United States Postal Service v. Domain Administrator
Claim Number: FA1504001612807
Complainant is United States Postal Service (“Complainant”), represented by Nathaniel Edwards of Lewis Roca Rothgerber LLP, Arizona, USA. Respondent is Domain Administrator (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myusps.com>, registered with 1&1 Internet AG.
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 Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 2, 2015; the Forum received payment on April 2, 2015.
On April 8, 2015, 1&1 Internet AG confirmed by e-mail to the Forum that the <myusps.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 April 9, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 2015 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@myusps.com. Also on April 9, 2015, 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 May 12, 2015, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
i. Complainant owns the USPS mark through its numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,423,574, registered January 23, 2001).
ii. Complainant uses the USPS mark in connection with its business as a postal service.
i. Policy ¶ 4(a)(i)
1. The <myusps.com> domain name is confusingly similar to Complainant’s USPS mark, because Respondent has simply attached the generic term “my” to the mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights and legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the disputed domain name. Further, Complainant has never licensed or authorized Respondent to use any of Complainant’s marks.
3. Respondent has not provided a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name.
4. Respondent uses the disputed domain name to redirect Internet users to Complainant’s own website.
iii. Policy ¶ 4(a)(iii)
1. Respondent’s registration of such a similar domain name disrupts Complainant’s business, as it keeps Complainant from being able to register the domain name.
2. Due to the fame of Complainant and its marks, Respondent must have had actual and/or constructive knowledge of Complainant and its rights in the USPS mark.
a. Also shown by Respondent’s use of the disputed domain name in resolving to Complainant’s own website.
3. Respondent uses the disputed domain name to redirect Internet users to Complainant’s own website.
2. Respondent failed to submit a Response.
1. Respondent’s <myusps.com> domain name is confusingly similar to Complainant’s USPS mark.
2. Respondent does not have any rights or legitimate interests in the <myusps.com> domain name.
3. Respondent registered or used the <myusps.com> domain name in bad faith.
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(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.”).
Complainant uses the USPS mark in connection with its business as a postal service. Complainant claims to own the USPS mark through its numerous trademark registrations with the USPTO (e.g., Reg. No. 2,423,574, registered January 23, 2001). Previous panels have found that registrations with a trademark authority, such as the USPTO, properly demonstrate rights in a mark pursuant to Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark). Accordingly, the Panel finds that Complainant has rights in the USPS mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <myusps.com> domain name is confusingly similar to Complainant’s USPS mark, because Respondent has simply attached the generic term “my” to the mark. The Panel notes that the disputed domain name also differs from Complainant’s USPS mark by the affixation of the generic top-level domain (“gTLD”) “.com.” Previous panels have generally found that the additions of a generic term and a gTLD do not allow a disputed domain name to escape the realm of confusingly similarity under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark). As such, the Panel finds that the <myusps.com> domain name is confusingly similar to Complainant’s USPS mark pursuant to Policy ¶ 4(a)(i).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
It is Complainant’s position that Respondent lacks rights and legitimate interests in the disputed domain name. In so arguing, Complainant alleges that Respondent is not commonly known by the <myusps.com> domain name. Further, Complainant urges that Respondent has never been licensed or authorized to use any of Complainant’s marks. The Panel notes that “Domain Administrator” is listed as the registrant of the disputed domain name. The Panel recalls that Respondent has failed to submit any response to rebut any of Complainant’s contentions. Given the lack of information to conclude otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name according to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Complainant claims that Respondent uses the disputed domain name to redirect Internet users to Complainant’s own website. Generally, panels have found that such a use indicates that the respondent lacks rights and legitimate interests under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Nat. Arb. Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). Thus, the Panel finds that Respondent’s behavior is not consistent with a bona fide offering of goods and services, or a legitimate noncommercial or fair use of the disputed domain name according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
Complainant argues that Respondent has registered and is using the disputed domain name in bad faith. First, Complainant argues that Respondent’s registration of the disputed domain name so closely resembles mark and it disrupts Complainant’s business, because it doesn’t allow Complainant to register a similar domain name. Typically, panels look to find a competitive element in order to find that a respondent has disrupted the complainant’s business. However, the Panel agrees with Complainant’s argument, and finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iii).
Complainant argues that due to the fame of Complainant and its marks, it is inconceivable that Respondent registered the disputed domain name without actual and/or constructive knowledge of Complainant and its marks. To further bolster this argument, Complainant has argued that Respondent uses the disputed domain name to redirect Internet users to Complainant’s own website, which would also indicate some type of knowledge of Complainant and its marks. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name")."
Finally, Complainant argues that Respondent’s use of the disputed domain name to redirect Internet users to Complainant’s own website indicates bad faith under Policy ¶ 4(a)(iii). Panels have typically agreed with this argument. See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Nat. Arb. Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”). Consequently, the Panel finds that Respondent’s actions again indicate 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 <myusps.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 22, 2015
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