United States Postal Service v. LUKA TAVZARASHVILI
Claim Number: FA1509001638117
Complainant is United States Postal Service (“Complainant”), represented by Nathaniel Edwards of Lewis Roca Rothgerber LLP, Arizona, USA. Respondent is LUKA TAVZARASHVILI (“Respondent”), Republic of Georgia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <uspscomredelivery.com>, registered with eNom, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 16, 2015; the Forum received payment on September 16, 2015.
On September 17, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <uspscomredelivery.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 2015 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@uspscomredelivery.com. Also on September 21, 2015, 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 19, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 has rights, pursuant to its registrations with the United States Patent and Trademark Office (“USPTO”), in the USPS.COM mark (e.g., Reg. No. 2,423,573, registered January 23, 2001). Respondent’s <uspscomredelivery.com> domain name is confusingly similar as it incorporates the USPS.COM mark fully, eliminates the “.” punctuation mark, adds the descriptive term, “redelivery,” and appends the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <uspscomredelivery.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent has not evinced a connection with any bona fide offering of goods or services or any legitimate noncommercial or fair use. Instead, Respondent’s website provides an unpaid link to Complainant’s home site at <usps.com>, and merely contains graphics and information likely copied from another source.
Respondent registered and used the <uspscomredelivery.com> domain name in bad faith as it had actual knowledge of the USPS.COM mark and Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant must prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(e), 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 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.”).
Complainant claims it has rights, pursuant to registrations with the United States Patent and Trademark Office (“USPTO”), in the USPS.COM mark (e.g., Reg. No. 2,423,573, registered January 23, 2001). A complainant’s rights in a mark can be established through registration with the USPTO (or a similar governmental authority), See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶4(a)(i).”) and see Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶4(a)(i)). Complainant has adequately proven its rights under Policy ¶4(a)(i).
Complainant claims Respondent’s <uspscomredelivery.com> domain name is confusingly similar as it incorporates the USPS.COM mark fully, eliminates the “.” punctuation mark, adds the descriptive term, “redelivery,” and appends the “.com” gTLD. Incorporating a complainant’s mark in full tends to support a complainant’s claim of confusion. Adding a descriptive work does not adequately distinguish the domain name from Complainant’s mark. See Dawson v. Doctor, FA 521036 (Nat. Arb. Forum Sept. 1, 2005) (finding that the <drgem.com> domain name was identical to Complainant’s DR. GEM mark because “…the domain name fully incorporates the mark and merely removes the period after the abbreviation “DR.”); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). Likewise, adding a TLD (whether a gTLD or a ccTLD) does not adequately distinguish the domain name from Complainant’s mark because domain name syntax requires a TLD, see Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The <uspscomredelivery.com> domain name is confusingly similar to the USPS.COM mark under Policy ¶4(a)(i).
Finally, Complainant uses the usps.com/redelivery URL. Respondent’s domain name is clearly confusingly similar to that URL.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has no rights or legitimate interests in the <uspscomredelivery.com> domain name. Respondent is not commonly known by the disputed domain name. Neither the initial privacy registration nor the subsequent registration show any relationship between Respondent’s name and the disputed domain name. This is enough (in the absence of evidence to the contrary) to conclude Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent has not demonstrated Respondent makes any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name. Respondent’s website provides an unpaid link to Complainant’s home site at <usps.com>, and merely contains graphics and information copied from another source. It appears to this Panel that Respondent is trying to pass itself off as Complainant. See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Nat. Arb. Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶4(c)(i) or ¶4(c)(iii) . . .”). Respondent has demonstrated no rights or legitimate interests in the disputed domain name under Policy ¶¶4(c)(i) or (iii).
Finally, Respondent registered the disputed domain name using a privacy service. This means Respondent has not publicly associated itself in any fashion with the disputed domain name. This means Respondent acquires no rights to the domain name merely by registering it.
The Panel finds Policy ¶4(a)(ii) satisfied.
While Complainant does not make any claims that fall within the articulated provisions of Policy ¶4(b), these provisions are meant to be merely illustrative of bad faith and not exhaustive. Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
In light of the fame and notoriety of Complainant's USPS.COM mark, it is inconceivable that Respondent could have registered the <uspscomredelivery.com> domain name without actual knowledge of Complainant's rights in the mark (especially since Respondent copied Complainant’s logos). Complainant uses the usps.com/redelivery URL. Respondent’s domain name is clearly confusingly similar to that URL. Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds actual knowledge is adequate evidence of bad faith under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Respondent registered the disputed domain name using a privacy service. This raises the rebuttable presumption of bad faith registration and use in the commercial context. Since Respondent has done nothing to rebut that presumption, this Panel is comfortable finding bad faith for that reason alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <uspscomredelivery.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, November 3, 2015
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