United Parcel Service of America, Inc. v. Linda L McGilvray / McGilvray
Claim Number: FA1807001796438
Complainant is United Parcel Service of America, Inc. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is Linda L McGilvray / McGilvray (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <unitedparcelserviceups.com>, registered with Google LLC.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 12, 2018; the Forum received payment on July 12, 2018.
On July 13, 2018, Google LLC confirmed by e-mail to the Forum that the <unitedparcelserviceups.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 July 18, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 2018 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@unitedparcelserviceups.com. Also on July 18, 2018, 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 August 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, United Parcel Service of America, is a U.S.-based company and is a leading global provider of specialized transportation and logistics services under the UNITED PARCEL SERVICE and UPS trademarks. Complainant has rights in the trademarks UPS (e.g., Reg. No. 966,774, registered Aug. 21, 1973) and UNITED PARCEL SERVICE (e.g., Reg. No. 815,191, registered Sep. 13, 1966) based upon the registration of these marks with the United States Patent and Trademark Office (“USPTO”). Respondent’s <unitedparcelserviceups.com> domain name is confusingly similar to Complainant’s marks because Respondent incorporates both the UPS and the UNITED PARCEL SERVICE marks in their entirety and adds a “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <unitedparcelserviceups.com> domain name. Respondent is not authorized or permitted to use Complainant’s <unitedparcelserviceups.com> mark and is not commonly known by the disputed domain name or the terms “UPS” or “United Parcel Service”. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, the disputed domain name resolves to an inactive webpage that displays an error message.
Respondent registered and uses the <unitedparcelserviceups.com> domain name in bad faith. Respondent’s disputed domain name resolves to an inactive website. Furthermore, Respondent had actual knowledge of Complainant’s marks when registering the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to multiple trademarks in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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.”).
Complainant has rights in the UPS and UNITED PARCEL SERVICE trademarks based upon its registration of such marks with the USPTO. Registration of a mark with the USPTO is sufficient to establish Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided copies of its USPTO registrations for the UPS (e.g., Reg. No. 966,774 registered Aug. 21, 1973) and UNITED PARCEL SERVICE (e.g., Reg. No. 815,191 registered Sep. 13, 1966) marks. Therefore, the Panel finds that the Complainant has rights in the UPS and UNITED PARCEL SERVICE marks under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <unitedparcelserviceups.com> domain name is confusingly similar to the UPS and UNITED PARCEL SERVICE marks because the disputed domain name contains both marks in their entirety and merely adds the “.com” gTLD. Combining a complainant’s trademarks and adding a gTLD does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i). See Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”). Here, Respondent uses both of complainants trademarks in their entirety and adds the “.com” gTLD. Accordingly, the Panel concludes that Respondent’s <unitedparcelserviceups.com> domain name is confusingly similar to Complainant’s UPS and UNITED PARCEL SERVICE marks per 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). If it is successful in this effort the burden then shifts to Respondent to prove that it does, in fact, have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant alleges that the Respondent fails to use the <unitedparcelserviceups.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent has made no active use of the disputed domain (the Panel takes note of the fact that the domain name was created on February 20, 2018). Failure to use a disputed domain name does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii). See Guess? IP Holder L.P. and Guess?, Inc. v. xi long chen, FA 1786533 (Forum June 15, 2018) (“The disputed domain name resolves to a parked [inactive] page with the message, “website coming soon!” The Panel finds that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii) and Respondent does not have rights or legitimate interests with respect of the domain name.”). Here, Complainant submitted a screenshot of the resolution of the <unitedparcelserviceups.com> domain to a website that merely contains an error message saying “The page cannot be displayed” and little more. Further, there is no evidence of record that the <unitedparcelserviceups.com> domain is being used fairly or for any legitimate noncommercial purpose. Accordingly, the Panel concludes that the Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use for five months does not support it having any rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii).
Complainant further argues that Respondent lacks rights and legitimate interests in the <unitedparcelserviceups.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use either of the UPS or UNITED PARCEL SERVICE marks. Where a response is lacking, WHOIS information may be used to identify a respondent per Policy ¶ 4(c)(ii). 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). Additionally, lack of authorization from a complainant to use its mark may support a finding that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Complainant provides a copy of an email from Forum, in which the concerned Registrar for the <unitedparcelserviceups.com> domain identifies Respondent as “Linda L McGilvray.” Additionally, no information in the record indicates that Respondent is known otherwise or was authorized to use the Complainant’s UPS nor UNITED PARCEL SERVICE marks. Therefore, the Panel finds that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent had actual knowledge of Complainant’s rights in the UPS and UNITED POSTAL SERVICE marks prior to registration of the <unitedparcelserviceups.com> domain. The Panel here finds that, due to the broad and geographically extensive fame of the UPS and UNITED PARCEL SERVICE marks, it is more likely than not that Respondent had actual knowledge of such marks when it registered the disputed domain name. Consequently, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the marks prior to registration.
Next, Complainant claims that the Respondent registered and uses the <unitedparcelserviceups.com> domain name in bad faith under Policy ¶ 4(a)(iii). As noted above, the <unitedparcelserviceups.com> domain name does not resolve to any substantial website content. While this may not squarely fit into any of the scenarios set out in Policy ¶ 4(b), it is worth noting that these scenarios are merely illustrative examples and are not the exclusive means to support a finding of bad faith. See Digi Int’l Inc. v. DDI Sys., FA 124506 (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). Where a domain name does not resolve to any website content and there is no other evidence that it has been used in any other manner (e.g., for email), it may be concluded that the registrant has merely passively held the name. Beginning with Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO, February 18, 2000), many UDRP Panels have held that, after considering all the circumstances of a given case, it is possible that a “[r]espondent’s passive holding amounts to bad faith.” The Telstra decision states that “paragraph 4(b) recognizes that inaction (e.g., passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith…. [I]n 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 Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour.”). See also, Autoshop 2 Di Battaglia Ferruccio C. S.N.C. v. Willamette RF Inc., WIPO Case No. D2004-0250 (collecting cases citing Telstra); and Chartered Professional Accountants of Canada v. Zakaria Frouni, FA 1795339 (Forum August 6, 2018) (“Respondent is simply passively holding the disputed domain name. Respondent’s inactive use of the disputed domain name constitutes bad faith registration and use under Policy ¶4(a)(iii).”)
The Panel notes that Complainant has submitted a screenshot of the <unitedparcelserviceups.com> domain name’s website, which resolves to a webpage displaying the message “The page cannot be displayed” and little more. Accordingly, the Panel concludes that copying Complainant’s famous trademarks combined with non-use of the disputed domain name for five months supports the conclusion that Respondent registered and uses the domain in 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 <unitedparcelserviceups.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: August 9, 2018
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