, Brandon, FL, USA ("Respondent") represented by Marcus D. Dunn.

The domain name at issue is <post-office.com>, registered with Tucows, Inc.

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as a panelist in this proceeding.

R. Glen Ayers, Honorable Carolyn Marks Johnson and Paul M. DeCicco, served as Panelists.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 23, 2001; the Forum received a hard copy of the Complaint on February 23, 2001.

On February 26, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <post-office.com> is registered with Tucows, Inc. and that the Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 February 28, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 20, 2001 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@post-office.com by e-mail.

A timely response was received and determined to be complete on March 20, 2001.

A timely additional submission from Complainant was received and determined to be complete on March 27, 2001.

A timely additional submission from Respondent was received on March 27, 2001. The fee was not received on time.

On March 30, 2001, pursuant to Complainant’s request to have the dispute decided by a three member Panel, the Forum appointed R. Glen Ayers, Honorable Carolyn Marks Johnson and Paul M. DeCicco served as Panelists.

Complainant requests that the domain name be transferred from Respondent to Complainant.

A. Complainant

B. Respondent

C. Additional Submissions

The Panel has argued the issues extensively. Each has reviewed the two prior determinations involving the USPS. First, United States Postal Service v. Consumer Information Organization, FA 95757 (Nat. Arb. Forum Nov. 27, 2000) held that the USPS had common law trademark rights to the term "post office" and went on to hold that "post-office.net" and "post-office.org" were either identical to that common law mark or were at lest identical and/or confusingly similar to those marks.

In the second USPS opinion, United States Postal Service v. Postoffice.com, Inc., FA 96313 (Nat. Arb. Forum Mar. 19, 2001), the panel also held that "postoffice" even when used as one word, was identical to the common law mark, "post office" held by USPS.

Two of the Panelists, R. Glen Ayers and Carolyn Marks Johnson, agree with earlier decisions and find that the USPS has a common law mark in the two words, "post office." Therefore, those two panelist find that the Complainant has made its initial burden of proof in showing that it holds a common law trademark in that the domain name "post-office.com" is confusingly similar to or identical to the common law mark.

Of course, common law marks receive the same protection under the Rules for Uniform Domain Dispute Resolution as do registered trademarks. See MatchNet TLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000).

Mr. DeCicco disagrees with this finding. Mr. DeCicco does not see that the USPS has presented sufficient evidence of common law rights in the mark "Post Office", which may on its face seems to be generic, or that such rights would extend world-wide.

As to rights and legitimate interest, Judge Johnson would point out the obvious: Because the term "post office" is widely understood to refer to USPS and its operations, it is very difficult to understand how Respondent could claim any legitimate right or interest in the use of the name. For example, Respondent is not generally known by the term "post office", and has made no use, commercial or otherwise, of the domain name. See e.g. Broadcom Corp. v. Intellifone Corp, FA 96356 (Nat. Arb. Forum Feb. 5, 2001). Further, Respondents have submitted no evidence of a legitimate business plan or use for the domain name, even in their supplemental response. In other words, to Judge Johnson, Respondents have submitted no "plausible explanation" for its claim of a right to use the domain name. See IG Index PLC v Index Trade, D2000-1124 (WIPO Oct. 16, 2000).

as that term is used at paragraph 4 (a) (iii) of the Policy. Paragraph 4(b) gives a non-exclusive list of examples of "bad faith", which include:

As to registration and use in bad faith, Mr. DeCicco would argue that Respondent could not have acted in bad faith because Respondent certainly shares his view that "post office" is generic or that there is no common law mark held by the USPS. This belief that the words are generic leads to a conclusion that Respondent could not have acted in bad faith in registering the words. Further, Mr. DeCicco asserts that: (1) There is no evidence of any attempt to sell or otherwise market the name; and (2) the alleged commercialization, that is the providing of links to search engines which in turn would enable a user of the Internet to go from Respondent’s web site to a search engine and from the search engine ultimately to USPS is not the sort of commercial use in bad faith that is typically found in such cases.

Mr. Ayers also has difficulty seeing the bad faith element in this case. There is little or no evidence offered of any bad faith use. Even if the use described by USPS is occurring, there is no evidence of that use.

To summarize the findings, Mr. Ayers and Judge Johnson find that the USPS holds a common law trademark, "post office", and that the domain name "post-office.com" is identical to or certainly confusingly similar to the common law mark. Although Mr. DeCicco agrees that the at-issue mark and the domain name sound identical and appear identical, does not believe that the USPS has presented sufficient evidence of the existence of a common law trademark, "post office", and thus he does not see that the issue of confusing similarity is ever reached.

The panelists believe that the Complainant has shown that Respondent has no rights or legitimate interest in the name. Respondent’s use of the name has been so limited and its business plan has been so truncated that it is very difficult to find for Respondent on this ground. Respondents’ pleadings give very little assistance in this regard.

Finally, while Judge Johnson, consistent with her earlier dissent in United States Postal Service v. Postoffice.com, Inc. would find that there is evidence of bad faith simply in the registration. Mr. Ayers and Mr. DeCicco cannot find adequate evidence of bad faith.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

Because two of the Panelists have found that the conduct of Respondent was not in "bad faith" as that term is used as ICANN Policy §4(a)(3) the relief requested is denied and the domain name will not be transferred.

Judge Carolyn Marks Johnson dissents, having determined that USPS holds a valid common law mark and that Respondent's conduct was in bad faith.

I respectfully dissent from the majority’s Decision in this case. The domain name at issue is <post-office.com>. It is my opinion that the Claimant met the burden required and that Complainant United States Postal Service should prevail and that the domain name registered by Respondent Reflex Publishing should be transferred to the Complainant for the following reasons:

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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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 met all three prongs of this burden.

Complainant established its rights under federal law to use the mark United States Postal Service under 18 U.S.C. 1729. Further Complainant has been commonly known since the beginning of its service to the country more than two centuries ago as the POST OFFICE.

Complainant contends that the domain name in question is identical to its common law trademark POST OFFICE. I agree. See United States Postal Service v. Consumer Info. Org., FA 95757 (Nat. Arb. Forum Nov. 27, 2000) (finding Complainant has common law rights in the term POST OFFICE). See also Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding "that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); Nintendo Of America Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar the Complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words).

Complainant also contends that Respondent’s domain name is confusingly similar to Complainant’s registered trademark UNITED STATES POST OFFICE. I also agree to this point. See also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding common law rights in the mark BIBBERO as the Complainant, Bibbero Systems, Inc (Complainant owns a trademark for its full company name) had developed brand name recognition with the BIBBERO term by which the Complainant is commonly known); see also Hammond Suddards Edge v. Westwood Guardian Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the domain name, "hammondsuddards.net," is essentially identical to the Complainant's mark, Hammond Suddards Edge, where the name "Hammond Suddards" identifies the Complainant independently of the word "Edge").

Complainant also urges that Respondent’s domain name is so confusingly similar a reasonable Internet user would assume that the domain name is somehow affiliated with Complainant’s well-established mark. I agree with this as well. See Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding the domain name confusingly similar "so as to likely confuse Internet users who may believe they are doing business with Complainant or with an entity whose services are endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying the confusing similarity requirement").

Although it is urged that Interactive Television Corp. v. Noname.com, D2000-0358 (WIPO June 26, 2000) supports the Respondent’s position, the Panel in that case held that "serious questions as to whether Complainant has any proprietary rights require us to reject Complainant’s claim. The ultimate decision as to whether Complainant does or does not have proprietary rights is better left to a court or trademark office tribunal.". One purpose of arbitrating these disputes is to protect the parties from prolonged litigation where possible and bring an orderly system of resolution to domain name disputes using ICANN policies and procedures to which the parties have agreed to be bound. That case also is distinguishable because the case did not involve the United States Postal Service, its common law mark Post Office, and a domain name that presents itself as being different because it adds a hyphen between post and office.

Respondent also claimed that the terms contained in the domain name are generic. There is support in the Decisions for this position. See Rollerblade, Inc. v. CBNO, D2000-0427 (WIPO Aug. 24, 2000) (finding that "genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration"); see also SportSoft Golf, Inc. v. Sites to Behold Ltd., FA 94976 (Nat. Arb. Forum July 27, 2000) (finding that the disputed domain name, golfsociety.com, is neither identical to nor confusingly similar to complainant’s trademark because the trademark links together two generic words – golf and society -- with a geographic entity, the United States). What is generic about post and office is the general way in which the population views them when they are separated. When the two words are juxtaposed, however, it is clear that post office, with or without the hyphen, has a meaning that the general public commonly associates with the delivery of mail in this country and abroad.

Complainant has shown and I would find that Respondent’s domain name is identical to and confusingly similar to Complainant’s well-know common law mark. Policy ¶ 4(a)(i).

Complainant established its rights to use the United States Postal Service name and the common law mark, Post Office. Complainant contends that Respondent has no legitimate interest in the domain name and that because Respondent’s web site diverts consumers searching for Complainant’s sites, Respondent is not making a bona fide use of the disputed domain name. See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights and legitimate interests where the Respondent diverted Complainant’s customers to his web sites).

Complainant also urges that Respondent is not generally known by the term "post-office," has made no commercial or noncommercial use of the domain name, and therefore, has no rights in the domain name that contains Complainant’s common law mark. Broadcom Corp. v Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests in a Respondent not commonly known by the disputed domain name and not using the domain name in connection with a legitimate or fair use).

Complainant further contends that Respondent has no rights in the mark contained within the domain name because Respondent offered no evidence of having a legitimate business plan or use for the domain name. See AT&T Corp. v. Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests where Respondent does not provide any documentation on the existence of this company that might show what the company’s business was, or how the company’s years of existence, if it ever existed, might mesh with Complainant’s trademark claims); see also Woolworths PLC. v. Anderson, D2000-1113 (Oct. 10, 2000) (finding that absent any evidence of preparation to use the domain name for any legitimate purpose, the burden of proof lies with the Respondent to demonstrate that he has rights or legitimate interests).

Respondent countered that Complainant has a burden of showing Respondent’s intent to mislead Internet users by diverting those who seek to access the United States Postal Service to Respondent’s web site in order to gain commercially or in order to tarnish the Complainant’s mark. In fact, Respondent’s intent may be presumed where Respondent knows that the domain name Respondent filed contains the mark of another and that it causes confusion among users of the Internet or creates confusion about the source or sponsorship of the domain name. Policy 4(a)(iii). Respondent’s knowledge may also be presumed in this case because Respondent cannot claim lack of knowledge that the United States Postal Service has been commonly known as the Post Office since shortly after the origin of the country more than two hundred years ago. Further, if Respondent’s business plan, using a well-known mark, is in harmony with ICANN Rules, then those who seek to preserve trademarks throughout the world should be on the alert. The ICANN Decisions are replete with the unfounded dreams of planners who have registered domain names for business plans that contain the well-known marks of folks such as McDonalds, Hewlett Packard and Julia Roberts. The case of IG Index PLC v Index Trade, D2000-1124 (WIPO Oct. 16, 2000) requires the Panelists to give weight to a Respondent’s "plausible explanation" as to use or anticipated use, it does not invite Panelists to legitimize pipe-dreams using the well-known mark of another and I would think that this applies with extra emphasis where the planned enterprise seeks to confuse users of governmental services. Even Shirmax Retail Ltd. v. CES Marketing, Inc., AF-0104 (eResolution Mar. 20, 2000) recognized that a first issue is that the name used be genuinely generic. While a post is a post and while to post may be an athletic term, a domain name that invites users to the post office suggests an identifiable and distinguishable designation. And the Shirmax Panel noted that the enterprise must not "mislead consumers" or "tarnish a trademark".

Respondent contended that Complainant does not have exclusive rights to the term "post office." Respondent’s own domain name defeats this argument. Had Respondent not known that Respondent was invading the rights of the United States Postal Service, Respondent probably would not have seen fit to add the hyphen to the domain name in issue that contains Complainant’s common law mark.

Complainant established rights to and legitimate interests in the Post Office mark. I would find that Respondent’s Post-Office.com domain name infringes on Complainant’s mark. I would further find that Respondent has shown no legitimate right to or interest in the Post Office mark contained within the disputed domain name. Policy ¶ 4(a)(ii).

Given the more than two centuries in which the United States Postal Service has operated the country’s post office, Respondent knew or should have known of Complainant’s rights in the POST OFFICE mark. See Nintendo of America Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that Respondent, at the time of registration, had notice of Complainant’s famous POKÉMON and PIKACHU trademarks given their extreme popularity). Complainant contends that Respondent’s use of the domain name for a revenue producing web site evidences opportunistic bad faith and I agree. See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the Respondent linked the domain name to another website <iwin.com>, presumably, the Respondent received a portion of the advertising revenue from site by directing Internet traffic to the site, thus using a domain name to attract Internet users, for commercial gain).

Respondent claims to have registered the domain name in good faith and also claims to be using the domain name in good faith by not competing with Complainant or offering to sell the domain name. See Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain name involves a generic term and there is no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest).

A confusing dual line of cases may be emerging in this area, especially in those instances in which the United States Postal Service seeks to protect the rights that Congress has given it. See United States Postal Service v. Postoffice.com, Inc., FA 96313 (Nat. Arb. Forum Mar. 19, 2001) (finding no bad faith where the domain name was not registered with the intent to confuse, does not currently cause confusion with Complainant’s marks, services, or domain names, and where Respondent did not register the domain name with the intent to sell). It may be up to a federal court or Congress to provide the bright line rule for these disputes. However, Complainant met its requirements under ICANN Rules and there is no justification for putting the United States Postal Service to the extra burden of filing a lawsuit for trademark infringement or to require the taxpayers to support the purchase of this domain name. Complainant presented evidence sufficient to support bad faith in two areas: Respondent’s domain name creates confusion among Internet users who access the domain name expecting to access the United States Postal Service and Respondent’s domain name creates confusion as to the origin, source or sponsorship of the service. Either is sufficient to show bad faith. Complainant is entitled to prevail in this domain name dispute. Policy ¶ 4(a)(iii).