United Parcel Service of America, Inc v. Andrew Cigel / Andrew Web Design Inc / muna tete / Bani To
Claim Number: FA1901001824148
Complainant is United Parcel Service of America, Inc. (“Complainant”), represented by Sabina A. Vayner of Greenberg Traurig, LLP, Georgia, USA. Respondent is Andrew Cigel / Andrew Web Design Inc / muna tete / Bani To (“Respondent”), Cameroon.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <upsdiscreetdelivery.com>, <upsdiscreetservices.com>, and <ups-discreteservices.com>, registered with NameCheap, Inc.
Hon. Karl V. Fink (Ret.) as Panelist
Complainant submitted a Complaint to the Forum electronically on January 8, 2019; the Forum received payment on January 8, 2019.
On January 8, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <upsdiscreetdelivery.com>, <upsdiscreetservices.com>, and <ups-discreteservices.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 January 14, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2019 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@upsdiscreetdelivery.com, postmaster@upsdiscreetservices.com, postmaster@ups-discreteservices.com. Also on January 14, 2019, 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 February 10, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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
Complainant has used the UPS mark continuously in U.S. commerce and in other jurisdictions in connection with a wide variety of shipping, delivery, logistics, transportation, freight, consulting, insurance, and other related services and products for decades, and some since as early as 1927. Complainant has rights in the UPS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 966,774, registered Aug. 21, 1973). Respondent’s <upsdiscreetdelivery.com>, <upsdiscreetservices.com>, and <ups-discreteservices.com> domain names are identical or confusingly similar to Complainant’s mark as they each add either the term “discreet” or “discrete” along with an additional term descriptive of Complainant’s business, as well as the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <upsdiscreetdelivery.com>, <upsdiscreetservices.com>, and <ups-discreteservices.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 is currently using the <upsdiscreetservices.com> and <upsdiscreetdelivery.com> domain names to impersonate Complainant, and previously used the <ups-discreteservices.com> domain name to do the same. Additionally, upon information and belief, Respondent likely uses the domain names as part of various phishing attempts designed to confuse Complainant’s customers. Moreover, Respondent currently fails to use the resolving webpage associated with the <ups-discreteservices.com> domain name.
Respondent registered and uses the <upsdiscreetdelivery.com>, <upsdiscreetservices.com>, and <ups-discreteservices.com> domain names in bad faith. Respondent uses (or previously used) the domain names to impersonate Complainant, and is likely using the domain names and associated websites for fraudulent activities and phishing attempts. Further, Respondent currently fails to display any substantive content on the resolving webpage for the <ups-discreteservices.com> domain name. Additionally, given the fame of the UPS mark, and because of the numerous references to Complainant on the infringing websites, it is evident that Respondent registered the domain names with full knowledge of Complainant’s rights in the UPS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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.”).
Preliminary Issue: Multiple Respondents
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 the domain names were all initially registered using the same privacy services. Further, all of the domain names follow a similar naming convention by adding the term “discreet” or “discrete” and a term descriptive of Complainant’s business. Additionally, the <upsdiscreetdelivery.com> and <upsdiscreetservices.com> domain names both resolve to websites displaying similar content purporting to offer shipping and logistics services. Once the privacy shield was lifted, the <ups-discreteservices.com> and <upsdiscreetdelivery.com> domain names list Cameroon as the country of record, and the <upsdiscreetservices.com> domain name lists a fake address and a registrant of record of a popular song in Cameroon. Finally, the email used to register the <upsdiscreetservices.com> domain name has many other registered domain names using the “.us” country code top-level domain (“ccTLD”) and used in connection with pet scams, while the email address used to register the <ups-discreteservices.com> domain name presents similar factual circumstances.
The Panel finds from Complainant’s uncontested evidence and allegations that the domain names are commonly controlled by a single Respondent who is using multiple aliases. In this decision, the Respondents will be collectively referred to as “Respondent.”
Complainant claims rights in the UPS mark through its registration of the mark with the USPTO (e.g. Reg. No. 966,774, registered Aug. 21, 1973). 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).”). The Panel finds that Complainant has established rights in the UPS mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <upsdiscreetdelivery.com>, <upsdiscreetservices.com>, and <ups-discreteservices.com> domain names are identical or confusingly similar to Complainant’s mark as they each add either the term “discreet” or “discrete” along with an additional term descriptive of Complainant’s business, as well as 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). 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). One of the domain names adds a hyphen, which does not help distinguish a domain name from a mark. See Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark). The Panel finds that the disputed domain names are confusingly similar to the UPS mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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 <upsdiscreetdelivery.com>, <upsdiscreetservices.com>, and <ups-discreteservices.com> domain names. Where a response is lacking, 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 “Andrew Cigel / Andrew Web Design Inc” as the registrant for the <upsdiscreetdelivery.com> domain name; “muna tete” as the registrant for the <upsdiscreetservices.com> domain name; and “Bani To” as the registrant for the <ups-discreteservices.com> domain name. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the UPS mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to their registration, and Complainant has not given Respondent permission to use the mark in any manner. The Panel finds that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii).
Complainant avers that Respondent is currently using the <upsdiscreetservices.com> and <upsdiscreetdelivery.com> domain names to impersonate Complainant, and previously used the <ups-discreteservices.com> domain name to do the same. Using a confusingly similar domain name to pass off as a complainant 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).”). Complainant provides screenshots of the resolving webpages for all three domain names. The webpages associated with the <upsdiscreetservices.com> and <upsdiscreetdelivery.com> domain names display content largely similar to the content found on Complainant’s own website, including various related images and identical representations of Complainant’s mark and logo. Complainant does not provide evidence of the alleged prior impersonation of Complainant using the <ups-discreteservices.com> domain name. The Panel finds that Respondent attempts to pass off as Complainant with the <upsdiscreetservices.com> and <upsdiscreetdelivery.com> domain names, 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 argues that Respondent likely uses the domain names as part of various phishing attempts designed to confuse Complainant’s customers. Phishing schemes can evince a failure to make a bona fide offering of goods or services or legitimate noncommercial or fair use. See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum Mar. 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). Complainant does not provide any additional evidence or argument, aside from the screenshots of the resolving webpages associated with the disputed domain names. The Panel finds that Complainant has not proved that Respondent uses the domain names in connection with phishing schemes.
Complainant argues that Respondent currently fails to use the resolving webpage associated with the <ups-discreteservices.com> domain name. Failure to make active use of a confusingly similar domain name can evince a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark 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 of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant’s provided screenshot of the webpage associated with the <ups-discreteservices.com> domain name displays the message “Account Suspended. This Account has been suspended.” The Panel finds that Respondent’s failure to make any use of the domain name is not considered 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). The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has proved this element.
Complainant claims that Respondent uses, or previously used, the domain names to impersonate Complainant for commercial gain. 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.”). Complainant’s provided screenshots of the webpages associated with the <upsdiscreetservices.com> and <upsdiscreetdelivery.com> domain names display content largely similar to the content found on Complainant’s own website, including various related images and identical representations of Complainant’s mark and logo. Complainant does not provide evidence of the alleged prior impersonation of Complainant using the <ups-discreteservices.com> domain name. The Panel finds that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv) with respect to the <upsdiscreetservices.com> and <upsdiscreetdelivery.com> domain names.
Complainant argues that Respondent currently fails to display any substantive content on the resolving webpage for the <ups-discreteservices.com> domain name. Inactively holding a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant’s provided screenshot of the webpage associated with the <ups-discreteservices.com> domain name displays the message “Account Suspended. This Account has been suspended.” The Panel finds that Respondent’s failure to use the domain name demonstrates Respondent’s bad faith under the Policy.
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the UPS mark at the time of registering the three infringing 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 knowledge can be inferred given the fame of the UPS mark and the numerous references to Complainant on the infringing websites. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, and registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <upsdiscreetdelivery.com>, <upsdiscreetservices.com>, and <ups-discreteservices.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: February 19, 2019
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