United States Postal Service v. Falcon Supply
Co. Inc
Claim Number: FA0608000780227
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 Falcon Supply Co. Inc (“Respondent”), 55 Randolph Ave, Avenel, NJ 07001.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <uspsupplies.com>
(the “Domain Name”), registered with Wild
West Domains, Inc..
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.
Michael Albert as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 17, 2006; the National Arbitration Forum received a
hard copy of the Complaint on August 21, 2006.
On August 17, 2006, Wild West Domains, Inc. confirmed by e-mail to the
National Arbitration Forum that the <uspsupplies.com>
domain name is registered with Wild West Domains, Inc. and that the Respondent
is the current registrant of the name. Wild
West Domains, Inc. has verified that Respondent is bound by the Wild West Domains,
Inc. 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 August 21, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 11, 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@uspsupplies.com by
e-mail.
A Response was received on September 11, 2006; however, the Response
was deficient pursuant to ICANN Rule #5 (a), as the Response was not received
in electronic format by the Response deadline.
Notwithstanding this deficiency, the Panel has decided to accept this
Response and to take it into consideration.
On September 13, 2006, Complainant submitted a timely Additional
Submission in compliance with Rule #7.
On September 20, 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, the United States Postal Service, is an Independent
Establishment of the Executive Branch of the Government of the United States,
dating back in one form or another to the creation of the Post Office
Department of the U.S. Government in 1775.
Complainant owns federally-registered rights to the marks USPS and
USPS.com in connection with the delivery of mail and related services. It has used the USPS mark continuously in
commerce since 1976 and the USPS.com mark since 1999.
Complainant 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 locations
throughout the U.S.
Complainant operates a website at <usps.com> (registered
on July 10, 1997), from which it offers a variety of goods and services, including
mailing services, postage and shipping supplies, address information, business
services, and other goods. Complainant
also owns and uses the domain name <uspssupplies.com>
which forwards customers to <usps.com>.
Respondent has, without authorization, registered the domain name <uspsupplies.com>,
which incorporates Complainant’s USPS mark in its entirety and which differs
from Complainant’s <uspssupplies.com> domain name only by changing the
double-s to a single s. Registrant is
not commonly known by this mark or domain name and has registered and used it
in bad faith.
B. Respondent
Respondent
alleges that it was established in 1975 to sell packaging materials; that in
2005 it created a new branch under the name Pack and Seal, for which it
purchased various domain names including the one in dispute; and that the
disputed domain name is protected under the doctrine of “fair use” because the
challenged term is used fairly and in good faith to describe its goods or
services.
Respondent alleges that “Pack and Seal” is merely descriptive of the
“pack and seal” services that it provides.
Respondent alleges that the web site to which the disputed domain name
resolves would not be likely to be confused with Complainant. Respondent further argues that it is not,
and never has been, a competitor of the Complainant because Respondent offers
numerous items for sale that Complainant does not, and Complainant offers
certain services and products that Respondent does not.
C. Additional Submissions
Complainant’s Additional Submission argues that the “fair use” defense
does not apply because the arguments supporting it address only the
<packandseal.com> domain name, which is not the subject matter of this
dispute. Rather, the dispute relates to
the <uspsupplies.com> domain name.
Complainant further argues that classic “fair use” does not apply
because Complainant’s marks have not been shown to be descriptive, and that
“nominative fair use” does not apply because Respondent is not using the mark
to sell Complainant’s goods or services, but rather its own.
FINDINGS
The panel finds that Complainant has met its
burden to establish that the Domain Name is confusingly similar to marks in
which Complainant owns rights; that Respondent has no legitimate rights or
interests in the mark; that Respondent registered and used the Domain Name in
bad faith; and that the “fair use” defense does not apply in any form.
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.
Complainant owns rights to the USPS mark. Its rights in the mark predate, by
almost three decades, Respondent’s registration of the <uspsupplies.com> domain name on January 3, 2005. See Intel Corp. v. Macare, FA 660685
(Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established
rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks
with the USPTO).
Complainant’s federally-registered mark USPS
is incorporated in its entirety into the Domain Name. See AT&T Corp.
v. Gormally, D2005-0758 (WIPO
Aug. 31, 2005) (finding the <attelephone.com domain name to be confusingly
similar to complainant’s AT&T mark because it contained the mark in its
entirety).
Neither the addition of the generic term
“supplies” nor the deletion of one of the two adjacent letters “s” decreases
the likelihood of confusion.
Accordingly, the two are confusingly similar. See Universal City Studios, Inc. v. HarperStephens,
D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the
complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall
impression of the mark and rendered the <universalstudiostore.com> domain
name confusingly similar); see also Hewlett-Packard Co. v. HP Supplies,
FA 282387 (Nat. Arb. Forum July 22, 2004) (finding the <hpsupplies.com>
domain name confusingly similar to the complainant’s HP mark because it merely
added the generic word “supplies”).
Moreover, Complainant has developed trademark
rights in its domain name <uspssupplies.com>, registered since 1999 and
used to redirect customers to Complainant’s <usps.com> web site. The Domain Name differs from Complainant’s
<uspssupplies.com> domain name solely by the typographical alteration of
the double-s to a single s. It is well
established that adding a typographical error or creating a typographical
variant of a mark is generally not sufficient to eliminate the likelihood of
confusion. E.g., Victoria’s Secret v. Zuccarini, FA 95762
(Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding
letters to words, a Respondent does not create a distinct mark but rather one
that is confusingly similar to complainant’s marks).
Respondent is not known by the Domain Name, nor does it claim to be. Instead, its Response is focused on the “Pack and Seal” mark which is not at issue in this proceeding.
Accordingly, there is no basis upon which the Panel could find that Respondent has any rights or legitimate interests in the Domain Name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); 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”).
Respondent’s allegation that its use of the mark constitutes “fair use” is in error. First of all, as Complainant correctly notes in its Additional Submission, even if the argument had merit with regard to the “pack and seal” mark or domain name (an issue not addressed or resolved here), it has no bearing on the Domain Name in dispute, which is <uspsupplies.com>. That Domain Name is not descriptive of any particular goods or services. Rather, it is a confusingly similar typographical variant of Complainant’s own domain name, and incorporates in its entirety one of Complainant’s federally-registered trademarks.
Respondent’s usage also does not constitute “nominative fair use.” The doctrine of nominative fair use applies when a term that in some contexts may serve as a trademark is being used by a non-owner of the mark to truthfully designate, comment upon, or discuss the goods or services of the mark’s owner. See, e.g., The New Kids On The Block v. News America Publishing Inc., 971 F.2d 302 (9th Cir. 1991). It may also apply in situations in which the term is used in a descriptive or generic sense. Neither of those circumstances is present here, inasmuch as Respondent is selling its own goods, rather than being a reseller of Complainant’s goods, and inasmuch as the domain name is not being used in any generic or descriptive sense. The term “uspsupplies” is not a common English word, and has no descriptive meaning. The word “supplies” alone may meet these criteria, but appended to a trademark such as USPS, the term as a whole does not become descriptive.
The Panel further finds that Respondent’s use of a confusingly similar domain name to redirect Internet users to Respondent’s website, on which Respondent offers for sale goods that compete with Complainant, neither qualifies as a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor as a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant, and thus was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Accordingly, Respondent does not have any rights or legitimate interests in the Domain Name.
It is well established that registering a
confusingly-similar typographic variant of a mark in order to redirect Internet
traffic to a competing web site constitutes bad-faith registration and use of
the domain name. That is precisely what
Respondent has done here.
Respondent admittedly uses the Domain Name to
attract Internet users to its website where it commercially offers goods for
sale. Complainant offers mailing and
packaging supplies for sale on its website that resolves from the
<uspssupplies.com> domain name.
Respondent’s products, although not in all instances identical to
Complainant’s, are in many instances in competition with Complainant’s
products. The use of a confusingly
similar domain name to steer traffic to its competing web site constitutes bad
faith pursuant to Policy ¶ 4(b)(iii). See
EthnicGrocer.com, Inc. v.
Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith
where the respondent’s sites pass users through to the respondent’s competing
business).
Respondent’s use of the USPS mark also
creates a likelihood of confusion as to Complainant’s sponsorship of or
affiliation with Respondent’s website.
Accordingly, Respondent’s commercial use of the confusingly similar
domain name also evidences bad faith pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of
a confusingly similar domain name to offer goods competing with the
complainant’s evidences the respondent’s bad faith registration and use of the
domain name pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO
Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶
4(b)(iv) where the domain name resolved to a website that offered similar
products as those sold under the complainant’s famous mark).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that the requested relief shall be GRANTED.
Michael Albert, Panelist
Dated: October 5, 2006
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