United States Postal Service v. GARY WIGGIN / JY
Claim Number: FA1612001708540
Complainant is United States Postal Service (“Complainant”), represented by Nathaniel Edwards of Lewis Roca Rothgerber LLP, Arizona, USA. Respondent is GARY WIGGIN / JY (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usps6.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 December 19, 2016; the Forum received payment on December 19, 2016.
On December 21, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <usps6.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 December 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2017 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@usps6.com. Also on December 27, 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 January 26, 2017, 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
1. The Domain Name is nearly identical to Complainant’s famous USPS® and USPS.COM® marks, adding only the nondescript number “6.” UDRP 4(a)(i).
2. Respondent has no actual rights or legitimate interests in the Domain Name. UDRP 4(a)(ii). Complainant had used the Marks throughout the United States and around the world for decades prior to Respondent’s registration of the Domain Name on June 10, 2015.
3. The Domain Name was registered and is being used in bad faith. UDRP 4(a)(iii). The Marks are famous throughout the world and Respondent was surely familiar with the Marks prior to registering the Domain Name.
4. Additionally, the website at the Domain Name (the “Website”) displays various intellectual property of Complainant, including Complainant’s USPS® and UNITED STATES POSTAL SERVICE® marks and Complainant’s Sonic Eagle Design. Respondent’s use of Complainant’s intellectual property on the Website removes all doubt as to Respondent’s bad faith intent in registering the Domain Name.
5. Respondent’s registration and use of the Domain Name misdirects customers seeking Complainant, disrupts Complainant’s business, deprives Complainant of the ability to control how its Marks are used, and risks irreparable damage to Complainant’s reputation and goodwill.
[a.] The Domain Name is Confusingly Similar to the Marks
i. Complainant’s Trademark Rights
6. As set forth below, Complainant has longstanding rights in the USPS® and USPS.COM® trademarks.
Origins of the United States Postal Service
7. The Post Office Department, the predecessor of Complainant the United States Postal Service, and the second oldest department or agency of the United States of America, was founded on July 26, 1775 when the Continental Congress appointed Benjamin Franklin Postmaster General.
8. Complainant has been known by the shortened name and acronym “USPS” since at least 1971, when the Post Office Department was transformed into the United States Postal Service. As established by Title 39 of the U.S. Code under the Postal Reorganization Act, Complainant is an Independent Establishment of the Executive Branch of the Government of the United States, though it receives no tax revenue for funding its operations.
9. Complainant serves millions of customers daily and sets the global industry standard for mailing and shipping related goods and services. Complainant delivers forty-seven percent (47%) of the world’s mail. In 2015, Complainant processed 154.2 billion pieces of mail.
10. Over the past two centuries, Complainant has built a reputation for quality and performance in the United States and in almost every country in the world. Complainant has frequently been included in the Ponemon Institute’s annual top ten list of the most trustworthy companies in the U.S.; received the highest approval rating of any federal agency in a 2014 Gallup poll; and was ranked the most trusted federal agency in a 2015 Pew Research Center poll.
11. Complainant has expended a great deal of capital promoting its USPS® brand to a national and international market including through online, television and radio advertising. As a result, the Marks have become famous in the United States and throughout the world.
The USPS® and USPS.COM® Marks
12. Complainant owns more than thirty United States trademark registrations incorporating the USPS® mark, including five incontestable registrations for the mark USPS® (standing alone). Among other goods and services, Complainant’s registrations for the USPS® mark cover sorting, handling and receiving packages, envelopes and letters; electronic transactions; electronic transmission of data and documents; pickup, transportation and delivery of packages and documents; security printing services; money order services; envelopes and boxes; clothing; retail store and mail order services; philatelic products; shoulder and travel bags; and stuffed animals.
13. Complainant also owns International Registration No. 1,054,916 for its USPS® mark. The registration has been granted extensions of protection in Australia, Switzerland, the European Union, Israel, Norway, Russia, Turkey, Ukraine and Vietnam.
14. Additionally, Complainant owns three China trademark registrations incorporating the USPS® mark. Among other goods and services, Complainant’s China registrations for the USPS® mark cover parcel delivery, courier services, delivery of newspapers, delivery of goods by mail order, storage of electronically-stored data or documents, packaging of goods, transportation and delivery of packages, letters, advertisements, catalogs, publications and other items of mail by various modes of transportation.
15. Complainant operates its primary website at the domain name <USPS.COM> (registered July 10, 1997), from which it offers a wide variety of products and services, including online retail store services; mailing services; shipping supplies; stamps; passport application services; Zip Code™ and address information look up; and business services.
16. The website at <USPS.COM> is accessible in China and includes numerous pages in the Chinese language, the earliest of which dates back to December 23, 2004. Complainant also owns the domain names <USPS.cn> and <USPS.com.cn>, which resolve to <USPS.COM>. The country code top-level domains (ccTLDS) .cn and .com.cn are the ccTLDs for China.
17. Complainant owns United States trademark registration number 2,423,573 for the mark USPS.COM® for a variety of online services. Complainant’s registration for the USPS.COM® mark is incontestable.
18. Complainant has continuously used the USPS® mark since at least as early as 1971, and the USPS.COM® mark since at least as early as 1999.
19. Through decades of exclusive, widespread and continuous use, the USPS® and USPS.COM® marks have gained worldwide public recognition and are indisputably famous. The Marks are a distinctive designation of Complainant and its goods and services. Complainant has acquired considerable goodwill in the Marks.
20. Therefore, Respondent surely knew of Complainant and Complainant’s rights in the Marks long prior to registration of the Domain Name.
21. Prior NAF UDRP Panels have recognized Complainant’s strong rights in the Marks.
ii. Respondent’s Confusingly Similar Domain Name
22. The Domain Name incorporates the entirety of Complainant’s famous USPS® mark. Based on this fact alone, the Domain Name is confusingly similar to the USPS® mark.
23. Moreover, the Domain Name begins with Complainant’s USPS® mark and is followed by the number “6” and the requisite gTLD, in this case <.com>. Viewed another way, the Domain Name merely inserts the number “6” into Complainant’s USPS.COM® mark.
24. The addition of non-distinctive numbers such as “6” does not reduce the confusing similarity of the Domain Name.4
25. TLDs such as .com are “without real significance in deciding the issue of whether [a domain name] is identical or similar.”
26. Respondent’s use of Complainant’s famous USPS® and USPS.COM® marks within the Domain Name is not authorized and indicates a connection between Respondent and Complainant that does not exist. And that is precisely Respondent’s intent. Respondent seeks to capitalize on the trustworthy reputation of the Marks and legitimize its services by association with Complainant. The Domain Name is confusingly similar to the Marks, and intentionally so. UDRP 4(a)(i).
[b.] Respondent Has No Rights or Legitimate Interests in the Domain Name
27. Respondent registered <USPS6.com> on June 10, 2015, at least forty-two years after Complainant first used its USPS® mark, and at least sixteen years after Complainant first used its USPS.COM® mark.
28. On information and belief, Respondent is not known as “USPS,” nor could it be because the Marks were famous and ubiquitous throughout the world for many decades prior to Respondent’s registration of the Domain Name.
29. Respondent is not using the Domain Name to identify or comment upon Complainant. Thus, Respondent has no free speech rights in the Domain Name.
30. Respondent is neither an authorized vendor nor a licensee of Complainant and does not have authorization to use the Marks or to register domain names containing or confusingly similar to the Marks.
31. Based on Complainant’s lengthy, worldwide and prominent use of the Marks prior to registration of the Domain Name, it must be inferred that Respondent had actual knowledge of Complainant’s rights in the Marks prior to registration of the Domain Name. Thus, Respondent cannot have any rights or legitimate interests in the Domain Name.
32. Complainant’s federally registered UNITED STATES POSTAL SERVICE® mark and Complainant’s Sonic Eagle Design, are protected by federal trademark and copyright registrations.
33. The Website content is in Chinese. On information and belief, the Website promotes a company named Spreadtrum Logistics, which offers mailing and shipping services, including services competitive with Complainant’s mailing and shipping services
34. Respondent may itself utilize Complainant’s services, but that does not grant Respondent any rights to register domain names including Complainant’s trademarks or to spuriously use Complainant’s trademarks to brand Respondent’s services.
35. On information and belief, Respondent registered the Domain Name to falsely convey some affiliation, sponsorship or endorsement by Complainant. This intent is borne out by Respondent’s use of Complainant’s intellectual property on the Website.
36. Respondent’s use of the Marks within the Domain Name is not a legitimate use, but a deliberate infringement of Complainant’s trademark rights.
37. No conceivable bona fide use of the Domain Name can exist when the intended use is a deliberate infringement of Complainant’s rights. Given Complainant’s trademark registrations for the Marks and the worldwide reputation of the Marks, there is no plausible circumstance in which Respondent could legitimately use the Domain Name.
[c.] The Domain Name was Registered and is Used in Bad Faith
38. The mere initial interest confusion caused by the similarity between the Marks and the Domain Name is sufficient for a finding of bad faith.
39. The Domain Name was registered through a privacy service, giving rise to a presumption of bad faith registration and use under UDRP 4(a)(iii).
40. The Marks are “indisputably” famous, indicating that “Respondent was fully aware of the Complainant’s trademark[s] and of the goodwill attached to its trademark[s] when [Respondent] registered the disputed domain name” and making it “inherently probable” that Respondent’s registration and use of the Domain Name is in bad faith.
41. Complainant’s USPS® house mark is such a well-known name that Respondent’s very use of the mark within the Domain Name “suggests opportunistic bad faith.”
42. The Website content demonstrates Respondent’s actual knowledge of Complainant and its bad faith intent to capitalize on confusion with Complainant.
43. Respondent intentionally uses Complainant’s Marks to confuse consumers as to the source, sponsorship, or affiliation of the Respondent’s services, diverting consumers from Complainant and disrupting Complainant’s business. Respondent uses the Marks within the Domain Name to attract, for commercial gain, users to its own website, which is text book evidence of bad faith registration and use.
44. The Domain Name was registered and is being used in bad faith. UDRP 4(a)(iii).
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 prove the following three elements to obtain an order cancelling or transferring a domain:
(1) the domain name 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 (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 is a global provider of mailing and shipping goods and services. Complainant uses the USPS and USPS.COM marks in conjunction with its business. Complainant registered the USPS and USPS.COM marks with United States Patent and Trademark Office (“USPTO”) (e.g., Reg. Nos. 2,423,574; 2,423,573; registered Jan. 23, 2001). Complainant also registered the USPS mark with World intellectual Property Organization (“WIPO”) and China’s Trademark Office (e.g., Reg. Nos. 1054916, registered Sept. 28, 2010; 7752756, registered Feb. 21, 2011, respectively). Registration of a mark with a governmental organization (such as the USPTO, WIPO and the China Trademark Office) adequately demonstrates rights under Policy ¶4(a)(i). See Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Forum Dec. 31, 2009) (“The Panel finds Complainant has sufficiently established rights in the HP mark . . . through its numerous registrations with many governmental trademark authorities . . . including the State Intellectual Property Office of the People’s Republic of China . . . and the United States Patent and Trademark Office . . .”). Complainant’s multiple governmental registrations are sufficient to demonstrate its rights in the USPS and USPS.COM marks.
Complainant claims Respondent’s <usps6.com> is confusingly similar to Complainant’s marks because it incorporates the USPS and USPS.COM marks in their entirety, adding the number “6” to both marks and the “.com” gTLD to the USPS mark. Generally speaking, adding single numerical digits to a disputed domain name does not make them distinguishable from the original mark. See Novartis AG v. boggs, william, FA 1570988 (Forum Aug. 25, 2014) (finding that the <freshlook2.com> domain name was confusingly similar to the complainant’s FRESHLOOK mark because the domain name contained the mark in its entirety and merely added the number “2”); Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Respondent’s <usps6.com> is confusingly similar to Complainant’s marks.
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 (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 (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 <usps6.com> domain. Complainant claims Respondent is not commonly known as <usps6.com>. The original WHOIS information shows Respondent used the WHOISGUARD PROTECTED privacy service to shield its identity. In Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., the Panel held when “[t]he WHOIS information lists [a privacy service] as the registrant of record for the disputed domain names[ ], in the absence of a Response, there is no evidence to indicate that Respondent might be known by any of the domain names.” FA1506001624077 (Forum July 31, 2015). The current WHOIS information shows the Registrant is Gary Wiggin / JY of Savanah, Georgia. There is no obvious relationship between either name and the domain name. In the absence of information to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name.
Complainant claims it has not authorized or licensed Respondent to use the USPS mark in any fashion. Complainant claims Respondent has not made a bona fide offering of good or services, or a legitimate non-commercial or fair use of the domain name. Respondent’s <usps6.com> resolves to a webpage displaying Complainant’s mark and logo, offering goods and services directly competing with Complainant. The “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).” General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016). “Capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a noncommercial or fair use pursuant to Policy ¶4(c)(iii).” Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010). This Panel would agree and finds Respondent has no rights or legitimate interests in <usps6.com> under Policy ¶4(c)(i) or ¶4(c)(iii).
Respondent has not acquired any rights to the domain name by registering it because Respondent has not publicly associated itself with the domain name in any fashion (having used a privacy service to register the domain name).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using <usps6.com> in bad faith. Respondent’s <usps6.com> resolves to a webpage displaying Complainant’s marks, while offering directly competing goods and services. Respondent is disrupting Complainant’s business by diverting Complainant’s customers to a competitor, presumably for financial gain. Using a disputed domain name to resolve to a competing website constitutes bad faith under Policy ¶4(b)(iii). Having “click through links” suggests Respondent receives a financial gain, which constitutes bad faith registration and use under Policy ¶4(b)(iv). In Disney Enters., Inc. v. Noel, the panel held “Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶4(b)(iii) [and] (iv).” FA 198805 (Forum Nov. 11, 2003). It seems clear Respondent registered and is using <usps6.com> in bad faith pursuant to Policy ¶¶4(b)(iii) and (iv).
Complainant claims Respondent registered <usps6.com> possessing actual knowledge of Complainant and its rights to the USPS and USPS.COM marks. This seems a reasonable assumption in light of the use of the domain name. Complainant’s history goes back more than 200 years and Respondent resides in Complainant’s own country (although the web site would suggest Respondent might be located in China). It is impossible for Respondent to be unaware of Complainant’s rights. Respondent clearly had actual knowledge of Complainant and its rights in the mark. Respondent used Complainant’s logos and offered competing goods (all in context), all of which leads to the inevitable conclusion Respondent knew of Complainant’s rights to the marks. Registration and use of a disputed domain name with actual knowledge of a complainant’s mark is sufficient to show bad faith registration and use under Policy ¶4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed). Respondent registered and used <usps6.com> with actual knowledge of Complainant and its rights to the USPS and USPS.COM marks.
Finally, Respondent registered the disputed domain name using a WHOIS privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut this presumption. Therefore, this Panel is willing to find bad faith registration on these grounds 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 <usps6.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: January 30, 2017
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