United States Postal Service v. mike johnson
Claim Number: FA1805001788564
Complainant is United States Postal Service (“Complainant”), represented by Jennifer A. Van Kirk of Lewis Roca Rothgerber Christie LLP, Arizona, USA. Respondent is mike johnson (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <uspscourierdelivery.com>, registered with Hostinger, UAB.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 24, 2018; the Forum received payment on May 24, 2018.
On May 27, 2018, Hostinger, UAB confirmed by e-mail to the Forum that the <uspscourierdelivery.com> domain name is registered with Hostinger, UAB and that Respondent is the current registrant of the name. Hostinger, UAB has verified that Respondent is bound by the Hostinger, UAB 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 June 4, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@uspscourierdelivery.com. Also on June 4, 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 27, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Trademark/Service Mark Information:
This Complaint is based upon Complainant’s USPS® trademark (the “Mark”). UDRP Rule 3(b)(viii).
• Complainant has used its USPS® mark throughout the U.S. and around the world for more than forty-six years in connection with a wide array of products and services, including packaging, domestic and international mailing and shipping services, tracking of documents and parcels, express mailing and shipping services, electronic cash and financial transactions, retail store services, philatelic products, passport application services, postcards, envelopes, stationery, novelty items, and other merchandise.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
GENERAL ALLEGATIONS
1. The Domain Name is confusingly similar to the Mark. UDRP 4(a)(i). The Domain Name combines Complainant’s famous and federally registered USPS® mark with the highly descriptive terms “courier” and “delivery” and the requisite gTLD.
2. Respondent has no rights or legitimate interests in the Domain Name. UDRP 4(a)(ii). Respondent is not named USPS, USPS Courier Delivery, or commonly known by those names, nor could it be because Complainant owned the exclusive right to use the Mark for decades prior to Respondent’s registration of the Domain Name on February 13, 2018. Thus, Respondent’s clear intent in registration and use of the Domain Name is to trade off Complainant’s goodwill in the Mark.
3. The Domain Name was registered and is being used in bad faith. UDRP 4(a)(iii). The Mark is famous throughout the United States and around the world. The website at the Domain Name (the “Website”) displays several of Complainant’s federally registered trademarks, including its UNITED STATES POSTAL SERVICE® mark, PRIORITY MAIL® mark, and the Sonic Eagle Design. Further, the Website prominently displays an image of a woman in a delivery uniform carrying a box prominently displaying Complainant’s marks. Even further, the Title bar for the Website includes Complainant’s Sonic Eagle design and states “Home | USPS.” Respondent was obviously familiar with the Mark and Complainant’s rights in the Mark prior to registering the Domain Name.
4. Complainant offers, inter alia, mailing and shipping services through a mail delivery workforce, i.e., through a fleet of mail couriers. For example, the James Farley Post Office in New York City has the following well-known inscription: “Neither snow nor rain nor heat nor gloom of night stays these couriers from the swift completion of their appointed rounds.”
5. Visitors to the Respondent’s Website likely have entered the Domain Name or searching on some phrase including the Mark and “courier” or “delivery,” terms directly associated with Complainant’s business, with the expectation that the resulting site will be Complainant’s official website, when it is not.
6. The Website content reinforces visitors’ mistaken expectation. The homepage prominently displays an image of a woman in uniform carrying a box clearly marked with Complainant’s trademarks, including its Sonic Eagle design and PRIORITY MAIL® mark, and at the footer of the page displays Complainant’s UNITED STATES POSTAL SERVICE® mark. Further, the Title bar depicts Complainant’s Sonic Eagle design and states “Home | USPS.” Below are screenshots of the Website captured on May 10, 2018.
[pictures omitted]
7. Therefore, Respondent’s registration and use of the Domain Name misdirects consumers seeking Complainant, disrupts Complainant’s business, deprives Complainant of the ability to control how its Mark is used, tarnishes Complainant’s famous USPS® mark, and risks irreparable damage to Complainant’s reputation and goodwill.
[a.] The Domain Name is Confusingly Similar to the Mark
i. Complainant’s Trademark Rights
8. As set forth below, Complainant has longstanding rights in the USPS® trademark.
Origins of the United States Postal Service
9. The Post Office Department, the predecessor of Complainant the United States Postal Service, and the second oldest department or agency of the United States of America, was founded on July 26, 1775 when the Continental Congress appointed Benjamin Franklin Postmaster General.
10. Complainant has been known by the name USPS® since at least 1971, when the Post Office Department was transformed into the UNITED STATES POSTAL SERVICE®. As established by Title 39 of the U.S. Code under the Postal Reorganization Act, Complainant is an independent establishment of the executive branch of the United States Government, though it receives no tax revenue for funding its operations.
11. Complainant serves millions of customers daily and sets the global industry standard for mailing and shipping related goods and services. Complainant delivers forty-seven percent (47%) of the world’s mail. In 2016, Complainant processed 153.9 billion pieces of mail.
12. Over the past two centuries, Complainant has built a reputation for quality and performance in the United States and in almost every country in the world. Complainant has frequently been included in the Ponemon Institute’s annual top ten list of the most trustworthy companies in the U.S.; received the highest approval rating of any federal agency in a 2014 Gallup poll; and was ranked the most trusted federal agency in a 2015 Pew Research Center poll.
13. Complainant operates its primary website at the domain name USPS.COM®, from which it offers a wide variety of products and services; other mailing and shipping services; postage and shipping supplies; passport application services; Zip Code™ and address information look up and business services; and package tracking services. In the 2016 fiscal year, USPS.COM received 1.6 billion visits, an average of nearly 4.6 million visits per day.
The USPS® Mark
14. Complainant has made substantially exclusive and continuous use of the USPS® mark throughout the U.S. and around the globe since at least as early as 1971. Consumers and third parties use the Mark exclusively to refer to Complainant and its goods and services.
15. Complainant owns thirty-eight United States trademark registrations incorporating the USPS® mark, including five incontestable registrations for the standard character word mark USPS® standing alone. Among other goods and services, Complainant’s U.S. registrations for the USPS® mark cover sorting, handling and receiving packages, envelopes and letters; pickup, transportation and delivery of packages and documents; envelopes and boxes; clothing; retail store and mail order services; philatelic products; shoulder and travel bags; stuffed animals; and electronic transmission of data and documents.
16. Complainant has continuously used the USPS® mark since at least as early as 1971.
17. Complainant also owns registrations for the standard character word mark USPS® in various foreign territories, including Australia, Switzerland, Egypt, the EU, Israel, Norway, Russia, Singapore, Turkey, Ukraine and Vietnam.
Others Associate the Mark with Complainant
18. Prior Forum UDRP Panels have recognized Complainant’s strong rights in the Mark.
19. Through several decades of widespread and continuous use, the Mark has become a distinctive designation of Complainant’s establishment and its goods and services. Complainant has acquired considerable goodwill in the Mark.
20. Complainant has expended significant capital promoting its establishment to a national and international market, including through print, television and radio advertising. As a result, the USPS® mark enjoys decades of global recognition, reputation and goodwill, and has become famous in the United States and many parts of the world.
21. Therefore, Respondent surely knew of Complainant and Complainant’s rights in the USPS® mark long prior to registration of the Domain Name, and registered the Domain Name specifically to exploit Complainant’s rights in the Mark.2
ii. Respondent’s Confusingly Similar Domain Name
22. The Domain Name incorporates the entirety of the USPS® mark, which alone establishes that the Domain Name is confusingly similar to the Mark.
23. The Domain Name adds only the descriptive terms “courier” and “delivery” to the Mark. As explained above, the term “courier” has an obvious relationship to Complainant’s business. Similarly, the term “delivery” is merely descriptive of one of Complainant’s services, i.e., delivery services.
24. It is well settled that “a domain name consisting of a well-known mark combined with a descriptive term or phrase is confusingly similar to the mark,” especially when the descriptive term has “an obvious relationship to Complainant’s business.”
25. Of course the Domain Name also includes the requisite gTLD, in this case .com. But gTLDs are “without real significance in deciding the issue of whether [a domain name] is identical or similar.”6
26. Therefore, the Domain Name is confusingly similar to the Mark.
27. Respondent’s use of the Mark within the Domain Name is not authorized and indicates a connection between Respondent and Complainant, or between the Website and Complainant, that does not exist. And that is precisely Respondent’s intent. Respondent seeks to capitalize on the trustworthy reputation of the Mark and legitimize its illicit online activities through unauthorized association with Complainant. The Domain Name is confusingly similar to the Mark, and intentionally so. UDRP 4(a)(i).
[b.] Respondent Has No Rights or Legitimate Interests in the Domain Name
28. Respondent registered the Domain Name on February 13, 2018, at least forty-seven years after Complainant first used its USPS® mark, and well after Complainant’s rights in the Mark achieved incontestable status with the U.S. Patent and Trademark Office.
29. Respondent could not be legitimately known as USPS or “USPS Courier Delivery” because the Mark was federally registered and ubiquitous throughout the U.S. long prior to Respondent’s registration of the Domain Name in February 2018.
30. Respondent is neither an authorized vendor nor a licensee of Complainant and does not have authorization to use the Mark or to register domain names containing the Mark or confusingly similar to the Mark. See Ex. 4 ¶15. This alone is sufficient to support a finding that Respondent has no rights or legitimate interests in the Domain Name.7
31. The Mark is used by others exclusively to refer to Complainant and its goods and services. Based on Respondent’s use of the Mark within the Domain Name and Complainant’s lengthy and widespread use of the Mark prior to registration of the Domain Name, it must be inferred that Respondent had actual knowledge of Complainant’s rights in the Mark prior to registration of the Domain Name.8 Therefore, Respondent cannot have rights or legitimate interests in the Domain Name.
32. Respondent is not using the Domain Name to identify or comment upon Complainant. Thus, Respondent has no free speech rights or interests in the Domain Name.
33. Respondent’s use of the Mark within the Domain Name is not a legitimate use, but a deliberate infringement of Complainant’s rights in order to induce Complainant’s customers to purchase services from Respondent or provide personal identification information to Respondent under the belief that the Respondent’s services are affiliated with the Complainant. No conceivable bona fide use of the Domain Name can exist when the intended use is a deliberate infringement of Complainant’s rights. Indeed, a cursory review of the text on the website indicates that the domain name does not appear to be associated with a bona fide offering of goods or services, with descriptions of services such as “Who do not know how to pursue pleasure rationally encounter consequences that are extremely painful. Nor again is there anyone who loves.”
34. Furthermore, Respondent’s use of the Mark within the Domain Name appears to trick Complainant’s customers into providing confidential and/or personal information to Respondent when requesting a quote for services. This is fraudulent activity that cannot create a legitimate noncommercial or fair use of the Domain Name.
35. Given Complainant’s trademark registrations and the reputation of the Mark, there is no plausible circumstance in which Respondent could legitimately use the Domain Name.
36. The evidence shows that Respondent’s registration and use of the Domain Name is intended to create consumer confusion. Obviously this is not bona fide use, but use that is contrary to the fundamental premise of good faith. UDRP 4(a)(ii).
[c.] The Domain Name was Registered and is Used in Bad Faith
37. The mere initial interest confusion caused by the similarity between the Mark and the Domain Name is sufficient for a finding of bad faith.
38. The USPS® mark is “indisputably” famous, indicating that “Respondent was fully aware of the Complainant’s trademark and of the goodwill attached to its trademark when [Respondent] registered the disputed domain name”13 and making it “inherently probable” that Respondent’s registration and use of the Domain Name is in bad faith.
39. The Mark is so associated with Complainant that Respondent’s very use of the Mark within the Domain Name “suggests opportunistic bad faith.”
40. Further, the Website incorporates Complainant’s UNITED STATES POSTAL SERVICE® design mark and prominently displays a woman in uniform holding a package prominently displaying Complainant’s trademarks and trade dress, and the Title bar includes Complainant’s Sonic Eagle design and states “Home | USPS.” As such, it is clear that Respondent intends to deceive customers who reach the Website into thinking they are at a website associated with or affiliated with Complainant.
41. Indeed, Respondent’s use of Complainant’s mark and copyrights on the Website demonstrates Respondent’s actual knowledge of Complainant and is more evidence of Respondent’s bad faith intent to capitalize on confusion with Complainant.
42. Respondent’s intentional diversion of customers from Complainant further shows Respondent’s bad faith registration and use of the Domain Name.
43. Respondent’s use of the Mark within the Domain Name to fraudulently procure confidential and/or personal information is evidence that the Domain Name were registered in bad faith, and are being used in bad faith.18
44. Respondent intentionally uses the Mark to confuse consumers as to the source, sponsorship, or affiliation of Respondent’s online activities, diverting consumers from Complainant, disrupting Complainant’s business, and tarnishing Complainant’s USPS® mark.
45. The Domain Name was registered and is being used in bad faith. UDRP 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Complainant claims rights in the USPS mark based upon its registration with the United States Patent and Trademark Office (“USPTO”). Registration with a governmental trademark agency, such as the USPTO, is sufficient to prove Policy ¶4(a)(i) rights in a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶4(a)(i)). Complainant provides a copy of its USPTO registration for the USPS mark (e.g., Reg. No. 2,423,574 registered on Jan. 23, 2001). Complainant has rights in the USPS mark under Policy ¶4(a)(i).
Complainant claims the <uspscourierdelivery.com> domain name is confusingly similar to the USPS mark because Respondent merely adds two descriptive terms and gTLD to the mark. Adding a descriptive term to a complainant’s mark does not prevent a finding of confusing similarity under Policy ¶4(a)(i). Similar changes in a domain name have failed to sufficiently distinguish it from a registered mark for the purposes of Policy ¶4(a)(i). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Traditional Medicinals, Inc. v. Flippa Chick, FA1006001328702 (Forum July 15, 2010) (“Respondent’s disputed domain name contains Complainant’s SMOOTH MOVE mark in its entirety after removing the space separating the terms of the mark, adds the descriptive terms “herbal tea” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of descriptive terms creates a confusing similarity between the disputed domain name and Complainant’s mark.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding adding a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). Respondent simply adds the terms “courier” and “delivery” and a “.com” gTLD to Complainant’s USPS mark. The <uspscourierdelivery.com> domain name does not contain sufficient changes to distinguish it from the USPS mark under Policy ¶4(a)(i). The <uspscourierdelivery.com> domain name is confusingly similar to Complainant’s mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 legitimate rights or legitimate interests in the <uspscourierdelivery.com> domain name. Respondent is not authorized or licensed to use Complainant’s USPS mark. Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Respondent is not commonly known by the disputed domain name. There is no evidence in the record to indicate Respondent was authorized to register a domain name using Complainant’s mark. This suggests Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶4(c)(iii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The relevant WHOIS information identifies Respondent as “mike johnson”, which bears no obvious relationship to the disputed domain name. The Panel must conclude Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant claims Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶4(c)(i) & (iii). Respondent is using the <uspscourierdelivery.com> domain name to create a false association with Complainant for financial gain. Respondent’s website prominently displays correct and mirror images of Complainant various marks and then attempts to trick Complainant’s customers into requesting a quote for services. This is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶4(c)(i) & (iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the <uspscourierdelivery.com> domain name in bad faith. Respondent uses the disputed domain name and Complainant’s marks for commercial gain. Respondent use of Complainant’s mark (even though some of the pictures are mirror images of Complainant’s mark) suggests there is some kind of affiliation between them (which is not true). Respondent registered and is using the disputed domain name in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent had actual knowledge of Complainants rights in the USPS mark when it registered the <uspscourierdelivery.com> domain name. Complainant’s USPS mark is rather famous and Respondent lives within the United States (Complainant’s primary place of operations). It is not credible to suggest Respondent didn’t know about Complainant’s mark. Respondent had actual knowledge of Complainant’s mark. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name demonstrates bad faith under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Respondent registered and is using the disputed domain name in bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <uspscourierdelivery.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, July 3, 2018
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