United States Postal Service v. Lu Chen Yang
Claim Number: FA1009001345711
Complainant is United States Postal Service ("Complainant") represented by Jennifer A. Van Kirk of Lewis and Roca, LLP, Arizona, USA. Respondent is Lu Chen Yang ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usps-china.com>, registered with Beijing Innovative Linkage Technology Ltd. d/b/a DNS.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 9, 2010; the National Arbitration Forum received payment September 10, 2010.
On Sep 18, 2010, Beijing Innovative Linkage Technology Ltd. d/b/a DNS confirmed by e-mail to the National Arbitration Forum that the <usps-china.com> domain name is registered with Beijing Innovative Linkage Technology Ltd. d/b/a DNS and that Respondent is the current registrant of the name. Beijing Innovative Linkage Technology Ltd. d/b/a DNS verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd. d/b/a DNS registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 2010, 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@usps-china.com. Also on September 28, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 29, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <usps-china.com> domain name is confusingly similar to Complainant’s USPS.COM mark.
2. Respondent has no rights to or legitimate interests in the <usps-china.com> domain name.
3. Respondent registered and used the <usps-china.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant United States Postal Service provides a wide range of products and services related to the mailing and shipping industry, including packaging, mailing and shipping services, electronic cash and financial transactions, retail store services, philatelic products, postcards, envelopes, stationery, novelty items and other related merchandise. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the USPS.COM mark (Reg. No. 2,423,573 issued January 23, 2001).
Respondent, Lu Chen Yang, registered the <usps-china.com> domain name April 8, 2010. The disputed domain name resolves to a website that attempts to pass itself off as Complainant, presumably for Respondent’s financial gain.
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."
Given 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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel 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 (Nat. Arb. 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Complainant owns a trademark registration with the USPTO for the USPS.COM mark (Reg. No. 2,423,573 issued January 23, 2001). The Panel finds that a USPTO trademark registration is conclusive evidence of Complainant’s rights in the USPS.COM mark, regardless of whether Respondent lives or operates within the United States. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Complainant urges that Respondent’s <usps-china.com> mark is confusingly similar to Complainant’s USPS.COM mark because the only differences consist of the addition of a hyphen and the geographic term “china.” The Panel finds that adding a geographic term to Complainant’s mark is insufficient to prevent confusing similarity. See Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geographic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel also finds that an inserted hyphen is a minor modification that does not differentiate the disputed domain name from Complainant’s mark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"). Thus, the Panel finds that Respondent’s <usps-china.com> domain name is confusingly similar to Complainant’s USPS.COM mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant’s assertion that Respondent lacks rights and legitimate interests in the disputed domain name and its supporting evidence presented are sufficient to establish a prima facie case that Respondent has no rights to or legitimate interests as required by Policy ¶ 4(a)(ii). Respondent’s failure to respond to Complainant’s allegations indicates that Respondent has not met its burden in proving its rights and legitimate interests in the disputed domain name. As a result, the Panel finds that Complainant’s allegations are to be viewed as true and that the Panel can accordingly assume that Respondent lacks and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth . . . as true.”); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed). In an effort to fully examine the situation, however, the Panel elects to consider the evidence presented in light of the Policy ¶ 4(c) factors to make an independent determination as to Respondent’s rights and legitimate interests in the disputed domain name.
Complainant alleges that Respondent is neither an authorized agent nor a licensee of Complainant and has no authorization to use Complainant’s mark. The WHOIS information for the <usps-china.com> domain name lists the registrant as “min junfeng,” which does not appear to have any association with the disputed domain name. Complainant thus argues, and the Panel agrees, that Respondent is not commonly known by the disputed domain name and does not possess rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Complainant contends that Respondent’s <usps-china.com> domain name resolves to a website that attempts to pass itself off as Complainant. Complainant argues that the resolving website uses Complainant’s USPS mark and its Sonic Eagle logo on every page and purportedly offers the same kind of services as Complainant. Complainant also alleges that an earlier version of Respondent’s resolving website entirely copied Complainant’s “Track and Confirm” page at Respondent’s disputed domain name. The Panel finds that Respondent’s efforts to pass itself off as Complainant through misuse of Complainant’s mark and logo are not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. 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).”).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered the <usps-china.com> domain name containing Complainant’s USPS.COM mark in order to attract Complainant’s customers, trade off Complainant’s goodwill and reputation, and redirect Internet users seeking Complainant’s services to Respondent’s own website. Complainant urges that the use of Complainant’s mark in the domain name, as well as the presence of Complainant’s mark and logo on the resolving website, are intended to create a likelihood of confusion as to the affiliation or source of Respondent’s website. Complainant argues that Respondent’s website is presumably for commercial gain, which is likely increased due to the similarity between Complainant and Respondent’s websites. The Panel agrees and finds that Respondent’s activities in attracting, misleading, and profiting from Complainant’s customers and mark demonstrate bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
When conducting a Policy ¶ 4(a)(iii) analysis, the Panel finds that it may consider the totality of the circumstances without being limited to the enumerated factors in Policy ¶ 4(b). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples of [bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant also contends that Respondent’s <usps-china.com> domain name aims to pass itself off as Complainant through the use of Complainant’s mark in the domain name, the presence of Complainant’s mark and logo on the resolving website, and the similar format, layout, and content of the resolving website. Additionally, Complainant asserts that an earlier version of Respondent’s resolving website completely copied Complainant’s “Track and Confirm” webpage. The Panel finds that such attempts to fraudulently pass itself off as Complainant by appropriating Complainant’s mark and logo further indicate bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <usps-china.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 8, 2010.
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