United States Postal Service v. Tulip Trading Company
Claim Number: FA1805001786192
Complainant is United States Postal Service (“Complainant”), represented by Jennifer A. Van Kirk of Lewis Roca Rothgerber Christie LLP, Arizona. Respondent is Tulip Trading Company (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <certifiedmailinglabels.com>, registered with Key-Systems GmbH.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 11, 2018; the Forum received payment on May 11, 2018.
On May 15, 2018, Key-Systems GmbH confirmed by e-mail to the Forum that the <certifiedmailinglabels.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems 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 May 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 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@certifiedmailinglabels.com. Also on May 21, 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 June 12, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
A. Complainant
Complainant contends as follows:
Complainant, the United States Postal Service is the second oldest department or agency of the United States of America.
Complainant has rights in the CERTIFIED MAIL mark based upon its registration of the marks with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <certifiedmailinglabels.com> domain name is confusingly similar to Complainant’s CERTIFIED MAIL mark, as Respondent incorporates the CERTIFIED MAIL mark (changes “mail” to “mailing”) in its entirety and merely adds the descriptive term “labels” and the “.com” generic top-level domain (“gTLD”) to the mark.
Respondent has no rights or legitimate interests in the in the <certifiedmailinglabels.com> domain name. Respondent is not authorized or licensed to use Complainant’s CERTIFIED MAIL mark and is not commonly known by the disputed domain name. Additionally, Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, the domain name resolves to a parked webpage with click-through ads.
Respondent registered and is using the <certifiedmailinglabels.com> domain name in bad faith. Respondent engages in a pattern of bad faith registration as Respondent has a history of adverse UDRP decisions against it. Furthermore, Respondent attempts to divert users to the <certifiedmailinglabels.com> domain name addressed website, for commercial gain, by generating revenue through a pay-per-click advertising scheme. Respondent also registered the disputed domain name through a privacy service. Finally, Respondent uses the disputed domain name in furtherance of a phishing scheme by which it collects private information and installs malware.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the CERTIFIED MAIL mark through its registration of such marks with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to address a website which offers pay-per-click links.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO registration for the CERTIFIED MAIL mark demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register …, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s <certifiedmailinglabels.com> domain name contains Complainant’s CERTIFIED MAIL mark less its space and with “ing” added to “mail” thereby creating a gerund form of “mail.” The domain name concludes with term “labels” and the top-level domain name “.com.” These alterations to Complainant’s trademark are insufficient to distinguish the at-issue domain name from Complainant’s mark for the purposes of the Policy ¶ 4 (a)(i). In fact, the use of the term “labels” suggests Complainant’s mail related services and thus only adds to any confusion resulting from the inclusion of Complainant’s trademark in the domain name. Therefore, the Panel finds that Respondent’s <certifiedmailinglabels.com> domain name is confusingly similar to Complainant’s CERTIFIED MAIL trademark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent is not authorized to use Complainant’s trademark in any capacity and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Tulip Trading Company / Tulip Trading Company.” The record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that for the purposes of Policy ¶ 4(c)(ii) Respondent is not commonly known by the <certifiedmailinglabels.com> domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent uses the domain name to feature hyper-links to entities in competition with Complainant and also in furtherance of a phishing scheme whereby Respondent pretends to offer technical support when in fact it is only attempting to misappropriate confidential information and sell bogus services to website visitors. To wit, Respondent’s website presents a prompt directing website visitors to enter their username and password into a pop-up window labeled “Windows Security.” Respondent’s <certifiedmailinglabels.com> website also issues a message informing the visitor that his or her computer is infected with spyware and alters the normal behavior of the visitor’s computer. Respondent’s scheme is ultimately aimed at garnering personal information and selling fraudulent tech support services. The circumstances described above are indicative of neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also, Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <uspstrackingus.com> domain name was registered and used in bad faith. As discussed below without limitation, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Complainant shows that Respondent has been subject to multiple adverse UDRP decisions. Respondent’s pattern of past cybersquatting suggests bad faith in the instant case pursuant to Policy ¶ 4(b)(ii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“Complainant has provided evidence that Respondent has a history of UDRP and USDRP decisions decided against it. This establishes bad faith within the meaning of Policy ¶ 4(b)(ii).”).
Next and as mentioned above regarding rights and legitimate interests, Respondent uses the at-issue domain name to present links to third-party commercial websites at least some of which are in competition with Complainant. Such use indicates Respondent’s bad faith per Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)); see also Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
Additionally and also mentioned above, Respondent is using the <certifiedmailinglabels.com> domain name to facilitate a phishing scheme whereby website visitors are tricked into giving up confidential information and further misled into purchasing fraudulent support service. Using the domain name to facilitate a phishing scheme is further evidence of Respondent’s bad faith registration and use of <certifiedmailinglabels.com>. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)).
Finally, Respondent registered the <certifiedmailinglabels.com>domain name knowing that Complainant had trademark rights in CERTIFIED MAIL. Respondent’s prior knowledge is evident from Respondent’s use of the <certifiedmailinglabels.com> domain name as discussed above, as well as from the notoriety of Complainant’s CERTIFIED MAIL trademark. It is therefore clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <certifiedmailinglabels.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <certifiedmailinglabels.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 13, 2018
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