United States Postal Service v. Pete Smith
Claim Number: FA1505001618511
Complainant is United States Postal Service (“Complainant”), represented by Nathaniel Edwards of Lewis Roca Rothgerber LLP, Arizona, USA. Respondent is Pete Smith (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usps.us>, registered with eNom, Inc..
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically May 8, 2015; the Forum received payment May 8, 2015.
On May 11, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <usps.us> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. verified that Respondent is bound by the eNom, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 15, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 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@usps.us. Also on May 15, 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 June 10, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson, to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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’s Contentions in this Proceeding:
1. Policy ¶ 4(a)(i)
a. Complainant has rights in the USPS mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2, 423,574, registered on January 23, 2001.
b. Respondent’s <usps.us> domain name is identical to Complainant’s USPS mark because it is differentiated only by the country-code top-level domain (“ccTLD”) “.us.”
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the disputed domain name, as the WHOIS information available lists “Pete Smith” as Registrant. Respondent has failed to submit further evidence to indicate being commonly known by the disputed domain name.
b. Respondent lacks rights in a mark that is identical to the disputed domain name.
c. Respondent fails to provide a bona fide offering of goods or services because the resolving website displays pay-per-click advertising linked to third-party websites.
3. Policy ¶ 4(a)(iii)
a. Respondent uses the resolving website to host pay-per-click links, thereby intentionally attracting Internet users to its own website for commercial gain.
b. Respondent registered the <usps.us> domain name with actual knowledge of Complainant’s rights in the USPS mark.
B. Respondent’s Contentions In This Proceeding:
Respondent did not submit a formal response in this proceeding.
The Panel notes that Respondent created the <usps.us> domain name January 25, 2006, some long years after the United States Government and its predecessor association of colonies created the entity that became the United States Post Office and its system of services.
Complainant established legal rights and legitimate interests in the mark contained within the disputed domain name that is identical to Complainant’s protected mark.
Respondent has no rights or legitimate interests in the mark or domain name.
Respondent registered and used the disputed 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 Complainant to 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 was registered and is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
With 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant is the United States Postal Service. Complainant alleges it has rights in the USPS mark through registration with the USPTO (Reg. No. 2, 423,574, registered on January 23, 2001). Past panels have found registration with the USPTO sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Registration in the country in which a respondent operates is not required, so long as rights can be demonstrated somewhere. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, the Panel finds that Complainant has rights in the USPS mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <usps.us> domain name is identical to Complainant’s USPS mark because it is differentiated only by the ccTLD “.us.” Domain names and marks are identical when only differentiated by the ccTLD “.us.” See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark). Accordingly, the Panel finds that Respondent’s <usps.us> domain name is identical to Complainant’s USPS mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered an identical domain name containing Complainant’s protected mark; Complainant satisfied the elements of usTLD Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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.”).
Complainant alleges that Respondent is not commonly known by the disputed <usps.us> domain name. The Panel notes that the WHOIS information available lists “Pete Smith” as Registrant and Respondent failed to submit further evidence to indicate that Respondent could be commonly known by the disputed domain name. Such discrepancies between domain names and registrant information suffice to show that respondents are not commonly known by the domain name under Policy ¶ 4(c)(iii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”). Accordingly, the Panel finds that Respondent is not commonly known by the <usps.us> domain name pursuant to Policy ¶ 4(c)(iii).
Complainant alleges that Respondent lacks rights in a mark that is identical to the disputed domain name, which is required under USDRP Policy ¶ 4(c)(i). The Panel notes that Respondent has not submitted any indication that it has rights in such a mark. Past panels have found this lack of evidence of such rights sufficient to show a lack of such rights under Policy¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name). Accordingly, the Panel finds that Respondent lacks such rights under Policy ¶ 4(c)(i).
Complainant alleges that Respondent fails to provide evidence of a bona fide offering of goods or services because the resolving website displays pay-per-click advertising linked to third-party websites. Complainant provided evidence of this use in Exhibits 3 and 4. Operation of a pay-per-click website on a confusingly similar domain name demonstrates a lack of bona fide offering or noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). That would certainly apply to one that is identical to the protected mark. The Panel finds Complainant’s evidence sufficient to show pay-per-click use, and thus finds that Respondent fails to provide proof of any use as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii) and Policy ¶ 4(c)(iv).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name containing Complainant’s mark in its entirety; Complainant satisfied the elements of usTLD Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
First, Complainant argues that Respondent’s use of the disputed domain name disrupts Complainant’s business, which is evidence of bad faith under Policy ¶ 4(b)(iii). To support this contention, Complainant notes that Respondent uses the disputed domain name to host pay-per-click hyperlinks that redirect Internet users to websites of Complainant’s competitors. See Compl., at attached Ex. 3-4. Previous panels have agreed with such an argument. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). Consequently, the Panel finds that Respondent acted in bad faith under Policy ¶ 4(b)(iii).
Similarly, Complainant alleges that Respondent uses the resolving website to host pay-per-click links, thereby intentionally attracting Internet users to its own website for commercial gain. Complainant provided Exhibits 3 and 4 to demonstrate this use. Past panels have found that use of a complainant’s mark to direct Internet traffic to a commercial “links page” to generate revenue constitutes bad faith under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). The Panel finds Complainant’s evidence sufficient to show Respondent attempts to attract Internet users for commercial gain, and thus finds that Respondent registered and uses the <usps.us> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant further alleges that Respondent registered the <usps.us> domain name with actual knowledge of Complainant’s rights in the USPS mark. Complainant argues that because it operates as part of the United States government, and is responsible for the delivery of 40% of the world’s mail, its USPS mark is so well known that it is inconceivable for Respondent to have registered the <usps.us> domain name without knowing of Complainant’s rights. Past panels have found that actual knowledge of a complainant’s rights in a mark are sufficient to show bad faith registration and use. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). This Panel finds that based on the well-known nature of the postal service operation and Respondent’s abusive use that Respondent had actual knowledge of Complainant’s rights in the USPS mark, and thus finds Respondent registered and uses the <usps.us> domain name in bad faith under Policy ¶ 4(a)(iii)
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of usTLD Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <usps.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 24, 2015.
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