United States Postal Service v. chen zhixiong / chenzhixiong
Claim Number: FA1801001765329
Complainant is United States Postal Service (“Complainant”), represented by Jennifer A. Van Kirk of Lewis Roca Rothgerber Christie LLP, Arizona, USA. Respondent is chen zhixiong / chenzhixiong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue are <vteddm.com>, <wyeddm.com>, <wveddm.com>, <wieddm.com>, <vaeddm.com>, <uteddm.com>, <tneddm.com>, <nceddm.com>, <mseddm.com>, <moeddm.com>, <mneddm.com>, <laeddm.com>, <kyeddm.com>, <kseddm.com>, <ineddm.com>, <ideddm.com>, <iaeddm.com>, <hieddm.com>, <deeddm.com>, <coeddm.com>, <ndeddm.com>, <areddm.com>, <aleddm.com>, <sdeddm.com>, <sceddm.com>, <oreddm.com>, <okeddm.com>, <nveddm.com>, <nmeddm.com> and <nheddm.com> registered with 1API GmbH.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 3, 2018; the Forum received payment on January 3, 2018.
On January 05, 2018, 1API GmbH confirmed by e-mail to the Forum that the <vteddm.com>, <wyeddm.com>, <wveddm.com>, <wieddm.com>, <vaeddm.com>, <uteddm.com>, <tneddm.com>, <nceddm.com>, <mseddm.com>, <moeddm.com>, <mneddm.com>, <laeddm.com>, <kyeddm.com>, <kseddm.com>, <ineddm.com>, <ideddm.com>, <iaeddm.com>, <hieddm.com>, <deeddm.com>, <coeddm.com>, <ndeddm.com>, <areddm.com>, <aleddm.com>, <sdeddm.com>, <sceddm.com>, <oreddm.com>, <okeddm.com>, <nveddm.com>, <nmeddm.com> and <nheddm.com> domain names are registered with 1API GmbH and that Respondent is the current registrant of the names. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 January 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2018 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@vteddm.com, postmaster@wyeddm.com, postmaster@wveddm.com, postmaster@wieddm.com, postmaster@vaeddm.com, postmaster@uteddm.com, postmaster@tneddm.com, postmaster@nceddm.com, postmaster@mseddm.com, postmaster@moeddm.com, postmaster@mneddm.com, postmaster@laeddm.com, postmaster@kyeddm.com, postmaster@kseddm.com, postmaster@ineddm.com, postmaster@ideddm.com, postmaster@iaeddm.com, postmaster@hieddm.com, postmaster@deeddm.com, postmaster@coeddm.com, postmaster@ndeddm.com, postmaster@areddm.com, postmaster@aleddm.com, postmaster@sdeddm.com, postmaster@sceddm.com, postmaster@oreddm.com, postmaster@okeddm.com, postmaster@nveddm.com, postmaster@nmeddm.com, and postmaster@nheddm.com. Also on January 5, 2018, 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 January 30, 2018, 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <vteddm.com>, <wyeddm.com>, <wveddm.com>, <wieddm.com>, <vaeddm.com>, <uteddm.com>, <tneddm.com>, <nceddm.com>, <mseddm.com>, <moeddm.com>, <mneddm.com>, <laeddm.com>, <kyeddm.com>, <kseddm.com>, <ineddm.com>, <ideddm.com>, <iaeddm.com>, <hieddm.com>, <deeddm.com>, <coeddm.com>, <ndeddm.com>, <areddm.com>, <aleddm.com>, <sdeddm.com>, <sceddm.com>, <oreddm.com>, <okeddm.com>, <nveddm.com>, <nmeddm.com> and <nheddm.com> domain names (the “disputed domain names”) are confusingly similar to Complainant’s EDDM mark.
2. Respondent does not have any rights or legitimate interests in the disputed domain names.
3. Respondent registered and uses the disputed domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, the United States Postal Service, uses its EDDM mark, which stands for “Every Door Direct Mail,” in connection with mailing and marketing services. Complainant has registered the EDDM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,144,233, registered May 15, 2012).
Respondent registered the disputed domain names on November 18, 2017, and uses them to resolve to a pornographic 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.”).
The Panel finds that Complainant has demonstrated rights in the EDDM mark for purposes of Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <vteddm.com>, <wyeddm.com>, <wveddm.com>, <wieddm.com>, <vaeddm.com>, <uteddm.com>, <tneddm.com>, <nceddm.com>, <mseddm.com>, <moeddm.com>, <mneddm.com>, <laeddm.com>, <kyeddm.com>, <kseddm.com>, <ineddm.com>, <ideddm.com>, <iaeddm.com>, <hieddm.com>, <deeddm.com>, <coeddm.com>, <ndeddm.com>, <areddm.com>, <aleddm.com>, <sdeddm.com>, <sceddm.com>, <oreddm.com>, <okeddm.com>, <nveddm.com>, <nmeddm.com> and <nheddm.com> domain names incorporate the EDDM mark and merely add a state abbreviation and the “.com” gTLD to the mark. Adding geographic terms and gTLDs to a complainant’s mark does not eliminate confusing similarity with the mark. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”). Respondent adds the state geographic terms “vt,” “wy,” “wv,” “wi,” “va,” “ut,” “tn,” “nc,” “ms,” “mo,” “mn,” “la,” “ky,” “ks,” “in,” “id,” “ia,” “hi,” “de,” “co,” “nd,” “ar,” “al,” “sd, “sc,” “or,” “ok,” “nv,” “nm,” and “nh” and the “.com” gTLD to Complainant’s EDDM mark. Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s EDDM 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 claims Respondent has no rights or legitimate interests in the <vteddm.com>, <wyeddm.com>, <wveddm.com>, <wieddm.com>, <vaeddm.com>, <uteddm.com>, <tneddm.com>, <nceddm.com>, <mseddm.com>, <moeddm.com>, <mneddm.com>, <laeddm.com>, <kyeddm.com>, <kseddm.com>, <ineddm.com>, <ideddm.com>, <iaeddm.com>, <hieddm.com>, <deeddm.com>, <coeddm.com>, <ndeddm.com>, <areddm.com>, <aleddm.com>, <sdeddm.com>, <sceddm.com>, <oreddm.com>, <okeddm.com>, <nveddm.com>, <nmeddm.com> and <nheddm.com> domain names because Respondent is not licensed or authorized to use Complainant’s EDDM mark and is not commonly known by any of the disputed domain names. The WHOIS information for the disputed domain names identify Respondent as “chen zhixiong / chenzhixiong.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Complainant asserts that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use at the disputed domain names because Respondent uses the disputed domain names to direct users to an adult-oriented website. Using a disputed domain name to feature adult-oriented material does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”). The Panel notes that each of Respondent’s disputed domain names features the same pornographic material, and finds that this does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s <vteddm.com>, <wyeddm.com>, <wveddm.com>, <wieddm.com>, <vaeddm.com>, <uteddm.com>, <tneddm.com>, <nceddm.com>, <mseddm.com>, <moeddm.com>, <mneddm.com>, <laeddm.com>, <kyeddm.com>, <kseddm.com>, <ineddm.com>, <ideddm.com>, <iaeddm.com>, <hieddm.com>, <deeddm.com>, <coeddm.com>, <ndeddm.com>, <areddm.com>, <aleddm.com>, <sdeddm.com>, <sceddm.com>, <oreddm.com>, <okeddm.com>, <nveddm.com>, <nmeddm.com> and <nheddm.com> domain names divert users and create confusion, presumably for commercial gain. Creating user confusion for commercial gain disrupts Complainant’s business and constitutes bad faith under both Policy ¶¶ 4(b)(iii) and (iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). Complainant demonstrates that the disputed domain names resolve to a pornographic website, presumably for financial gain. Therefore, the Panel finds that Respondent’s disputed domain names create user confusion and disrupt Complainant’s business in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues further that Respondent’s use of the disputed domain names to feature adult-oriented material is indicative of bad faith registration and use. The Panel agrees and finds that Respondent’s use of the disputed domain names to feature adult-oriented material constitutes bad faith registration and use per Policy ¶ 4(a)(iii). See Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”).
Complainant argues that Respondent was fully aware of Complainant’s rights in the EDDM at the time Respondent registered the disputed domain names and this indicates bad faith registration and use. Complainant claims its fame and notoriety are sufficient to demonstrate the inherent probability that Respondent knew of Complainant’s rights in the EDDM mark. The Panel agrees, noting the repeated use of the full EDDM mark, and finds that Respondent had actual notice of Complainant’s rights when it registered the disputed domain names, further evidence of bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
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 <vteddm.com>, <wyeddm.com>, <wveddm.com>, <wieddm.com>, <vaeddm.com>, <uteddm.com>, <tneddm.com>, <nceddm.com>, <mseddm.com>, <moeddm.com>, <mneddm.com>, <laeddm.com>, <kyeddm.com>, <kseddm.com>, <ineddm.com>, <ideddm.com>, <iaeddm.com>, <hieddm.com>, <deeddm.com>, <coeddm.com>, <ndeddm.com>, <areddm.com>, <aleddm.com>, <sdeddm.com>, <sceddm.com>, <oreddm.com>, <okeddm.com>, <nveddm.com>, <nmeddm.com> and <nheddm.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin Panelist
Dated: January 31, 2018
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