United States Postal Service v. Rocky
Production
Claim Number: FA0604000679542
PARTIES
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 Rocky Production (“Respondent”), 23852 Pacific Coast Highway, Unit 720, Malibu, CA 90265.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <azpostoffice.com>, <
delawarepostoffice.com>, <floridapostoffice.com>, <ncpostoffice.com>, <
newjerseypostoffice.com>, <newyorkpostoffice.com>, <
njpostoffice.com>, < nypostoffice.com>, <ohiopostoffice.com>, <sandiegopostoffice.com> and <vipostoffice.com>, registered with Dotster.
PANEL
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.
Honorable Richard B. Wickersham, Judge (Ret.), as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 13, 2006; the National Arbitration Forum received a
hard copy of the Complaint on April 17, 2006.
On April 14, 2006, Dotster confirmed by e-mail to the National
Arbitration Forum that the <azpostoffice.com>, <
delawarepostoffice.com>, <floridapostoffice.com>, <ncpostoffice.com>, <
newjerseypostoffice.com>, <newyorkpostoffice.com>, <njpostoffice.com>, <
nypostoffice.com>, <ohiopostoffice.com>, <sandiegopostoffice.com>
and <vipostoffice.com> domain names are registered with Dotster
and that the Respondent is the current registrant of the name. Dotster has verified that Respondent is
bound by the Dotster 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 24, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of May 15, 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@azpostoffice.com, postmaster@delawarepostoffice.com,
postmaster@floridapostoffice.com, postmaster@ncpostoffice.com, postmaster@newjerseypostoffice.com,
postmaster@newyorkpostoffice.com, postmaster@njpostoffice.com, postmaster@nypostoffice.com,
postmaster@ohiopostoffice.com, postmaster@sandiegopostoffice.com and postmaster@vipostoffice.com
by e-mail.
A timely Response was received and determined to be complete on May 1,
2006.
On May 8, 2006, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Richard B. Wickersham, Judge (Ret.), as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
This Complaint is hereby submitted
for decision in accordance with the Uniform Domain Name Dispute Resolution
Policy, adopted by the Internet Corporation for Assigned Names and Numbers
(ICANN) on August 26, 1999 and approved by ICANN on October 24, 1999 (ICANN
Policy), and the Rules for Uniform Domain Name Dispute Resolution Policy (ICANN
Rules), adopted by ICANN on August 26, 1999 and approved by ICANN on October 24, 1999, and the National Arbitration
Forum (NAF) Supplemental Rules (Supp. Rules). ICANN Rule 3(b)(i).
The name and contact information of the person authorized to act for the United States Postal Service (“USPS” or “Complainant”) in the proceedings is: Christopher T. Pierson, Lewis and Roca LLP, 40 North Central Avenue, Phoenix, Arizona 85004, Telephone: (602) 262-5763, E-mail: cpierson@lrlaw.com, Fax: (602) 734-3779.
The preferred method of communicating with Complainant is through its counsel, Christopher T. Pierson, via e-mail to cpierson@lrlaw.com with a fax copy to (602) 734-3779.
The Complainant is seeking a panel of one (1) arbitrator.
The trademarks, service marks, and common law marks upon which the Complaint is based are UNITED STATES POST OFFICE® and POST OFFICE™ (the “Marks”). Complainant registered and uses these marks for a wide range of products and services related to the mailing and shipping industry such as packaging, mailing and shipping services, retail store services featuring postage stamps, stamp collections, philatelic products, postcards, envelopes, stationery, novelty items, and other related merchandise.
Respondent has no rights or legitimate interest in the Domain Names. Respondent is and was aware of the fame of Complainant’s Marks used in conjunction with the mailing industry and philatelic items. Respondent’s Domain Names and websites divert Internet consumers searching for USPS to other websites. Use of the Domain Names by Respondent could cause substantial damage to the rights and property of Complainant as well as result in identity theft crimes. Policy ¶ 4(a)(ii).
The Domain Names were registered and are being used in bad faith. Policy ¶ 4(a)(iii). There can be no dispute that Respondent was familiar with the Marks prior to registering the Domain Names because of the fame of Complainant’s Marks. USPS has not granted Respondent permission to use its Marks with the Domain Names. Respondent’s registration and use of the Domain Names is an intentional attempt to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with USPS as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. Policy ¶ 4(b)(iv). “Respondent’s retention of these domain names causes confusion and would cause confusion and could lessen Complainant’s rights to use and profit by it’s registered . . . Mark and established names.”
USPS has long-standing rights in its UNITED STATES POST OFFICE® and POST OFFICE™ trademarks.
The United States Postal Service is
an Independent Establishment of the Executive Branch of the Government of the
United States. The Post Office
Department, the predecessor of the United States Postal Service and the second
oldest department or agency of the United States of America, began on July 26, 1775
when the Continental Congress appointed Benjamin Franklin Postmaster
General. In 1971, the Post Office Department was transformed into United States
Postal Service as established by Title 39 of the U.S. Code under the Postal
Reorganization Act.
USPS delivers hundreds of millions of messages and billions of dollars in financial transactions each day to eight million businesses and 250 million Americans under these Marks. It serves over 7.5 million customers daily at its more than 37,000 POST OFFICE™ locations throughout the United States. USPS has set the industry standard for mailing related goods and services.
Over the past two centuries, USPS has built a reputation for
quality and performance and markets its products and services in the United
States and almost every country in the world.
The Postal Service has spent a great deal of money promoting the UNITED STATES POST OFFICE® and POST OFFICE™ marks
to a national and international market and, as a result, the Marks have become
well known.
USPS owns 2 federal trademark registrations for the UNITED STATES POST OFFICE® mark which it has used since 1937. USPS has continuously used the POST OFFICE™ mark since the 1700s and thus has acquired common-law trademark rights in this mark.
USPS has extensive common law rights in the term “POST OFFICE”, which were recognized by a previous NAF UDRP panel. Moreover, in 1909, Congress granted the U.S. Postal Service, the exclusive right to use the name POST OFFICE and declared that, “Whoever, without authority from [USPS], sets up or professes to keep any office or place of business bearing the sign, name, or title of post office, shall be fined under this title.” 18 U.S.C. § 1729.
The UNITED STATES POST OFFICE® and POST OFFICE™ marks have gained worldwide public recognition. These Marks have become a distinctive designation of the source of USPS’s goods and services. The Postal Service has acquired considerable goodwill associated with the Marks.
B. Respondent
Respondent has registered several domain names incorporating Complainant’s famous Marks. To establish a confusingly similar domain name, virtual or essential identity is sufficient for the purposes of paragraph 4(a)(i) of the Policy. One method used to test confusingly similar domain names is to “generally compare the look, sound, and meaning of the disputed domain name with the look, sound, and meaning of the complainant’s mark.
A common technique used to capitalize on third party trademark rights is to add a generic term to the mark the Registrant is trying to trade off. Respondent’s domain names are formed by the main elements of USPS’s marks UNITED STATES POST OFFICE® and POST OFFICE™ and the addition of a generic word.
Specifically, Respondent has added the following city or state prefixes or names: AZ, Delaware, Florida, NC, New Jersey, New York, NJ, NY, Ohio, San Diego, and VI to the POST OFFICE™ Mark.
Simply adding generic terms to the Complainant’s trademark does not avoid a finding that the domain name is confusingly similar to a trademark in which the Complainant has rights.
Respondent has no legitimate
interests in the Domain Names and registered the Domain Names in full knowledge
of USPS’s Marks and for the purpose of exploiting USPS’s goodwill. Rule 4(a)(ii).
Respondent is neither an authorized vendor nor a licensee of USPS and does not have authorization to use its Marks or to register domain names comprised of the Marks.
No conceivable bona fide use of the Domain Names exists when the intended use is a deliberate infringement of another’s rights. Respondent is trading off of Complainant’s valuable and famous trademarks to drive customers to its website for commercial gain. This is contrary to the fundamental premise of good faith. Respondent is not commonly known by any of the Domain Names disputed in this Complaint, nor has it acquired any trademark rights for similar names.
The Domain Names have been
registered and are being used in bad faith.
Rule 4(a)(iii).
Bad Faith in the Registration and Use of the Active Domain Names.
When a consumer types in the Domain
Names <azpostoffice.com>, <delawarepostoffice.com>, <floridapostoffice.com>, <ncpostoffice.com>,
<newjerseypostoffice.com>, <newyorkpostoffice.com>, <njpostoffice.com>,
<nypostoffice.com>, <ohiopostoffice.com>, and <sandiegopostoffice.com>
the Internet user is directed to websites owned by Rocky Production, not
USPS. Respondent’s sole intent is
financial gain by trying to create a likelihood of confusion with Complainant’s
goodwill in its UNITED STATES POST
OFFICE® and POST OFFICE™ marks.
Respondent Knew or Should Have Known of USPS and its Marks.
Since USPS’s Marks enjoy decades of
worldwide recognition and goodwill and are prominently used in every community
in the U.S., Respondent “knew or should have known” of the registration and use
of USPS’s Marks prior to registering the Domain Names.
Respondent Is Baiting Consumers.
Consumers who visit the websites hosted at Respondent’s Active Domain Names will likely infer a relationship, affiliation or sponsorship between Respondent and USPS when none exists. By typing in these Domain Names consumers expect to arrive at USPS’s website for the corresponding state or city and are likely to be confused upon arriving at Respondent’s website. “Baiting” consumers to its website establishes Respondent’s bad faith.
Respondent is Diverting Consumers for
Financial Gain.
Respondent registered the Domain Names with the ultimate goal of financial gain, trying to take advantage of the traffic generated by persons seeking USPS’s goods and services.
The website links hosted at the Domain Names offer “Sponsored Listings” to manufacturers and providers of goods and services for other companies. Therefore, Respondent is making use of the Domain Names with the ultimate purpose of commercial gain.
By redirecting consumers, Respondent satisfies two prongs indicative of bad faith under the Policy: (A) disrupting the business of a competitor Policy ¶ 4(b) (iii) and (B) attempting to attract, for commercial gain, Internet users to one’s website by creating a likelihood of confusion with the complainant’s mark. Policy ¶ 4(b)(iv).
Moreover, since it can be inferred that Respondent knew of USPS’s Marks, Respondent’s registration of the Domain Names despite such knowledge is evidence of bad faith registration.
Risk of Consumer Fraud, Identity Theft, and Phishing.
Respondent is capable of using e-mail addresses comprised of its Domain Names (i.e. Stamps@newyorkpostoffice.com). The USPS does not have any control over the information, credit card numbers, e-mail addresses, etc. that consumers may submit to websites associated with these e-mails or these e-mail addresses themselves.
This represents a risk of consumer fraud or identity theft being associated with USPS’s Marks. The Panel in Halifax plc v. Sunducl, D2004-0237 (WIPO June 3, 2004) similarly held that the apparent potential for “phishing” or obtaining information by deception, is not just evidence of bad faith but possibly suggestive of criminal activity and the Panel transferred the domain name.
Patterns of Abuse: Multiple Domain Names to Confuse Consumers.
Respondent has demonstrated a
pattern of registering domain names in which it has no legitimate
interest. Respondent’s registrations formed by USPS’s Marks suggest that its
purpose was to use the names to attract traffic, not to provide consumer
services. See U.S. Postal Service v. Consumer Inf. Org., NAF 95757 (Nov. 27,
2000) (finding Respondent had no legitimate interest where it registered multiple
variations of the same name, which supported the conclusion that its purpose
was to use the name to attract traffic, not to provide consumer services;
domain transferred).
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.
FINDINGS
Complainant alleges that it has
established rights in the UNITED STATES POST OFFICE mark through registration
of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg.
No. 2,295,192 issued November 30, 1999; Reg. No. 2,295,478 issued November 30,
1999) in connection with a vast array of goods and services related to the
mailing and shipping industry.
Complainant also argues that a federal statute, 18 U.S.C. § 1729,
protects its rights to use the mark, which states “Whoever, without authority
from the Postal Service, sets up or professes to keep any office or place of
business bearing the sign, name, or title of post office, shall be fined under
this title.” The Panel finds that
Complainant’s trademark registrations and the federal statute are sufficient to
establish Complainant’s rights in the UNITED STATES POST OFFICE mark under
Policy ¶ 4(a)(i). See 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.”); Am. Nat’l Red Cross
v. Universal Translator, Inc., FA 237440 (Nat. Arb. Forum Mar. 31, 2004)
(“Complainant has established rights in the RED CROSS mark through evidence of
wide use of the mark in commerce, through evidence of acts of Congress
protecting that mark, and through registration of the mark on the Principal
Register of the U.S. Patent and Trademark Office.”); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the
USPTO has made a determination that a mark is registrable, by so issuing a
registration, as indeed was the case here, an ICANN panel is not empowered to
nor should it disturb that determination.”).
In addition, Complainant argues that the disputed domain names are confusingly similar to its UNITED STATES POST OFFICE mark, because each contains the predominant terms of the mark, omits the term “United States,” and merely adds a geographic or common term to the beginning of the mark. The Panel determines that the mere addition of common or geographic terms to Complainant’s UNITED STATES POST OFFICE mark and the omission of the term “United States” from the mark does not avoid a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to the complainant’s famous mark); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks).
The Panel knows that Complainant
has the burden of making a prima facie case that Respondent lacks rights
and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii),
and the burden then shifts to Respondent to show it does have rights or
legitimate interests. See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that,
where the complainant has asserted that the respondent has no rights or
legitimate interests with respect to the domain name, it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb.
Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to Respondent.
Respondent’s failure to respond means that Respondent has not presented any
circumstances that would promote its rights or legitimate interests in the
subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name, it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”).
Complainant maintains that there is no evidence in the record suggesting that Respondent is commonly known by the disputed domain names, including the WHOIS information, which lists “Rocky Production” as the registrant of the disputed domain names. Complainant also asserts that it has not authorized or licensed Respondent to register or use a domain name incorporating any variation of Complainant’s UNITED STATES POST OFFICE mark. The Panel agrees that Respondent is not commonly known by the disputed domain name, and the Panel concludes that Respondent does not have rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Complainant also argues that
Respondent has used the disputed domain names to operate a generic search
engine displaying links to advertisements and various third-party
websites. Complainant asserts that such
use provides evidence that Respondent is diverting Internet users seeking
Complainant’s goods and services to other websites for commercial gain. The Panel may conclude that Respondent’s use
of the disputed domain names to divert Internet users to other websites 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). See Disney Enters., Inc. v. Dot Stop,
FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s
diversionary use of the complainant’s mark to attract Internet users to its own
website, which contained a series of hyperlinks to unrelated websites, was
neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the disputed domain names); see also
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).
Because a federal statute governs Complainant’s rights in the UNITED STATES POST OFFICE mark, The Panel finds that Respondent’s registration of the disputed domain names alone provides evidence of bad faith registration and use. See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (holding that when both parties to a proceeding are residents of the United States and a federal statute protects the mark, the Panel concludes that the domain name was registered and used in bad faith); see also Int'l Olympic Comm. v. Ritchey, FA 128817 (Nat. Arb. Forum Jan. 20, 2003) (finding that the respondent's registration was done in violation of a federal statute, and as such was held to be ipso facto bad faith); see also Am. Nat’l Red Cross v. Universal Translator, Inc., FA 237440 (Nat. Arb. Forum Mar. 31, 2004) (“18 U.S.C. §§ 706 and 917 alone permit the inference that the domain names were registered and used in bad faith, and Respondent has not come forward with any evidence rebutting this presumption.”).
Complainant claims
that Respondent has used the disputed domain names, which it alleges are
confusingly similar to its UNITED STATES POST OFFICE mark, to operate a generic
search engine containing links to websites unrelated to Complainant. Complainant alleges that Respondent likely
receives click-through fees for diverting Internet users to third-party
websites for its own commercial gain, and is, therefore, taking advantage of
the confusing similarity between Complainant’s UNITED STATES POST OFFICE mark
and the domain name in order to profit from the goodwill associated with the
mark. The Panel may find that
Respondent’s use of the disputed domain names for this purpose constitutes bad
faith registration and use under Policy ¶ 4(b)(iv). See 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); see also 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.”).
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 <azpostoffice.com>, <
delawarepostoffice.com>, <floridapostoffice.com>, <ncpostoffice.com>, <
newjerseypostoffice.com>, <newyorkpostoffice.com>, <
njpostoffice.com>, < nypostoffice.com>, <ohiopostoffice.com>, <sandiegopostoffice.com> and <vipostoffice.com> domain names be TRANSFERRED from
Respondent to Complainant.
___________________________________________________
Richard B. Wickersham, Judge (Ret.), Panelist
Dated: May 22, 2006
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