United Parcel Service of America, Inc. v. MEHMET İSYAN AYIRKAN
Claim Number: FA2303002035819
Complainant is United Parcel Service of America, Inc. (“Complainant”), represented by Sabrina A. Vayner, Georgia, USA. Respondent is MEHMET İSYAN AYIRKAN (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <upsexpresslojistik.com>, registered with ODTÜ Gelistirme Vakfi Bilgi Teknolojileri Sanayi Ve Ticaret Anonim Sirketi.
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on March 14, 2023; Forum received payment on March 14, 2023.
On March 15, 2023, ODTÜ Gelistirme Vakfi Bilgi Teknolojileri Sanayi Ve Ticaret Anonim Sirketi confirmed by e-mail to Forum that the <upsexpresslojistik.com> domain name is registered with ODTÜ Gelistirme Vakfi Bilgi Teknolojileri Sanayi Ve Ticaret Anonim Sirketi and that Respondent is the current registrant of the name. ODTÜ Gelistirme Vakfi Bilgi Teknolojileri Sanayi Ve Ticaret Anonim Sirketi has verified that Respondent is bound by the ODTÜ Gelistirme Vakfi Bilgi Teknolojileri Sanayi Ve Ticaret Anonim Sirketi 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 March 16, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 2023 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@upsexpresslojistik.com. Also on March 16, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On April 10, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 made the following contentions.
Complainant, United Parcel Service of America, Inc., provides logistics, shipping, and delivery services. Complainant has rights in the UPS mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., 966,774, registered Aug. 21, 1973). See Compl. Annex 7. The <upsexpresslojistik.com> is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark and added the descriptive terms “express” and “lojistik” (the Turkish word for “logistics”) and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <upsexpresslojistik.com> domain because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s UPS mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the disputed domain to pass itself off as affiliated with Complainant in furtherance of a phishing scheme.
Respondent has registered and uses the <upsexpresslojistik.com> domain name in bad faith because Respondent registered and uses the disputed domain name to pass itself off as affiliated with Complainant in order to perpetuate a phishing scheme. Also, Respondent had actual knowledge of Complainant’s rights in the UPS mark prior to registering the domain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
PANEL NOTE: SUPPORTED LANGUAGE REQUEST
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Turkish language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Turkish language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Turkish language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to show that the Respondent is conversant and proficient in the English language. The Panel has reached that conclusion on the grounds, as Complainant submits, that the disputed domain name incorporates the English word “express”, Respondent is targeting a famous U.S. company, meaning it is familiar with U.S. brands, the disputed Domain Name includes the gTLD “.com” which primarily targets English-speaking internet users and that conducting the proceeding in Turkish, a language UPS’s representatives cannot speak, would cause UPS to incur significant burden and delay.
After considering all the circumstance of the present case, the Panel determines that the proceeding should be conducted in the English language.
1. Complainant is a United States company that provides logistics, shipping, and delivery services.
2. Complainant has established its rights in the UPS mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., 966,774, registered Aug. 21, 1973).
3. Respondent registered the <upsexpresslojistik.com> domain name on March 28, 2022.
4. Respondent uses the disputed domain to pass itself off as affiliated with Complainant in furtherance of a phishing scheme.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the UPS mark based on its registration of the mark with the United States Patent and Trademark Office ( “USPTO”). Registration with the USPTO is generally sufficient to establish rights in a mark per 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).”). Here, Complainant provides evidence of its registration with the USPTO for the UPS mark (e.g., 966,774, registered Aug. 21, 1973). See Compl. Annex 7. Therefore, the Panel finds that Complainant has rights in the UPS mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s UPS mark. Complainant argues that the <upsexpresslojistik.com> domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark in the domain name. Domain names which incorporate the entire mark are usually considered confusingly similar, while adding a gTLD generally creates no distinction between a complainant’s mark and a disputed domain name under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Further, adding a descriptive word may only serve to increase the confusing similairty. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). Here, Respondent has incorporated the entire mark and added the descriptive words “express” and “lojistik” (The Turkish word for “logistic”), as well as the “.com” gTLD and as discussed, these additions do not create a sufficient distinction between Complainant’s mark and the disputed domain name. The addition of the descriptive words only add to the confusing similarity as they reference Complainant’s similar services. Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s UPS mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s UPS mark and to use it in its domain name, adding the descriptive words “express” and “lojistik” (The Turkish word for “logistic”) ;
(b) Respondent registered the <upsexpresslojistik.com> domain name on March 28, 2022;
(c) Respondent uses the disputed domain to pass itself off as being affiliated with Complainant in furtherance of a phishing scheme;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e)Complainant submits that Respondent does not have rights or legitimate interests in the <upsexpresslojistik.com> domain name because Respondent is not commonly known by the disputed domain name and is not associated with Complainant or authorized to use Complainant’s UPS mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy 4 ¶ (c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). Here, there is no evidence available in the WHOIS information to suggest that Respondent is known by <upsexpresslojistik.com> and no information suggests Complainant authorized Respondent to use the UPS mark. Rather, the WHOIS information lists the registrant of the domain as “MEHMET İSYAN AYIRKAN.” See Registrar Verification Email. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <upsexpresslojistik.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), past panels have found no bona fide offering of goods or services, nor any legitimate noncommercial or fair use where the respondent uses the domain name to pass itself off as affiliated with the complainant in furtherance of a phishing scheme. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also Blackstone TML.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant provides a screenshot of Respondent’s resolving webpage. See Compl. Annex 20. The resolving webpage displays Complainant’s mark throughout and references Complainant’s services, including shipping and tracking packages. Id. All of this together suggests that Respondent is attempting to pass itself off as affiliated with Complainant. Furthermore, Complainant argues that Respondent may be using the email address associated with the disputed domain name to phish for personal and financial information. See Compl. Annex 21. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has registered and uses the <upsexpresslojistik.com> domain name in bad faith because it registered and uses the domain name to pass itself off as affiliated with Complainant in or order to perpetuate a phishing scheme. Such use is evidence of bad faith under both policy ¶ 4(b)(iv) and Policy ¶ 4(a)(iii), respectively. See Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass off as the complainant in an attempt to gain personal information from users who mistakenly access the website). Similarly here, as discussed above, Complainant argues that Respondent attempts to pass itself off as affiliated with Complainant in furtherance of a phishing scheme. See Compl. Annex 20-21. Therefore, as the Panel agrees it finds that Respondent has registered and uses the disputed domain name in bad faith.
Secondly, Complainant contends that Respondent registered the <upsexpresslojistik.com> domain in bad faith because Respondent had actual knowledge of Complainant’s rights in the UPS mark prior to registering the disputed domain name. Actual knowledge may be found given the fame of the mark as well as the use of the domain name and is evidence of bad faith per Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). Here, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the mark given the fame of the mark as well as Respondent’s efforts to pass itself off as affiliated with Complainant. See Compl. Annex 20. Therefore, as the Panel agrees it finds that Respondent registered and used the disputed domain in bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <upsexpresslojistik.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: April 11, 2023
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