United States Postal Service v. Chun Yu Shih / U.S. Protective Service / Daniel Shih / U.S. Protective Service, Inc.
Claim Number: FA1612001708702
Complainant is United States Postal Service (“Complainant”), represented by Nathaniel Edwards of Lewis Roca Rothgerber LLP, Arizona, USA. Respondent is Chun Yu Shih / U.S. Protective Service / Daniel Shih / U.S. Protective Service, Inc. (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <usps-fl.com> and <uspsfl.org>, registered with GoDaddy.com, LLC and Register.com, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 20, 2016; the Forum received payment on December 20, 2016.
On December 21, 2016 Register.com, Inc. confirmed by e-mail to the Forum that <uspsfl.org> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.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 December 22, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <usps-fl.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 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@usps-fl.com, postmaster@uspsfl.org. Also on December 29, 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 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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.
A. Complainant
i) Complainant is a global provider of mailing and shipping goods and services. In conjunction with its business, Complainant uses the USPS and USPS.COM marks. Complainant registered the USPS and USPS.COM marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. Nos. 2,423,574; 2,423,573, registered Jan. 23, 2001). Additionally, Complainant registered the USPS mark with the 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). Respondents’ <usps-fl.com> and <uspsfl.org> are confusingly similar to Complainant’s marks because they incorporate the USPS and USPS.COM marks in their entirety. The <usps-fl.com> domain adds a hyphen and the geographically descriptive term “FL” to both marks and the “.com” general top level domain (“gTLD”) to the USPS mark. The <uspsfl.org> domain adds the geographically descriptive term “FL” and the “.org” gTLD to both marks.
ii) Respondent has no rights or legitimate interests in <usps-fl.com> and <uspsfl.org>. Respondent is not commonly known by <usps-fl.com> or <uspsfl.org>. Complainant has not authorized or licensed Respondent to use the USPS or USPS.COM marks in any regard. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain names. Rather, Respondent presumably intends to use the disputed domain names to promote unrelated services under Complainant’s marks. Respondent’s <usps-fl.com> and <uspsfl.org> domain names resolve to blank pages: <usps-fl.com> contains the message “website coming soon” and <uspsfl.org> displays the error message “this site has exceeded the allotted bandwidth.” Additionally, Respondent appears to be fraudulently representing itself as a government-associated agency under Complainant’s USPS mark and the Great Seal of the United States.
iii) Respondent registered and is using the <usps-fl.com> and <uspsfl.org> domain names in bad faith. The disputed domain names are inactive with presumed intent to launch web pages promoting Respondent’s business. Furthermore, Respondent is in violation of several federal United States statutes, including 18 U.S.C. § 912, evincing bad faith registration of the domain names. Respondents possessed actual knowledge of Complainant and its rights to the USPS and USPS.COM marks.
B. Respondent
Respondent did not submit a response. The Panel notes that Respondent registered <usps-fl.com> and <uspsfl.org> on June 8, 2016 and May 5, 2014, respectively.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names 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 (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 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 the organization named in the WHOIS records for the disputed domain names differ only by the term “Inc.,” that the WHOIS records show the same registrant email for both disputed domain names, and the principal of U.S. Protective services is the same person. Thus, Complainant argues that the difference between the individual registrant names for the disputed domain names is due to Respondent’s use of differing aliases when registering the disputed domain names.
The Panel finds the domain names are commonly controlled by a single Respondent who is using multiple aliases.
Complainant is a global provider of mailing and shipping goods and services. In conjunction with its business, Complainant uses the USPS and USPS.COM marks. Complainant registered the USPS and USPS.COM marks with USPTO (e.g., Reg. Nos. 2,423,574 and 2,423,573, registered Jan. 23, 2001). Additionally, Complainant registered the USPS mark with WIPO and China’s Trademark Office (e.g., Reg. Nos. 1054916, registered Sept. 28, 2010; 7752756, registered Feb. 21, 2011, respectively). The general consensus among Panels is that registration with USPTO and other governmental trademark agencies is sufficient to show rights in a mark. 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 . . .”). Therefore, the Panel finds that Complainant’s multiple governmental registrations are sufficient to show rights in the USPS and USPS.COM marks pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <usps-fl.com> and <uspsfl.org> are confusingly similar to Complainant’s marks because they incorporate the USPS and USPS.COM marks in their entirety. Complainant notes the <usps-fl.com> domain adds a hyphen and the geographically descriptive postal term “FL” to both marks and the “.com” gTLD to the USPS mark. Additionally, Complainant contends that the <uspsfl.org> domain adds the geographically descriptive postal term “FL” and the “.org” gTLD to both marks. Typically, panels have held that the addition of a geographic term does not distinguish a disputed domain name from a complainant’s mark. See also Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). Furthermore, panels have noted that the addition or changing of a gTLD is not sufficient to differentiate disputed domain names from original marks. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel finds that Respondent’s <usps-fl.com> and <uspsfl.org> are confusingly similar to Complainant’s marks according to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondents lack rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondents to show they do have 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 contends Respondent has no rights or legitimate interests in <usps-fl.com> and <uspsfl.org>. To support its argument, Complainant states Respondent is not commonly known by <usps-fl.com> or <uspsfl.org>. Complainant points to WHOIS information associated with this case identifying the Respondent as “Chun Yu Shih” of “U.S. Protective Service” and “Daniel Shih” of “U.S. Protective Service, Inc.” Panels have concluded that WHOIS records, without evidence to the contrary, are sufficient in showing a respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Thus, the Panel finds that Respondent is not commonly known by <usps-fl.com> and <uspsfl.org> under Policy ¶ 4(c)(ii).
Complainant argues that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain names. In support of its argument, Complainant claims Respondent intends to use the disputed domain names to promote unrelated services under Complainant’s marks. Generally, panels have held that use of confusingly similar domain names to promote business unrelated to a complainant evidences a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Vanderbilt Univ. v. U Inc., FA 893000 (Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant); Wells Fargo & Co. v. Nadim, FA 127720 (Forum Nov. 29, 2002) (finding that the respondent’s use of the complainant’s WELLS FARGO mark to redirect Internet users to a domain name featuring magazine subscriptions was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name). Accordingly, the Panel finds that Respondent has failed to meet its burden under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Additionally, Complainant argues that Respondent’s <usps-fl.com> and <uspsfl.org> domain names resolve to blank pages: <usps-fl.com> contains the message “website coming soon” and <uspsfl.org> displays the error message “this site has exceeded the allotted bandwidth.” In Hewlett-Packard Co. v. Shemesh, the Panel found that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not 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). FA 434145 (Forum Apr. 20, 2005). Thus, this panel finds similarly, and holds that Respondent has failed to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
Finally, Respondents appear to be fraudulently representing themselves as a government-associated agency under Complainant’s USPS mark and the Great Seal of the United States. Panels have held that illegal use of disputed domain names evince a lack of rights and legitimate interests. See Nycomed Danmark ApS v. Diaz, D2006-0779 (WIPO Aug. 15, 2006) (concluding that the respondent’s use of a disputed domain name to operate a website promoting an illegal food supplement was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Therefore, given the aforementioned assertions, the Panel finds that Respondents lack rights and legitimate interests in <usps-fl.com> and <uspsfl.org> under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that 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).
Complainant argues Respondent registered and is using <usps-fl.com> and <uspsfl.org> in bad faith. The Panel recalls that the disputed domain names are inactive with presumed intent to launch web pages promoting Respondent’s business. Panels typically find that a failure to make use of a disputed domain name evinces bad faith registration. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant is a global provider of mailing and shipping goods and services. 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. 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.. Therefore, the fame, notoriety, and long-standing use of the Complainant's USPS and USPS.COM marks are recognized, and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain names constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain names in bad faith.
Complainant contends that Respondent is in violation of several federal United States statutes, including 18 U.S.C. § 912, evincing bad faith registration of the domain names. Complainant avers that Respondent’s use of the Great Seal of the United States within its logo and on its badges is in violation of federal criminal law. It further contends that Respondent’s registration and use of the Domain Names combined with Respondent’s other conduct could rightly be viewed as “falsely assum[ing] or pretend[ing] to be an officer or employee acting under the authority of the United States or any department, agency or officer thereof,” in violation of 18 U.S.C. § 912. Complainant claims that criminal violations in connection with Respondent’s unauthorized use of Complainant’s marks tarnish Complainant’s trademarks and are further evidence of Respondent’s bad faith. Panels hold that illegal activity permits a bad faith finding under Policy ¶ 4(a)(iii). See Minn. State Lottery v. Mendes, FA 96701 (Forum Apr. 2, 2001) (finding bad faith because it would be illegal for the respondent to use the domain name <mnlottery.com> without government approval). Thus, the Panel concludes Respondent registered and is using the disputed domain names in bad faith on the basis of implied illegal activity.
Finally, Complainant avers Respondent registered <usps-fl.com> and <uspsfl.org> possessing actual knowledge of Complainant and its rights to the USPS and USPS.COM marks. Complainant also contends that in light of the fame, notoriety, and long-standing use of the USPS and USPS.COM marks, it is inconceivable that Respondent did not have actual knowledge of Complainant and its rights in the mark. Panels have held that registration of a disputed domain name with actual knowledge of a complainant’s mark is sufficient to show bad faith registration 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); see also 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). Therefore, the Panel infers from the notoriety of Complainant's marks and the manner of use of the disputed domain names by Respondent that Respondent registered <usps-fl.com> and <uspsfl.org> with actual knowledge of Complainant and its rights to the USPS and USPS.COM marks, thus demonstrating bad faith under 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-fl.com> and <uspsfl.org> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: February 6, 2017
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