National Arbitration Forum

 

DECISION

 

United States Postal Service v. Hugh Stine d/b/a PostalServiceUniforms.com

Claim Number: FA0604000671209

 

PARTIES

Complainant is United States Postal Service (“Complainant”), represented by Christopher T. Pierson, of Lewis and Roca LLP, 40 North Central Avenue, Suite 1900, Phoenix, AZ 85004.  Respondent is Hugh Stine d/b/a PostalServiceUniforms.com (“Respondent”), 2910 E Pine Needle Ave., Colbert, WA 99005.

 

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <postalserviceuniforms.com>, <postalserviceuniforms.net>, <postalserviceuniforms.org> and <postalserviceuniforms.info>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

 

PANEL

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.

 

Michael Albert as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 31, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 3, 2006.

 

On April 3, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <postalserviceuniforms.com>, <postalserviceuniforms.net>, <postalserviceuniforms.org> and <postalserviceuniforms.info> domain names are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that the Respondent is the current registrant of the name.  Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 April 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 27, 2006 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@postalserviceuniforms.com, postmaster@postalserviceuniforms.net, postmaster@postalserviceuniforms.org and postmaster@postalserviceuniforms.info by e-mail.

 

A timely Response was received and determined to be complete on April 27, 2006.

 

An Additional Submission was received from Complainant on May 1, 2006, and is considered timely in accordance with Supplemental Rule #7.

 

On May 5, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael Albert as Panelist.

 

An Additional Submission was received from Respondent on May 6, 2006, and is considered timely in accordance with Supplemental Rule #7.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant contends that:

 

• Complainant is the owner of the famous and well-known UNITED STATES POSTAL SERVICE, U.S. POSTAL SERVICE, and POSTAL SERVICE trademarks in relation to postal delivery and other services.  Complainant is an Independent Establishment of the United States government.  Complainant’s predecessors have been in existence since 1775.  Complainant delivers millions of messages and billions of dollars in financial transactions in connection with these marks, and has used these marks in commerce since at least as early as the 1970s.

 

• Complainant holds valid United States trademark registrations in UNITED STATES POSTAL SERVICE and U.S. POSTAL SERVICE.  Complainant has appended to its Complaint proof of these registrations.  Complainant also has obtained common-law trademark rights in the POSTAL SERVICE mark, by using it in commerce since the mid-1850s.

 

• The disputed domain names <postalserviceuniforms.com>, <postalserviceuniforms.net>, <postalserviceuniforms.org> and <postalserviceuniforms.info> are confusingly similar to Complainant’s trademarks.

 

• Respondent has no rights or legitimate interests in the disputed domain names.  Two of the domain names, <postalserviceuniforms.com> and <postalserviceuniforms.net>, redirect Internet users to Respondent’s website at <www.postaluniforms.net>.  Respondent uses this site to sell United States Postal Service products, even though Respondent is not a licensed vendor.  Alternatively, Respondent uses this site to link users to other web sites selling United States Postal Service products.  Such use does not constitute a legitimate right or interest.  Two of the domain names, <postalserviceuniforms.org> and <postalserviceuniforms.info>, do not resolve to any web site, and have not done so since Respondent registered them in 2001.  This failure to make any use of the domain names in not a legitimate right or interest.

 

• Respondent registered and is using the disputed domain names in bad faith.  Respondent had actual or constructive notice of Complainant’s rights in the POSTAL SERVICE marks.  Respondent is using the domain names to attract customers to his web site, which is unaffiliated with the U.S. Postal Service.  In addition, Respondent receives monetary compensation from sponsors, who pay him to place advertising links on his <www.postaluniforms.net> web site.  Respondent is thus trying to disrupt the business of a competitor, and attempting to attract Internet users to his site for commercial gain by creating a likelihood of confusion with Complainant’s trademarks.  Respondent’s registration of multiple domain names also suggests bad faith.

 

B. Respondent

 

Respondent contends that:

 

• Complainant was not known as the United States Postal Service prior to July 1, 1971.  Before that date, Complainant was named the Post Office Department.

 

• Complainant cannot have trademark rights in the words “postal service” alone, because they are generic words.  A Google search on “postal service” returns 236 million records, suggesting that the term is generic.  While it is possible for descriptive terms to achieve trademark status, Complainant has provided no evidence that it has achieved secondary meaning in the term “postal service,” especially outside the United States.  Other countries’ postal systems may be known as the “postal service” in those countries.

 

• Respondent set up a legitimate web site at <postalserviceuniforms.com>, to allow a searchable system where United States Postal Service (“USPS”) employees could compare prices on postal service clothing and paraphernalia from licensed vendors.  Respondent chose this name due to its generic and descriptive nature.  Respondent does not sell postal service uniforms on his web site; rather, the Internet user can compare prices between different licensed vendors.  Once the user selects a vendor, he is redirected to the vendor’s web page.  Respondent thus is not selling USPS uniforms without a license on this web site.  As a result of the dispute with Complainant, Respondent temporarily moved this site to <postaluniforms.net>

 

• Respondent did not register the disputed domain names in bad faith.  Instead, he used the words <postalserviceuniforms.com> because they were generic, and described the service that he was offering through his web site.  He registered the other disputed domain names because they were also generic and described his services, and he intended that they would either funnel traffic to his main site or that he could hold them to prevent someone else from diverting traffic intended for his site.

 

C. Additional Submissions

 

In its additional submission, Complainant contends that Respondent is making money from the disputed domain names.  The <postalserviceuniforms.com> domain name redirects to Respondent’s <postaluniforms.net> web site.  <postaluniforms.net> is sponsored by and contains links to <postaluniforms.us>, which does have United States Postal Service uniforms for sale.  Respondent generates revenue through advertising and sponsorships on his <postaluniforms.net> web site.  Complainant argues that it has rights in the UNITED STATES POSTAL SERVICE, U.S. POSTAL SERVICE, and POSTAL SERVICE marks because they have acquired secondary meaning in the minds of consumers.  Complainant also argues that the disputed domain names are confusingly similar to its marks, that Respondent is not engaging in a bona fide offering of goods or services, that Respondent is not commonly known by any of the domain names, and that Respondent registered and is using the domain names in bad faith.  Complainant concedes that <postalserviceuniforms.net> has not been used to redirect users to Respondent’s <postaluniforms.net> web site.

 

In his additional submission, Respondent contends that the services offered at <postaluniforms.net> are not significantly connected to the illegal sale of USPS uniforms.  While the site is sponsored by and links to <postaluniforms.us>, that site is owned and operated by American Postal Uniforms, a United States Postal Service Licensed vendor.  Respondent argues that accepting sponsorships or advertising on a search engine site, such as he operates, is not evidence of bad faith.  Respondent also repeats his arguments that “postal service” is a generic term, and that he has used the domain names in connection with a bona fide offering of goods or services.

 

FINDINGS

The Panel finds that Complainant has established that it owns protectible rights in the UNITED STATES POSTAL SERVICE, U.S. POSTAL SERVICE, and POSTAL SERVICE marks.  While the words “postal service” may be descriptive of Complainant’s services, Complainant has submitted sufficient evidence to show that these marks have attained secondary meaning in the minds of consumers.  The Panel also finds that the domain names are identical or confusingly similar to those marks.

 

The Panel finds that Respondent registered the domain name <postalserviceuniforms.com> on July 15, 2000, the domain name <postalserviceuniforms.net> on December 30, 2001, the domain name <postalserviceuniforms.info> on December 29, 2001, and the domain names <postalserviceuniforms.org> on December 29, 2001.  The Panel finds that these registrations occurred long after Complainant had established its rights in the POSTAL SERVICE trademarks.  The Panel also finds that Respondent offered his postal uniform searching service on the <postalserviceuniforms.com> web site, and later transferred those services to <postaluniforms.net>.  The Panel finds that only <postalserviceuniforms.com> redirects Internet users to <postaluniforms.net>.  The other three disputed domain names do not resolve to any web pages.

 

The Panel finds that Respondent does not offer United States Postal Service uniforms for sale on his <postaluniforms.net> web site.  Instead, the site contains a searching service by which Internet users can compare prices and availability of United States Postal Service clothing and paraphernalia available from USPS licensed vendors.  Internet users who attempt to make a purchase based on searches of this system are transferred to the licensed vendors’ web sites.  The Panel finds that, while <postaluniforms.us> is a sponsor of Respondent’s web site, <postaluniforms.us> is not run by Respondent, but rather appears to be the web site of a licensed USPS uniform vendor.

 

The Panel makes no finding as to whether Respondent is running a legitimate business at his <postaluniforms.net> site.  Merely operating a web site that compares prices between licensed vendors of a product does not necessarily violate the rights of the licensor of those products.  Respondent’s use of images of USPS uniforms as part of this searching may even be allowable, nominative use of Complainant’s POSTAL SERVICE marks, although such a question could only be appropriately resolved by a court in an action for service mark infringement rather than by a panel charged with implementing the Policy.  Respondent’s operation of an arguably legitimate web site, however, does not establish that he has rights or legitimate interests in the disputed domain names.  As discussed below, Respondent has used domain names that infringe Complainant’s trademark rights, in connection with a business that is not known by those domain names, in an attempt to drive Internet traffic to his site.  Such usage does not constitute rights or legitimate interests.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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.

 

Identical and/or Confusingly Similar

 

The disputed domain names are confusing similar to Complainant’s marks.  They incorporate the entirety of Complainant’s POSTAL SERVICE mark, and a significant portion of Complainant’s UNITED STATES POSTAL SERVICE and U.S. POSTAL SERVICE marks.  The only differences are the addition of the generic word “uniforms” and four different top-level domains.  Top-level domains are irrelevant to a finding that a domain name and service mark are identical.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (addition of a generic top-level domain is “not relevant” to a determination of similarity, as it is required, necessary, and functional).  The addition of a generic term like “uniforms” also does not sufficiently distinguish the domain names from the POSTAL SERVICE marks.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).  Nor does the omission of the words “United States” or “U.S.” detract from a finding of confusing similarity, for the domain names still incorporate the entirety of Complainant’s POSTAL SERVICE mark.  In addition, this omission is insufficient to prevent a finding of confusing similarity.  See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark).

 

Respondent contends that Complainant has no trademark or service mark rights in the words “postal service,” appearing alone, as it has not established secondary meaning in those words.  This contention must be rejected.  First, Complainant has submitted evidence that it has common law rights in the mark POSTAL SERVICE.  Second, Complainant has USPTO registrations in the marks UNITED STATES POSTAL SERVICE and U.S. POSTAL SERVICE.  See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark); see also Innomed Tech., 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.”).

Third, both prior arbitration proceedings and U.S. court decisions have concluded that Complainant has established secondary meaning in the words “postal service,” and that consumers associate these terms with Complainant.  See Zippe Corp. v. U.S. Postal Serv., 140 F. Supp. 2d 1084, 1087 (D. Or. 2000) (“‘[P]ostal service,’ standing alone, constitutes a descriptive phrase that is protectable because it has attained secondary meaning in the minds of consumers as a designation of source rather than as a product or genus of product.”); see also U. S. Postal Serv. v. CyberBusiness Assocs., FA 572904 (Nat. Arb. Forum Nov. 16, 2005) (holding 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 and transferring all domain names to Postal Service).

 

Respondent’s argument that the words “postal service” might not be associated with Complainant overseas is inapposite.  If, in order to achieve secondary meaning, a trademark claimant has to show secondary meaning in every country, it would be impossible to secure trademark rights in this fashion.  Furthermore, all of the items which are searchable on Respondent’s web site appear to be USPS products, not products from overseas.  Respondent has thus provided no evidence that persons outside the United States would be looking for “postal service” products on his site that are not related to the United States Postal Service.[1]

 

The Panel finds that Complainant has shown that the domain names are confusingly similar to its trademarks under ICANN Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Respondent has no rights or legitimate interests in the domain names.  As to <postalserviceuniforms.com>, Respondent claims to be operating a legitimate search engine for licensed USPS vendors’ products, and thus is using the domain name in connection with a bona fide offering of goods or services.  As mentioned above, it may be the case that the services Respondent offered at <postalserviceuniforms.com> (and later at <postaluniforms.net>) are a legitimate business.

 

Doing so, however, does not render Respondent’s use of the <postalserviceuniforms.com> domain name legitimate.  Complainant correctly argues that its United States federal registrations of the POSTAL SERVICE marks provides Respondent, a United States resident, with constructive notice of Complainant’s interest in the mark and prior rights.  See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000).  Given this notice, and the widespread fame and long use by Complainant of the POSTAL SERVICE marks, the Panel concludes that Respondent did not simply stumble across the words “postal service” to describe his business.  Instead, it is far more likely that Respondent purposefully chose the words to direct Internet traffic aimed at Complainant’s web site to his own services.

 

The use of a trademark owned by a third party to advertise one’s own goods or services cannot be an offering of bona fide goods or services, even where the services offered under the mark may be legitimate in other respects.  “The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”  State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 11, 2000) (use of another’s well-known or famous trademark as a domain name does not constitute a bona fide offering of goods or services).  In a closely related context, even an authorized reseller of a complainant’s products cannot use the complainant’s trademarks as its domain name.  See, e.g., Nokia Corp. v. Wills, D2001-0004 (WIPO Feb. 25, 2002) (holding that “even if Respondent is an authorized retailer of Complainant’s products, this in itself is not sufficient to give Respondent a right to use these trademarks as Domain Names”; transferring domain names).  Respondent in this case cannot use the trademarks of another as his domain name in order to provide his services.

 

Respondent has also failed to submit any evidence that it is commonly known by the name “postal service uniforms,” or that it developed any of the domain names in relation to a non-commercial or fair use.

 

As regards the <postalserviceuniforms.net>, <postalserviceuniforms.info>, and <postalserviceuniforms.org> domain names, it is undisputed that Respondent has made no use of them.  Without demonstrable preparations to use these disputed domain names, there has been no 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).  See Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, the respondent had not used the domain names in connection with any type of bona fide offering of goods and services); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that a respondent made preparations to use the domain name in connection with a bona fide offering of goods or services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that the respondents have not established any rights or legitimate interests in the domain name).

 

The Panel finds that Respondent has no rights or legitimate interests in the domain names under ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent’s <postalserviceuniforms.com> domain name resolves to Respondent’s commercial website, where Respondent makes money through sponsorships and paid advertising.  Respondent’s use of portions of Complainant’s UNITED STATES POSTAL SERVICE and U.S. POSTAL SERVICE marks, and the entirety of its POSTAL SERVICE mark, in the domain names creates a likelihood of confusion and suggests an attempt to attract Internet users to Respondent’s website for Respondent’s commercial gain.  This is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).  As noted above, Respondent had notice of Complainant’s rights before engaging in this behavior.

 

Furthermore, Respondent has registered and used the <postalserviceuniforms.net>, <postalserviceuniforms.org>, and <postalserviceuniforms.info> domain names in bad faith because Respondent has made no use of the domain names since registering them in December 2001 and has not provided evidence of demonstrable preparations to use the domain names.  See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

 

The Panel finds that Respondent has registered and used the domain names in bad faith under ICANN Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <postalserviceuniforms.com>, <postalserviceuniforms.net>, <postalserviceuniforms.org> and <postalserviceuniforms.info> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Michael Albert, Panelist
Dated: May 19, 2006

 

 

 

 

 

 

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