Postmates Inc. v. Zaire Syed
Claim Number: FA2004001892086
Complainant is Postmates Inc. (“Complainant”), represented by Chelsea E. Carbone of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Zaire Syed (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <postmateshelptech.com>, registered with GoDaddy.com, LLC.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 14, 2020; the Forum received payment on April 14, 2020.
On April 15, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <postmateshelptech.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 2020 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@postmateshelptech.com. Also, on April 16, 2020, 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 May 10, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 claims rights in the POSTMATES mark established through its ownership of the United States trademark registration described below and the goodwill it has established in the mark through its claimed use of the POSTMATES mark to promote its on-demand food delivery platform and services since at least as early as 2012. Complainant claims that it has built a protectable reputation in the POSTMATES mark through its use providing services to customers, across more than 4,200 U.S. cities, covering 80% of U.S. households with access to over 65,000 merchants with real-time deliveries. As of the first quarter of 2019, Complainant had provided services for $2.5 billion in gross merchandise value, and it currently enables over 6.5 million orders per month.
Complainant’s also owns the domain name <postmates.com> which resolves to its website and app on which it provides its mobile delivery services.
Complainant submits that the disputed domain name <postmateshelptech.com> is nearly identical and confusingly similar to its POSTMATES mark arguing that the mere addition of the descriptive terms “help” and “tech”, along with the same <.com> generic top-level domain (“gTLD”), does nothing to differentiate Respondent’s use or limit the risk of consumer confusion between Complainant’s trademark and the disputed domain name. See, e.g., Novartis Ag v. David Sparkowich, Case No. D2013-1610 (WIPO Oct. 29, 2013) (ordering transfer of <buyomnitrope.com> to owner of the OMNITROPE mark and stating that “the disputed domain name is confusingly similar to the Complainant’s trademark because it fully incorporates said mark with the mere addition of the generic term ‘buy’”).
Complainant adds that it has not licensed or otherwise permitted Respondent to use the POSTMATES mark, or any confusingly similar mark, or to apply for or use any domain name incorporating the mark or a term confusingly similar to the POSTMATES Mark. See Telstra Corp. Ltd. v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO Feb. 13, 2000) (respondent had no rights or legitimate interests to use the domain name because respondent was not licensed or otherwise permitted to use complainant’s trademark).
Complainant further submits that Respondent’s use of the POSTMATES mark in the disputed domain name is not nominative and easily can be avoided. Respondent does not need to make use of the POSTMATES name in a domain name in order to offer delivery services. See Six Continents Hotels, Inc. v. Hotel Partners of Richmond, Case No. D2003-0222 (WIPO May 14, 2003) (finding that the use of the complainant’s HOLIDAY INN mark in the domain name <holidayinnhotelreservations.com> was not nominative fair use because it was not an unavoidable and necessary use of a mark to identify respondent’s services).
Complainant additionally alleges that Respondent has used the disputed domain name to divert Internet users to a scam website, a website that conspicuously displays Complainant’s POSTMATES mark and logo design, along with “Welcome to Postmates!”, and is clearly designed to capitalize on confusion between the respective Parties’ domain names and marks. Complainant argues that diversion to a scam website or website is not a legitimate, noncommercial or fair use of the disputed domain name. See Urban Outfitters Inc. v. Ju Yu, WIPO Case. No. D2014-0029 (WIPO March 14, 2014) (use of <cheapfreepeople.net> domain name to host a website designed to look like the Free People website is a clear attempt to confuse Internet users as to the source, sponsorship, affiliation or endorsement of the scam website and is not fair use of FREE PEOPLE mark).
Complainant also alleged that the disputed domain name was registered and is being used in bad faith, arguing that Respondent registered the disputed domain name long after Complainant first adopted and began using the POSTMATES mark. Furthermore, Complainant alleges that Respondent clearly had actual knowledge of Complainant’s rights in its name when Respondent registered the disputed domain name because: Respondent is using Complainant’s POSTMATES mark and logo design, and incorporating Complainant’s POSTMATES mark in the disputed domain name in order to mislead visitors into providing their phone number, email address and credentials; and that Respondent had no other reason to register the domain than to exploit the POSTMATES brand. See Spotify AB v. The LINE The Line /The Line, Case No. FA 1801001765498 (Forum Feb. 6, 2018) (finding that the respondent had actual knowledge of the complainant’s prior rights in and to its trademark given the totality of the circumstances, including the fame of complainant’s mark, and thus the respondent engaged in bad faith use and registration of the disputed domain name when it registered the name).
Complainant adds that Respondent’s knowledge of Complainant is apparent from the content of the website to which the disputed domain name resolves, including the background displaying a courier bag with Complainant’s POSTMATES mark and logo design, along with the words “Welcome to Postmates!” prominently positioned in the middle of the page. Respondent’s website even goes so far as to indicate “Copyright © 2020 Postmateshelptech.com - All Rights Reserved.” as a copyright notice at the bottom of the webpage.
Complainant argues that the disputed domain name was therefore registered in bad faith to take advantage of the value and goodwill associated with the POSTMATES mark under ICANN Policy ¶ 4(a)(iii). See Ticketmaster Corp. v. Spider Web Design, Inc., Case No. D2000-1551 (WIPO Feb. 4, 2001) (“actual or constructive knowledge of [c]omplainant’s rights in [t]rademark is a factor supporting bad faith”).
Complainant further alleges that Respondent uses the disputed domain name to lure Internet users to its own website that is branded with the POSTMATES mark. Internet users who are directed to this site are likely to believe that they have successfully accessed a website related to Complainant and its services. This type of use of a domain name has been recognized as bad faith use in violation of ICANN Policy ¶ 4(b)(iv). See Fossil, Inc. v. wwwfossil-watch.org c/o Hostmaster, Case No. FA 335513 (Forum Nov. 9, 2004) (finding bad faith where respondent attempted to profit from the fame of complainant’s trademark by attracting Internet traffic to his website).
Complainant adds that even if Respondent’s website does not ultimately offer any services, use of a domain name to divert Internet traffic and disrupt the business of another—as is the case here—constitutes bad faith under Policy ¶ 4(b)(iii). See Twitter, Case No. FA1503001607451(“Respondent’s use of the domain name disrupted Complainant’s business and misappropriated the trademark value of Complainant’s mark to wrangle visitors to its website thereby demonstrating Respondent’s bad faith registration and use of the name pursuant to Policy ¶ 4(b)(iii).”).
Moreover, as noted above, prominently displayed on Respondent’s site is a form prompting users to enter their personal information, including their phone number, email address, and “credential” and requesting that they “verify” their account. Respondent’s website provides no way for visitors to create a new account, only to purportedly verify an existing account. It is clear, therefore, that Respondent is not aiming to use the site to offer its own independent services (which would necessitate, at a minimum, creating an account unique to its site), but rather appears to be making an effort only to collect visitors’ personal information as used in connection with Complainant’s actual services.
Complainant complains that based on the fame and strong reputation of Complainant’s business, these users may be lulled into false sense of security and choose to actually provide the PII as prompted, thereby potentially opening themselves up to additional vulnerability. This type of use of a domain name has been recognized as bad faith use in violation of ICANN Policy ¶ 4(b)(iv). See Fossil, Inc. v. wwwfossil-watch.org c/o Hostmaster, Case No. FA 335513 (Forum Nov. 9, 2004) (finding bad faith where respondent attempted to profit from the fame of complainant’s trademark by attracting Internet traffic to his website).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant operates an Internet platform and app that connects customers with local couriers to facilitate the prompt delivery of anything from any nearby store or restaurant and is the owner of
· United States registered trademark POSTMATES, registration number 4,548,033, registered on the Principal Register on June 10,2014 for goods and services in international classes 9 and 42.
Complainant also owns and uses the domain name <postmates.com> as its website address.
The disputed domain name was registered on March 13, 2020 and resolves to a website that contains an image which included the POSTMATES trademark.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs, and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name in the course of this proceeding which inter alia revealed the identity of Respondent who had availed of a privacy service to conceal his identity on the published WhoIs.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has adduced uncontested convincing evidence of its rights in the POSTMATES trademark and service mark acquired through its registration and use of mark as described above in relation to its food delivery platform.
The disputed domain name consists of Complainant’s POSTMATES mark together with the descriptive terms “help” and “tech”, along with the <.com> generic top-level domain (“gTLD”) extension.
Complainant’s POSTMATES mark is the initial, dominant and only distinctive element of the disputed domain name. The other descriptive elements do nothing to differentiate Complainant’s trademark and the disputed domain name.
For the purposes of comparison, the gTLD <.com> extension may be ignored in the circumstances of this Complaint as a domain extension, is recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name alleging that Respondent is not known by the name POSTMATES, has no affiliation with Complainant and has not acquired any trademark rights in the term POSTMATES.
Furthermore Complainant asserts that it has not licensed or otherwise permitted Respondent to use the POSTMATES mark, or any confusingly similar mark, or to apply for or use any domain name incorporating the mark or a term confusingly similar to the POSTMATES mark; that Respondent’s use of the POSTMATES mark in the disputed domain name is not nominative and easily can be avoided; that Respondent does not need to make use of the POSTMATES name in its own domain in order to offer delivery services or identify Respondent’s website; that Respondent has used the disputed domain name to divert Internet users to a scam website, a website that conspicuously displays Complainant’s POSTMATES mark and logo design, along with “Welcome to Postmates!”, and is clearly designed to capitalize on confusion between the respective Parties’ domain names and marks; and that this is a clear attempt by Respondent to confuse Internet users as to the source, sponsorship, affiliation or endorsement of the scam website and is not fair use of the disputed domain name.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any response to the Complaint and so has not discharged the burden.
In these circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The evidence adduced must lead to a finding that the disputed domain name was registered with actual knowledge of Complainant’s name, mark and the reputation of the POSTMATES brand.
Complainant’s registered trademark rights dating back to June 10,2014 predate the registration of the disputed domain name in March 13, 2020.
The subsequent use of the disputed domain name to resolve to a website that impersonates Complainant further illustrates that the disputed domain name was registered in bad faith to target and take predatory advantage of Complainant’s rights and mislead innocent Internet users.
The disputed domain name resolves to a website with a prominent image of a motor cycle displaying Complainant’s POSTMATES mark and Complainant’s three star and cyclist logo, which clearly reference Complainant’s delivery services; the words “WELCOME TO POSTMATES Please thoroughly read the instructions below” and request that the visitor inserts his/her phone number, email address and credentials.
This request for personal information is particularly sinister when regard is had to the domain name itself which includes the words “help” and “tech” because it clearly targets Complainant’s clients who may be having technical difficulties and requests their personal details.
This Panel finds therefore that on the balance of probabilities, Respondent is using the disputed domain name in bad faith in an intentional attempt to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site and is therefore using the disputed domain name in bad faith.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested in the Complaint
Having established all three elements required under the ICANN Policy, this Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <postmateshelptech.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: May 11, 2020
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