United States Postal Service v. CyberBusiness Associates
Claim Number: FA0510000572904
Complainant is United States Postal Service (“Complainant”), represented by Christopher T. Pierson, of Lewis and Roca LLP, 40 North Central Avenue, Phoenix, AZ 85004. Respondent is CyberBusiness Associates (“Respondent”), P.O. Box 1039, La Canada, CA 91011.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <onlinepostalservices.com>, <postalservicestamps.com>, <uspsepostage.com>, <uspspostage.com>, <uspostalservicepostage.com>, <uspostalservicestamp.com>, <uspostalservicestamps.com>, <postofficewebsite.com>, <euspspostage.com>, and <uspsstamps.net>, registered with BulkRegister, LLC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 5, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 7, 2005.
On October 6, 2005, BulkRegister, LLC. confirmed by e-mail to the National Arbitration Forum that the <onlinepostalservices.com>, <postalservicestamps.com>, <uspsepostage.com>, <uspspostage.com>, <uspostalservicepostage.com>, <uspostalservicestamp.com>, <uspostalservicestamps.com>, <postofficewebsite.com>, <euspspostage.com>, and <uspsstamps.net> domain names are registered with BulkRegister, LLC. and that Respondent is the current registrant of the names. BulkRegister, LLC. has verified that Respondent is bound by the BulkRegister, LLC. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 7, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 27, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@onlinepostalservices.com, postmaster@postalservicestamps.com, postmaster@uspsepostage.com, postmaster@uspspostage.com, postmaster@uspostalservicepostage.com, postmaster@uspostalservicestamp.com, postmaster@uspostalservicestamps.com, postmaster@postofficewebsite.com, postmaster@euspspostage.com, and postmaster@uspsstamps.net by e-mail.
Having received no Response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
OnNovember 2, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <uspsepostage.com>, <uspspostage.com>, <euspspostage.com>, and <uspsstamps.net> domain names are confusingly similar to Complainant’s USPS and USPS.COM marks.
Respondent’s <onlinepostalservices.com>, <postalservicestamps.com>, <uspostalservicepostage.com>, <uspostalservicestamp.com>, and <uspostalservicestamps.com> domain names are confusingly similar to Complainant’s UNITED STATES POSTAL SERVICE mark.
Respondent’s <postofficewebsite.com> domain name is confusingly similar to Complainant’s UNITED STATES POST OFFICE mark.
2. Respondent does not have any rights or legitimate interests in the <onlinepostalservices.com>, <postalservicestamps.com>, <uspsepostage.com>, <uspspostage.com>, <uspostalservicepostage.com>, <uspostalservicestamp.com>, <uspostalservicestamps.com>, <postofficewebsite.com>, <euspspostage.com>, and <uspsstamps.net> domain names.
3. Respondent registered and used the <onlinepostalservices.com>, <postalservicestamps.com>, <uspsepostage.com>, <uspspostage.com>, <uspostalservicepostage.com>, <uspostalservicestamp.com>, <uspostalservicestamps.com>, <postofficewebsite.com>, <euspspostage.com>, and <uspsstamps.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant was created as the Post Office Department on July 26, 1775 and became the Unites States Postal Service, an Independent Establishment of the Executive Branch of the Government of the United States in 1971. Complainant delivers hundreds of millions of messages and billions of dollars in financial transactions each day to eight million business and 250 million Americans.
Complainant first registered the USPS mark (Reg. No. 2,423,574) with the U.S. Patent and Trademark Office (“USPTO”) on January 23, 2001
Complainant first registered the USPS.COM mark (Reg. No. 2,423,573) with the USPTO on January 23, 2001.
Complainant first registered the UNITED STATES POSTAL SERVICE mark (Reg. No. 2,132,892) with the USPTO on January 27, 1998.
Complainant first registered the UNITED STATES POST OFFICE mark (Reg. No. 2,295,192) with the USPTO on November 30, 1999.
Respondent registered the <onlinepostalservices.com> domain name on October 18, 2001, the <postalservicestamps.com> domain name on June 21, 2002, the <uspsepostage.com> domain name on February 25, 2002, the <uspspostage.com> domain name on April 30, 2001, the <uspostalservicepostage.com> domain name on June 8, 2002, the <uspostalservicestamp.com> domain name on June 24, 2002, the <uspostalservicestamps.com> domain name on June 8, 2002, the <postofficewebsite.com> domain name on June 24, 2002, the <euspspostage.com> domain name on October 9, 2002, and the <uspsstamps.net> domain name on October 16, 2002.
Respondent is using the <postalservicestamps.com> to refer to <usstamps.com>, which offers Complainant’s and third-parties’ postal services at the resultant website. The <uspostalservicestamps.com> domain names refers to a website that states “US Postal Service Stamps are now available ONLINE!!” and offers Complainant’s and third-parties’ postal services at the resultant website. Both of these websites refer to Stamps.com, the online stamp seller, who is Complainant’s licencee. Respondent states on the resultant websites that it is an affiliate of Stamps.com.
The <euspspostage.com> and <uspsstamps.net> domain names refer to a directory service, listing links under categories such as travel, financial planning, business and finance, health and beauty, health products, sports tickets, computers, professional services, new technology, legal help, online store, and gifts.
No content is associated with the <onlinepostalservices.com>, <uspsepostage.com>, <uspspostage.com>, <uspostalservicepostage.com>, <uspostalservicestamp.com>, <postofficewebsite.com> domain names.
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."
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.”).
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.
The Panel finds that Complainant has established rights in
the USPS, USPS.COM, UNITED STATES POSTAL SERVICE, and UNITED STATES POST OFFICE
marks by proffering evidence of registrations with the USPTO. See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also Innomed Techs.,
Inc. v. DRP Servs., FA 221171 (Nat. Arb.
Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”).
The Panel finds that the <uspsepostage.com>, <uspspostage.com>,
<euspspostage.com>, and <uspsstamps.net> domain names
are confusingly similar to Complainant’s USPS and USPS.COM marks. The Panel finds that adding the word
“postage,” the word “stamps,” or the letter “e” and the word “postage” does not
significantly distinguish the domain names from the USPS or USPS.COM
marks. See Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business); see also Int’l Data Group, Inc. v. Maruyama
& Co., Ltd., D2000-0420 (WIPO June 26, 2000) (finding that the domain
name <ecomputerworld.com> is confusingly similar to the complainant’s
mark, COMPUTERWORLD); see also Brown & Bigelow, Inc. v. Rodela, FA
96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net>
domain name is confusingly similar to the complainant’s HOYLE mark, and that
the addition of “casino,” a generic word describing the type of business in
which the complainant is engaged, does not take the disputed domain name out of
the realm of confusing similarity).
The Panel finds that the <onlinepostalservices.com>,
<postalservicestamps.com>, <uspostalservicepostage.com>,
<uspostalservicestamp.com>, and <uspostalservicestamps.com>
domain names are confusingly similar to Complainant’s UNITED STATES POSTAL
SERVICE mark. The Panel holds that
eliminating “United States” and adding the word “online” and the letter “s,”
eliminating “United States” and adding the word “stamps,” abbreviating “United
States” to “US” and adding the word “postage,” abbreviating “United States” to
“US” and adding the word “stamp,” or abbreviating “United States” to “US” and
adding the word “stamps” does not significantly distinguish the domain names
from Complainant’s UNITED STATES POSTAL SERVICE mark. See Maple Leaf Sports & Entm’t Ltd. v. Toronto Maple
Leafs!, D2000-1510 (Jan. 24, 2001) (finding that the domain name
<leafs.org> is confusingly similar to the complainant’s marks, where the
complainant holds many trademarks that contain the term “LEAFS”); see also
Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000)
(finding that four domain names that added the descriptive words
"fashion" or "cosmetics" after the trademark were
confusingly similar to the trademark); see also Microsoft Corp. v. Montrose
Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name
<ms-office-2000.com> to be confusingly similar even though the mark
MICROSOFT is abbreviated); see also Nat’l Geographic Soc’y v. Stoneybrook
Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain
name <nationalgeographics.com> was confusingly similar to the
complainant’s NATIONAL GEOGRAPHIC mark).
The Panel finds that the
<postofficewebsite.com> domain name is confusingly similar to
Complainant’s UNITED STATES POST OFFICE mark.
The Panel finds that eliminating the words “United States” and adding
the word “website” does not significantly distinguish the domain name from the
UNITED STATES POST OFFICE mark. See
Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar.
6, 2001) (finding that the domain name
<christiesauction.com> is confusingly similar to the complainant's
mark since it merely adds the word “auction” used in its generic sense); see
also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr.
20, 2001) (finding that the <westjets.com> domain name is confusingly
similar to the complainant’s mark, where the complainant holds the WEST JET AIR
CENTER mark).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
Respondent is not licensed to use Complainant’s marks. Respondent is appropriating Complainant’s marks in the <postalservicestamps.com> and
<uspostalservicestamps.com> domain names to
refer customers to Complainant’s licensee, Stamps.com, as well as third-party
postal products and services. The Panel
finds that appropriating Complainant’s mark to refer customers to Complainant’s
licensee and third parties is not a bona fide offering of a good or
service pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's
registration and use of the <gayaol.com> domain name with the intent to
divert Internet users to Respondent's website suggests that Respondent has no
rights to or legitimate interests in the disputed domain name pursuant to
Policy Paragraph 4(a)(ii).”); see also Seiko Kabushiki Kaisha v. CS into
Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who
are looking for products relating to the famous SEIKO mark, to a website
unrelated to the mark is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under
Policy ¶ 4(c)(iii).”).
Respondent’s <euspspostage.com> and <uspsstamps.net>
domain names refer to third-party websites unrelated to Complainant’s marks,
including travel, financial planning, business and finance, health and beauty,
health products, sports tickets, computers, professional services, new
technology, legal help, online store, and gifts. The Panel finds that appropriating Complainant’s marks to link
Complainant’s customers to third-party websites is not a bona fide
offering of a good or service pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev,
FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users
to websites unrelated to the complainant’s mark, websites where the respondent
presumably receives a referral fee for each misdirected Internet user, was not
a bona fide offering of goods or services as contemplated by the
Policy); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644
(Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly
similar to Complainant’s mark to divert Internet users to websites unrelated to
Complainant's business does not represent 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).”).
Respondent is not “using” the <onlinepostalservices.com>,
<uspsepostage.com>, <uspspostage.com>,
<uspostalservicepostage.com>, <uspostalservicestamp.com>,
and <postofficewebsite.com> domain names. Internet users who seek out the resultant
websites are directed to a “not found” page, indicating that the domain name is
not associated with any websites. The
Panel holds that Respondent has registered domain names incorporating
Complainant’s marks but has not posted any content at the resultant websites
for over two years. The Panel finds
that this “passive use” is not a bona fide offering of a good or service
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii). See AT&T Corp. v. Domains by Brian Evans,
D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests
where the respondent did not provide any documentation on the existence of its
alleged company that might show what the company’s business was, or how the
company’s years of existence, if it ever existed, might mesh with the
complainant’s trademark claims); see also LFP, Inc. v. B & J Props.,
FA 109697 (Nat. Arb. Forum May 30, 2002) (A respondent cannot simply do nothing
and effectively “sit on his rights” for an extended period of time when that
the respondent might be capable of doing otherwise).
The Panel finds that there is nothing in the record,
including the WHOIS registration information, which demonstrates that
Respondent is commonly known by the <onlinepostalservices.com>, <postalservicestamps.com>,
<uspsepostage.com>, <uspspostage.com>, <uspostalservicepostage.com>,
<uspostalservicestamp.com>, <uspostalservicestamps.com>,
<postofficewebsite.com>, <euspspostage.com>, or <uspsstamps.net>
domain names pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Respondent is using the <postalservicestamps.com> and
<uspostalservicestamps.com> domain names to
refer Internet traffic to Complainant’s licensee, Stamps.com, and third parties
offering postal products and services.
The Panel infers that Respondent is receiving revenues through the
Stamps.com affiliate program and third-party referrals. The Panel finds that using Complainant’s
mark to refer Internet traffic Complainant’s licensee and third parties for
commercial gain is bad faith pursuant to Policy ¶ 4(b)(iv). See Utensilerie
Assoc. S.p.A. v. C & M, D2003-0159
(WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products,
together with the domain name may create the (incorrect) impression that
Respondent is either the exclusive distributor or a subsidiary of Complainant,
or at the very least that Complainant has approved its use of the domain
name.”); see also Nintendo of Am., Inc. v. Pokemonplanet.net, D2001-1020
(WIPO Sept. 25, 2001) (“By using the [<pokemonplanet.net>] Domain Names [sic] to sell Complainant’s [POKEMON]
products, Respondents have shown bad faith in use of the Domain Name.”).
Respondent is using the <euspspostage.com> and <uspsstamps.net>
domain names to refer to a website that offers links to services unrelated
to Complainant’s services, such as travel, financial planning, business and
finance, health and beauty, health products, sports tickets, computers,
professional services, new technology, legal help, online store, and
gifts. The Panel infers that Respondent
receives referral fees for sending Internet traffic to these third-party
sites. The Panel finds that appropriating
Complainant’s marks to refer traffic to third-party sites for referral fees is
evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v.
Domain Manager, FA 201976 (Nat. Arb. Forum
Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain
name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain
name provided links to Complainant's competitors and Respondent presumably
commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”); see also Kmart v. Khan, FA 127708
(Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from
its diversionary use of the complainant's mark when the domain name resolves to
commercial websites and the respondent fails to contest the complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)).
Respondent has not posted any content at the websites
associated with the <onlinepostalservices.com>,
<uspsepostage.com>, <uspspostage.com>,
<uspostalservicepostage.com>, <uspostalservicestamp.com>,
and <postofficewebsite.com> domain names. Respondent has held the respective
registrations for at least two years.
With no content associated at these websites and no evidence of
Respondent’s preparation to use the disputed domain names, the Panel concludes
that Respondent has registered and used the <onlinepostalservices.com>,
<uspsepostage.com>, <uspspostage.com>,
<uspostalservicepostage.com>, <uspostalservicestamp.com>,
and <postofficewebsite.com> domain names in bad faith. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13,
2000) (finding no rights or legitimate interests where the respondent failed to
submit a response to the complaint and had made no use of the domain name in
question); see also Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's
passive holding of the <aolfact.com> domain name for over six months is
evidence that Respondent lacks rights and legitimate interests in the domain
name.”).
The Panel finds that Complainant has established 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 <onlinepostalservices.com>, <postalservicestamps.com>, <uspsepostage.com>, <uspspostage.com>, <uspostalservicepostage.com>, <uspostalservicestamp.com>, <uspostalservicestamps.com>, <postofficewebsite.com>, <euspspostage.com>, and <uspsstamps.net> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 16, 2005
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