United Parcel Service of America, Inc. and Coyote Logistics, LLC v. Syed Hussain / IBN7 Media Group
Claim Number: FA1601001655212
Complainant is United Parcel Service of America, Inc. and Coyote Logistics, LLC (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Syed Hussain / IBN7 Media Group (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <upscoyote.com>, registered with Name.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 5, 2016; the Forum received payment on January 5, 2016.
On January 6, 2016, Name.com, Inc. confirmed by e-mail to the Forum that the <upscoyote.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 January 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 27, 2016 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@upscoyote.com. Also on January 7, 2016, 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 February 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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’s Contentions
1. Complainant owns both the UPS and COYOTE marks as demonstrated by registrations with the United States Patent and Trademark Office ("USPTO") (UPS mark, e.g., Reg. No. 1,277,400 registered May 8, 1984; COYOTE mark, e.g., Reg. No. 4,221,250 registered October 9, 2012). See Compl., at Attached Annexes M and X. Complainant uses the UPS and COYOTE marks in connection with its package delivery services. The <upscoyote.com> domain name is confusingly similar to the UPS and COYOTE marks as the domain name combine the two marks and adds the generic top top-level domain (“gTLD”) “.com”.
2. Respondent has never been commonly known by the disputed domain name. Further, Respondent is not authorized to use either the UPS or COYOTE marks. The disputed domain name is not used for a bona fide offering of goods or services, or for a legitimate noncommercial of fair use. Instead, the <upscoyote.com> resolves to an inactive website offering the domain name for sale. Finally, Respondent offered to sell the disputed domain name to Complainant, through Complainant’s counsel, for $1,250, which suggests Respondent lacks any rights or legitimate interest in the disputed domain name.
3. Respondent’s registered the domain name in bad faith. Complainant has provided evidence that the disputed domain name resolves to a general offer to sell, which is evidence of bad faith. Further, Respondent offered to sell the domain name to Complainant for an amount in excess of out-of-pocket cost. Respondent has been involved in a pattern of bad faith domain name registration and use as evidenced by Respondent’s history with the UDRP. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the mark at the time of registration of the disputed domain name, due to a press announcement by Complainant, and registered the domain name opportunistically.
B. Respondent’s Contentions
1. Respondent failed to submit a response in this proceeding.
1. Respondent’s <upscoyote.com> domain name is confusingly similar to Complainant’s UPS and COYOTE marks.
2. Respondent does not have any rights or legitimate interests in the <upscoyote.com> domain name.
3. Respondent registered or used the <upscoyote.com> 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 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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The two Complainants in this matter are: United Parcel Service of America, Inc. and Coyote Logistics, LLC. Complainants assert that each has a common interest in the domain at issue because <upscoyote.com> incorporates the principal service mark of both entities, Respondent’s bad faith is directed to both Complainants, and the two Complainants anticipate a merger. See Compl., at Attached Annex S (announcement).
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and shall treat them all as a single entity in this proceeding.
Complainant uses the UPS and COYOTE marks in connection with its package delivery business. Complainant claims rights in the UPS mark as demonstrated by its registrations with the USPTO (e.g., Reg. No. 1,277,400 registered May 8, 1984). Complainant also points to USPTO registrations to support its rights in the COYOTE mark (e.g., Reg. No. 4,221,250 registered October 9, 2012). See Compl., at Attached Annexes M and X. The Panel finds that registrations with the USPTO are sufficient to establish Policy ¶ 4(a)(i) rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues the <upscoyote.com> domain name is confusingly similar to the UPS and COYOTE marks as the domain name combines the two marks and adds the gTLD “.com.” Previous panels have found that the combining of two marks and the addition of a gTLD does not overcome a finding of confusing similarity in a Policy ¶ 4(a)(i) analysis. See Fitness Anywhere, Inc. v. Mode Athletics, FA 1320667 (Nat. Arb. Forum May 20, 2010) (“Respondent’s <trxsuspensiontraining.com> disputed domain name is confusingly similar to Complainant’s TRX and SUSPENSION TRAINING marks because it combines Complainant’s marks and merely adds the generic top-level domain “.com.”). Accordingly, the Panel finds the <upscoyote.com> domain name is confusingly similar to the UPS and COYOTE marks pursuant to Policy ¶ 4(a)(i).
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), and then the burden shifts to Respondent to show it does have 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 argues Respondent has never been commonly known by the disputed domain name. Further, Complainant urges that Respondent is not authorized to use the UPS or COYOTE marks for domain name. The Panel sees that the disputed domain name is registered to “Syed Hussain.” See Comp., at Annex A. In light of the available evidence, which does not include a response from Respondent alleging rights in the domain name, the Panel finds Respondent is not commonly known by 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).
Next, Complainant alleges that Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Complainant notes that Respondent has failed to make an active use of the disputed domain name. See Compl., at Attached Annex Z. Generally, panels have agreed with this reasoning and held that failure to make an active use of a disputed domain name is not consistent with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). As such, the Panel holds that Respondent’s failure to make an active use of the disputed domain name is not consistent with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
Additionally, Complainant urges that Respondent has offered the disputed domain name for sale to Complainant, which is additional evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name. See Compl., at Attached Annexes Z and BB. The Panel agrees that such an offer indicates a further lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). Therefore, the Panel agrees that the Respondent has failed to prove rights under Policy ¶ 4(a)(ii).
Complainant contends that Respondent has engaged in bad faith registration and use. First, Complainant asks that the Panel establish bad faith under Policy ¶ 4(b)(i) because Respondent is attempting to sell the domain name for excess its out-of-pocket costs in acquisition of said domain name. To support this assertion, Complainant has submitted Exhibit Z, which lists the sale price for the <upscoyote.com> domain name as $2,250.00 and Exhibit BB which list the sale price at $1,250.00. Prior panels have found such offers to consist of bad faith where the asking price exceeded the respondent’s acquisition costs (see Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name)), and where registration occurred because of the inherent value of the trademark enclosed in the domain name. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). The Panel finds that these circumstances are present in this dispute, and they establish bad faith under Policy ¶ 4(b)(i).
Next, Complainant argues that Respondent’s behavior has engaged in a pattern of bad faith registration and use of domain name. Complainant insists that Respondent has been involved in a number of different domain disputes as the named respondent. The Panel notes that Complainant has cited a number disputes in which Respondent has taken part, some dating back as far back as 2000. A search of ADR Forum decisions including Respondent returns 16 results, 15 of which resulted in the disputed domain name being transferred to Complainant. See, e.g., The Body Shop International PLC v. CPIC NET and Syed Hussain, D2000–1214 (WIPO Nov. 26, 2000). Generally, panels have found evidence of bad faith pursuant to Policy ¶ 4(b)(ii) when a respondent has engaged in a pattern of bad faith registration and use of disputed domain names. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”) The Panel agrees that Respondent’s previous and current behavior indicates a pattern of bad faith registration and use of disputed domain names, and the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(ii).
Complainant also argues that Respondent has engaged in opportunistic bad faith registration of the <upscoyote.com> domain name. Complainant maintains that Respondent registered the domain name on the very day that news of the impending merger of the UPS and COYOTE marks leaked to the public. Past panels have found that when domain name is registered on the same date as an announcement related to the use of a particular mark, this constitutes opportunistic bad faith under Policy ¶ 4(a)(iii). See Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (“The Respondent took advantage of the public announcement that Tandy Corporation was changing its name to RadioShack by registering the domain names on the same day as a public announcement of a company’s name change. This is also evidence of bad faith.”); see also Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”). The Panel finds Complainant’s evidence sufficient, and finds that Respondent registered the <upscoyote.com> domain name in bad faith by engaging in opportunistic bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <upscoyote.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 12, 2016
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