United States Postal Service v. William Carter / CMSI / Heath Edwards / USCertifiedLetters
Claim Number: FA1810001813566
Complainant is United States Postal Service (“Complainant”), represented by Cindy A. Villanueva of Lewis Roca Rothgerber Christie LLP, Nevada, USA. Respondent is William Carter / CMSI / Heath Edwards / USCertifiedLetters (“Respondent”), represented by Robby Anderson of Balch & Bingham LLP, Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <trackcertifiedmail.com>, registered with eNom, LLC, and <certifiedmailportal.com>, registered with Amazon Registrar, Inc.
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.
David P. Miranda, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 25, 2018; the Forum received payment on October 25, 2018.
On October 26, 2018 and October 29, 2018, respectively, eNom, LLC and Amazon Registrar, Inc. confirmed by e-mail to the Forum that the <trackcertifiedmail.com> and <certifiedmailportal.com> domain names are registered with eNom, LLC and Amazon Registrar, Inc. and that Respondent is the current registrant of the names. eNom, LLC and Amazon Registrar, Inc. have verified that Respondent is bound by the eNom, LLC and Amazon Registrar, Inc. 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 November 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 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@trackcertifiedmail.com and postmaster@certifiedmailportal.com. Also on November 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.
A timely Response was received and determined to be complete on November 30, 2018.
Complainant’s Additional Submission was received on December 5, 2018.
Respondent’s Additional Submission was received on December 10, 2018.
On December 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David P. Miranda, Esq., 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Post Office Department, the predecessor of Complainant and the second oldest department or agency of the United States of America, was founded July 26, 1775. Complainant serves millions of customers daily and sets the global industry standard for mailing and shipping related goods and services. Complainant has rights in the CERTIFIED MAIL mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) with a date of first use of Jan. 19, 1955 (Reg. No. 3,898,915, registered Jan. 4, 2011). See Compl. Ex. 8. Respondent’s <trackcertifiedmail.com> and <certifiedmailportal.com> domain names are identical or confusingly similar to Complainant’s mark as they both contain Complainant’s mark while adding a descriptive term (“track” or “portal”) and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <trackcertifiedmail.com> and <certifiedmailportal.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain names to solicit competing goods and services under the guise of Complainant’s marks and logos. See Compl. Ex. 3.
Respondent registered and uses the <trackcertifiedmail.com> and <certifiedmailportal.com> domain names in bad faith. Respondent uses the domain names for the purpose of trading off Complainant’s reputation and goodwill for Respondent’s commercial gain through the offering of competing goods and services. See Compl. Ex. 3. Further, Respondent’s use of Complainant’s logos, marks, and copyrighted works on the websites demonstrates Respondent’s actual knowledge of Complainant. Id.
B. Respondent
Respondent contends it has conducted a legal business under the <trackcertifiedmail.com> and <certifiedmailportal.com> domain names, and Complainant has known about and not opposed this business since its inception in 2000. See Resp. Annexes E-J. Respondent previously owned a trademark registration for the ERR – ELECTRONIC RETURN RECEIPT mark (Reg. No. 3,600,075, registered Mar. 31, 2009) and currently has a trademark application for the same mark pending with the USPTO. See Resp. Annexes 2 & 3. Respondent uses the domain names to promote Complainant’s CERTIFIED MAIL service, however it adds the additional service of providing an electronic return receipt to enhance Complainant’s business. Thus, Respondent does not compete with Complainant or take away customers; rather, Respondent assists Complainant and drives customers to its business.
Respondent registered the <trackcertifiedmail.com> and <certifiedmailportal.com> domain names on April 27, 2016 and April 14, 2016, respectively. See Compl. Ex. 2.
Complainant has established each of the elements required under paragraph 4(a) of the Policy, and as such the domain name at issue shall be transferred from Respondent to the Complainant.
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that “Heath Edwards” and “William Carter” are both aliases or agents of Certified Mailing Solutions, Inc., an Alabama corporation, formerly known as Future Computer Systems, Inc, which is the true registrant of the domain names. Here, both registrants contain “hedwards” in their email addresses, and William Carter filed a United States trademark application under the name “William T. Carter DBA Certified Mailing Solutions.” See Compl. Ex. 9. Further, the trademark application and William Carter’s registrant information shows his address as “180 Chandalar Place Drive Pelham, Alabama 35124,” which is identical to the address displayed on the website at the domain name registered to Heath Edwards, <trackcertifiedmail.com>. The websites at both of the domain names promote the services of Certified Mailing Solutions, Inc. See Compl. Ex. 3. This is not denied by Respondent.
The Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
Preliminary Issue: Trademark Dispute Outside the Scope of the UDRP
Respondent claims that it originally filed for and received approval for a trademark in 2005, and Complainant did not oppose the registration. See Resp. Annex B. However, Respondent claims that due to health issues, the registration lapsed and it had to file for a new trademark, which Complainant now opposes. See Resp. Annex C. The dispute is currently in the discovery phase. Id.
The Panel may determine its own jurisdiction and choose to consider the Complaint and issue an order. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”); see also Telebrands Corp. v. Khalid, FA 467079 (Forum May 31, 2005) (decided to proceed with the dispute over the <telebrandspakistan.com> even though both the complainant and the respondent had registered marks in TELEBRANDS and TELE BRANDS PAKISTAN, respectively, because the panel thought it would be unfair and costly to treat the case as a trademark dispute when the “gravamen” of the proceeding was the alleged misuse of the domain name in dispute).
Complainant claims rights in the CERTIFIED MAIL mark through its registration of the mark with the USPTO (e.g. Reg. No. 3,898,915, registered Jan. 4, 2011). See Compl. Ex. 8. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a 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 at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the CERTIFIED MAIL mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <trackcertifiedmail.com> and <certifiedmailportal.com> domain names are identical or confusingly similar to Complainant’s mark as they both contain Complainant’s mark while adding a descriptive term (“track” or “portal”) and the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The Panel finds the at-issue domain names are confusingly similar to the CERTIFIED MAIL mark under 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), then 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 contends that Respondent has no rights or legitimate interests in the <trackcertifiedmail.com> and <certifiedmailportal.com> domain names. Relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies both “William Carter / CMSI” and “Heath Edwards / USCertifiedLetters” as the registrant(s) of the domain names. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the CERTIFIED MAIL mark. 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). Accordingly, the Panel finds that Respondent is not commonly known by the at-issue domain names under Policy ¶ 4(c)(ii).
Next, Complainant claims that Respondent uses the <trackcertifiedmail.com> and <certifiedmailportal.com> domain names to solicit competing goods and services under the guise of Complainant’s marks and logos. Using a confusingly similar domain name to pass off as a complainant while engaging in a competing use can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant provides screenshots of the resolving webpages for the disputed domain names, both of which appear to display Complainant’s marks, logos, and products under the name “Certified Mailing Solutions, Inc.” See Compl. Ex. 3. Accordingly, the Panel finds that Respondent attempts to pass off as Complainant, failing to use the domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant claims that Respondent uses the <trackcertifiedmail.com> and <certifiedmailportal.com> domain names in bad faith for the purpose of trading off Complainant’s reputation and goodwill for Respondent’s commercial gain through the offering of competing goods and services. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). As described above, Complainant provides screenshots of the resolving webpages for the disputed domain names, both of which appear to display Complainant’s marks, logos, and products under the name “Certified Mailing Solutions, Inc.” See Compl. Ex. 3. Complainant is a U.S. Government entity that has been using the mark at issue since 1955. Respondent’s attempt to commercially benefit from Complainant’s mark is bad faith under Policy ¶ 4(b)(iv).
Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the CERTIFIED MAIL mark at the time of registering the <trackcertifiedmail.com> and <certifiedmailportal.com> domain names. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince 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). Complainant contends that Respondent’s use of Complainant’s logos, marks, and copyrighted works on the websites demonstrates Respondent’s actual knowledge of Complainant prior to registering the disputed domain names. See Compl. Ex. 3. Respondent does not deny actual knowledge of Complainant’s mark, further demonstrating 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 <trackcertifiedmail.com> and <certifiedmailportal.com> domain names be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: December 20, 2019
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