United Parcel Service of America, Inc. v. Patit Kamran
Claim Number: FA2006001902033
Complainant is United Parcel Service of America, Inc. (“Complainant”), represented by Sabina A. Vayner, Georgia, USA. Respondent is Patit Kamran (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coyote-shipping.com>, registered with Danesco Trading Ltd..
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 29, 2020; the Forum received payment on June 29, 2020.
On June 30, 2020, Danesco Trading Ltd. confirmed by e-mail to the Forum that the <coyote-shipping.com> domain name is registered with Danesco Trading Ltd. and that Respondent is the current registrant of the name. Danesco Trading Ltd. has verified that Respondent is bound by the Danesco Trading Ltd. 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 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 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@coyote-shipping.com. Also on June 30, 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 July 22, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, United Parcel Service of America, Inc., owns the subsidiary Coyote Logistics and offers a variety of freight, transportation, and logistics services. Complainant asserts rights in the COYOTE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,350,160, registered on December 5, 2017).
2. Respondent’s <coyote-shipping.com>[i] domain name is confusingly similar to Complainant’s COYOTE mark, as it incorporates the mark in its entirety and merely adds a hyphen, the term “shipping” and the “.com” generic top-level domain (“gTLD”).
3. Respondent lacks rights or legitimate interests in the <coyote-shipping.com> domain name. Respondent is not commonly known by the domain name nor has Complainant authorized Respondent to use the COYOTE mark.
4. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to impersonate Complainant.
5. Respondent registered and uses the <coyote-shipping.com> domain name in bad faith. Respondent uses the domain name to pass off as Complainant to promote competing services.
6. Additionally, Respondent registered the domain name with knowledge of Complainant’s rights in the COYOTE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the COYOTE mark. Respondent’s domain name is confusingly similar to Complainant’s COYOTE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <coyote-shipping.com> domain name and that Respondent registered and uses the domain name 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 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 rights in the COYOTE mark through its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant has provided evidence of its registration with the USPTO (e.g., Reg. No. 5,350,160, registered on December 5, 2017). Therefore, Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <coyote-shipping.com> domain name is confusingly similar to Complainant’s mark because the domain name incorporates the COYOTE mark in its entirety and adds a hyphen and the term “shipping” along with the “.com” gTLD. The addition of a generic or descriptive term and a gTLD is not sufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Therefore, the <coyote-shipping.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <coyote-shipping.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <coyote-shipping.com> domain name, as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the COYOTE mark. Where a response is lacking, relevant WHOIS information can be used to determine if a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by that name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 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). The WHOIS information for the <coyote-shipping.com> domain name shows that the registrant’s name is “Patit Kamran” and nothing in the record indicates that Respondent is licensed to use Complainant’s mark or is known by the <coyote-shipping.com> domain name. Therefore, the Panel finds Respondent is not commonly known by the <coyote-shipping.com> domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant claims Respondent fails to use the <coyote-shipping.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain name to pass off as Complainant. Use of a domain name incorporating the mark of another to pass off as the other party does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (refusing to find rights and legitimate interests in a domain name on the part of a respondent when the disputed domain name “resolves to a website that Respondent has designed to mimic Complainant’s own in an attempt to pass itself off as Complainant”). Complainant has provided evidence that the past version of Respondent’s website featured Complainant’s mark and photographs referencing Complainant’s business that are meant to confuse Internet users into believing Respondent is connected to Complainant. Thus, such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues Respondent registered and uses the <coyote-shipping.com> domain name in bad faith. Respondent’s use of the domain name to pass off as Complainant and offer competitive services or goods for sale is evidence of bad faith under Policy ¶ 4(b)(iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Complainant has provided evidence that Respondent’s use of the COYOTE mark and photographs referencing Complainant’s business reasonably has lead Complainant’s customers to believe there is an affiliation between Complainant and Respondent. This is evidence Respondent registered and uses the <coyote-shipping.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant claims Respondent registered the <coyote-shipping.com> domain name with knowledge of Complainant’s rights in the COYOTE mark, as Respondent uses an identical version of Complainant’s stylized COYOTE mark and incorporates the COYOTE logo. Use of a complainant’s trademarks and logos can be evidence that a respondent registered a domain name with actual knowledge of a mark. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Complainant provides screenshots of Respondent’s resolving website where Complainant’s marks are displayed. Therefore, the Panel holds that Respondent’s registration of the <coyote-shipping.com> domain name was done with actual knowledge of Complainant's COYOTE mark in bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <coyote-shipping.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 26, 2020
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