United Parcel Service of America, Inc. v. Mary Ghandir / Matt Drews
Claim Number: FA1909001860903
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <upsdeliveries.org> and <upscouriers.org>, registered with NameCheap, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 5, 2019; the Forum received payment on September 5, 2019.
On September 6, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <upsdeliveries.org> and <upscouriers.org> 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 September 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 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@upsdeliveries.org, postmaster@upscouriers.org. Also, on September 17, 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 October 8, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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.
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: (1) the disputed domain names were initially registered with the same privacy service and the same registrar, NameCheap, Inc. within one month of each other; (2) both domain names follow a similar naming convention; (3) both domain names resolve to identical, active websites that pass off as Complainant; (4) the WHOIS information for both domain names lists the registrant’s physical address in Texas but a phone number in Los Angeles, California; and (5) the email addresses associated with the domain names are nearly-identical, template-styled blog websites that each incorporate the term “Canna Kush” in the title.
The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled by a single Respondent who is using multiple aliases. The Panel will proceed referencing both parties as Respondent throughout this decision.
A. Complainant
Complainant is one of the largest logistics, transportation, shipping, and delivery companies in the world. Complainant has rights in the UPS mark through its trademark registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 966,774, registered Aug. 21, 1973). Respondent’s <upsdeliveries.org> and <upscouriers.org> domain names are confusingly similar to Complainant’s UPS mark as each incorporates the mark in its entirety, merely adding the generic/descriptive terms “deliveries” or “couriers,” and a “.org” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <upsdeliveries.org> and <upscouriers.org> domain names. Respondent is not authorized to use Complainant’s UPS mark and is not commonly known by either of the disputed domain names. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to impersonate Complainant in furtherance of a phishing scheme.
Respondent registered and uses the <upsdeliveries.org> and <upscouriers.org> domain names in bad faith. Respondent attempts to pass off as Complainant for fraudulent activities and/or phishing attempts. Furthermore, Respondent had actual knowledge of Complainant’s rights in the UPS mark as evidenced by its attempts to pass off as Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is United Parcel Service of America, Inc. (“Complainant”), of Atlanta, Georgia, USA. Complainant is the owner of domestic and global registrations for the mark UPS, and variations thereof, which it has used continuously since at least as early as 1973, in connection with its provision of transportation logistics, shipping and delivery services, as well as numerous related products and services including, but not limited to, tracking, warehousing, consulting, and insurance.
Respondent is Mary Ghandir / Matt Drews (“Respondent”), of Manchaca and Campbell Texas, USA. Respondent’s registrar’s address is listed as Phoenix, Arizona, USA. The Panel notes that the <upsdeliveries.org> and <upscouriers.org> domain names were registered on or about June 23, 2019 and May 21, 2019, respectively.
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 claims rights in the UPS mark based upon registration of the mark with the USPTO (e.g., Reg. No. 966,774, registered Aug. 21, 1973). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel here finds that Complainant’s registration of the UPS mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <upsdeliveries.org> and <upscouriers.org> domain names are confusingly similar to the UPS mark, as the names incorporate the mark in its entirety, merely adding the generic/descriptive terms “deliveries” or “couriers,” and a “.org” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. 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 here finds the <upsdeliveries.org> and <upscouriers.org> domain names are confusingly similar to the UPS mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes 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 here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <upsdeliveries.org> and <upscouriers.org> domain names, as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized Respondent to use the UPS mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “Mary Ghandir” or “Matt Drews,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel here finds that under Policy ¶ 4(c)(ii) Respondent has not been commonly known by the <upsdeliveries.org> and <upscouriers.org> domain names.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <upsdeliveries.org> and <upscouriers.org> domain names is demonstrated by its failure to use the names to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends Respondent uses the disputed domain names to pass off as Complainant in furtherance of phishing. Such a use is not generally considered to be a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”); see also DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant claims the at-issue domain names resolve to identical, active websites that purport to offer shipping and logistics services, prominently display Complainant’s UPS mark, uses identical brown and gold color schemes, and incorporates photographs and videos. Complainant believes Respondent uses these domain names to collect users’ personal information for fraudulent purposes. The Panel here finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant claims Respondent’s use of the <upsdeliveries.org> and <upscouriers.org> domain names to pass off as Complainant in furtherance of a phishing scheme demonstrates that Respondent registered and used the domain name in bad faith. Use of a domain name to create a false impression of affiliation with a complainant in order to obtain users’ personal information is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (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 Juno Online Servs., Inc. v. Iza, FA 245960 (Forum May 3, 2004) (concluding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use). The Panel again notes Complainant’s claims regarding the disputed domain names resolution to identical, active websites that purport to offer shipping and logistics services, prominently display Complainant’s UPS mark, uses identical brown and gold color scheme, and incorporates photographs and videos. Complainant believes Respondent uses these domain names to collect users’ personal information for fraudulent purposes. The Panel here finds that Respondent registered and used the domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant also contends that considering the fame and notoriety of Complainant's UPS mark, it is inconceivable that Respondent could have registered the <upsdeliveries.org> and <upscouriers.org> domain names without full knowledge of Complainant's rights in the mark. The Panel agrees with Complainant, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant further asserts that Respondent’s use of the domain name to reference Complainant and its UPS mark indicates it had actual knowledge of Complainant’s rights. The Panel finds that Respondent’s use of the disputed domains further supports the conclusion that Respondent had actual knowledge of Complainant’s rights in the mark and thus registered and used the name in bad faith.
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <upsdeliveries.org> and <upscouriers.org> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 22, 2019
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