United Parcel Service of America, Inc. v. weiwei
Claim Number: FA1606001679868
Complainant is United Parcel Service of America, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is weiwei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ltlupsfreight.com>, registered with eName Technology Co., Ltd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 16, 2016; the Forum received payment on June 16, 2016.
On June 19, 2016, eName Technology Co., Ltd. confirmed by e-mail to the Forum that the <ltlupsfreight.com> domain name is registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the name. eName Technology Co., Ltd. has verified that Respondent is bound by the eName Technology Co., Ltd. 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 June 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 2016 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@ltlupsfreight.com. Also on June 20, 2016, 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 July 20, 2016 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
1. Founded in 1907, Complainant is one of the world’s largest package delivery companies and the leading global provider of specialized transportation and logistics services.
2.Complainant has extensively promoted and advertised its goods and services offered under the UPS mark in international publications, on television, on the Internet, in email communications, on social media, in direct marketing materials, and among other media outlets.
3. Complainant is the holder of a substantial number of trademark and service mark registrations in the United States for the UPS mark, the UPS Brandmark, and other UPS-formative marks including UPSFREIGHT, details of which are provided in Complainant’s Annex M and numerous international registrations for the UPS Marks details off which are provided in Complainant’s Annex N.
4. Complainant owns and uses in connection with its delivery services a multitude of domain names that incorporate the UPS Marks, including <ltl.upsfreight.com> through which Complainant provided its UPS Freight services.
5.The disputed domain name is Identical or confusingly similar to Complainant’s Marks as:
(a) It Includes the entirety of Complainant’s UPS mark;
(b) It simply deletes the period in Complainant’s <ltl.upsfreight.com> domain name;
(c) It merely adds to the trademark the generic or descriptive term “LTL”,which means “less-than-truckload”, to Complainant’s Internationally famous trademark;
(d) Complainant’s marks are arbitrary, distinctive, strong and/or famous trademarks;
(e) the addition of a gTLD is irrelevant to the confusingly similar analysis; and
Policy ¶ 4(a)(i) does not require that the mark be registered in the country in which Respondent operates.
6. Respondent has no right or legitimate interest in the disputed domain name as:
(a) The disputed domain name previously redirected users to a malware website;
(b) As of the date of this Complaint, the disputed domain name resolves to a parked webpage which include links to third-party websites;
(c) Respondent is not commonly known by the domain name; and
(d) Respondent is not making a legitimate noncommercial or fair use of the domain name;
7. Respondent registered and is using the disputed domain name in bad faith as:
(a) Typosquatting alone is sufficient to prove bad faith;
(b) Respondent registered the domain name with the UPS Mark in mind and with the intent to cause confusion. Respondent undoubtedly registered the Infringing domain name in bad faith with actual knowledge of UPS’ rights in its UPS marks;
(c) Respondent is using the domain name to divert internet traffic for Respondent’s financial gain. Respondent’s bad faith use of the domain name is further evidenced by the fact that Respondent is using the domain to capture click-through revenue;
(d) Respondent has a long history and demonstrated pattern of bad faith domain registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
LANGUAGE OF THE PROCEEDING
The Panel notes that the Registration Agreement is written in Chinese, thereby giving rise to the presumption that the language of the proceedings is to be Chinese.
However, Rule 11(a) provides that:
“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Panel determines that the language of the administrative proceeding shall be English and does so for the following reasons.
It is clear that the Panel has a discretionary power to determine that the language of the proceeding shall be a language other than Chinese, that being the language of the Registration Agreement and Complainant has submitted that the Panel should do so. The Panel should do so only on valid grounds and having regard to all relevant considerations. Complainant has submitted that the Panel should exercise its discretion in favour of a finding that the language of the proceeding should be English and has advanced the following case.
“The Panel has stated that the “spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration, inter alia, to the parties’ level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors.” Adidas AG v. Daehyeon Kim, D2013-1904 (WIPO January 19, 2014) (finding that although the registration agreement was in Korean, the administrative proceeding would be conducted in English because, inter alia, (1) the disputed domain name contained an English word; (2) the respondent registered the disputed domain name in connection with the “.com” generic Top-Level Domain, which primarily targets English-speaking Internet users; and (3) the complainant was unable to communicate efficiently in Korean). In the present case, Complainant is a US-based company that conducts its daily operations in English. Thus, it would be “cumbersome and to the Complainant’s disadvantage to be forced to” conduct this proceeding in Chinese. Wordpress Foundation v. duanxiangwang, D2011-0836 (WIPO July 6, 2011) (“The Complainant is a United States headquartered company. It would therefore be cumbersome and to the Complainant’s disadvantage to be forced to translate the entire Complaint in Chinese”). Moreover, the LTLUPSFREIGHT domain name incorporates Complainant’s entire English word marks UPS and UPS FREIGHT. LTL is a common industry abbreviation in English for “Less-than-truckload.” “Less-than-truckload” means that a shipment does not fill up an entire truck. See Tumblr, Inc. v. Kenny Kim, D2013-0440 (WIPO April 28, 2013) (citing authority acknowledging the persuasive significance of the language of the words contained in the domain name). It is also significant that all the content displayed by Respondent on the resolving webpage for the Infringing Domain Name is in English. See Swarovski Aktiengesellschaft v. wutianhao, D2010-0503 (WIPO May 24, 2010) (conducting proceeding in English in part because the website displayed at the infringing domain name “displays the contents in English.”).
Furthermore, as shown from a previous UDRP action brought against the same Respondent, the Respondent is capable of understanding English. See Facebook, Inc. and Instagram, LLC v. Xiamen eName Network Co., Ltd /weiwei, D2016-0409 (WIPO May 10, 2016) (The Complaint was filed in English and the Panel noted that “[f]rom the Response, it is clear that [weiwei] has understood the claim made against it and has been able to defend itself. Many of the webpages under the disputed domain names are all in English indicating that [weiwei] does business in English.”). Complainant contends that since the Respondent is capable of corresponding in English, and because the Complainant’s counsel cannot correspond in Chinese without enduring cumbersome and costly efforts, in the spirit of fairness under paragraph 11, the language of proceedings should be English.”
The Panel has given careful consideration to the propositions put forward by Complainant and the UDRP decisions advanced in their support. The Panel finds that it is a strong case.
Accordingly, having regard to all the circumstances the Panel finds that it should exercise its discretion in favor of the case put forward by Complainant. The Panel therefore determines pursuant to Rule 11 (a) that the language of the administrative proceeding shall be English.
1. Complainant is one of the world’s largest package delivery companies and the leading global provider of specialized transportation and logistics services.
2. Complainant is the holder of a substantial number of trademark and service mark registrations in the United States and internationally for the UPS mark and other trademarks and service marks incorporating UPS, which it uses in its business.
3. Respondent registered the disputed domain name on May 16, 2006.
4. The disputed domain name originally resolved to a malware website and as of the date of the filing of the Complaint, it resolves to a parked webpage which includes links to third-party websites that offer goods and services that compete with those of Complainant.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the UPS mark and many other marks incorporating UPS and related expressions in connection with its business of package delivery and providing specialized transportation and logistics services. Complainant submits that it has registered the UPS mark with USPTO, (e.g., Reg. No. 1,752,464 registered Feb. 16, 1993) together with many other marks incorporating the term UPS (collectively “the UPS marks”) and has adduced evidence to this effect that the Panel accepts. See Compl., at Attached Exs. M and N. Complainant also submits that this evidence of its trademark registrations is sufficient to establish Policy ¶ 4(a)(i) rights in the UPS marks, irrespective of Respondent’s country of origin and the Panel agrees. See Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015) (finding Policy ¶ 4(a)(i) rights “without regard to whether Complainants rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here Russia).”). The Panel agrees with that submission. Therefore, the Panel finds that Complainant has established Policy ¶ 4(a)(i) rights in the UPS marks, notwithstanding Respondent’s reported residence in China.
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s UPS marks. Complainant argues that Respondent’s <ltlupsfreight.com> domain name is confusingly similar to the UPS marks as it incorporates the mark entirely and has had added to it the generic expressions “ltl” , standing for “less-than-truckload” which is recognised in the transport industry as such, the generic word “freight” which is recognised universally as the industry of Complainant, and the gTLD “.com.” Panels have found such alterations to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). That is particularly so in the present case, where all that Respondent has done is to copy Complainant’s own domain name that it uses in its business, namely <ltl.upsfreight.com> and omitted the period. See, e.g., Yahoo! Inc. v. wangwei, gaohaolvshishiwusuo/shaoxiaogen, wang tian, ni maiwo, fangjincheng, D2014-0714 (WIPO Aug. 12, 2014) (where the panel found the domain names <yahooclassicgames.com>, <yahoocommercecentral.com>, <yahoogamesnetwork.com>, <yahoogemini.com>, <yahoonewsdigest.com> and <yahoovip.com> confusingly similar to the YAHOO! mark since “[i]t is a consensus view of previous UDRP panels that the addition of descriptive terms to a domain name incorporating a trademark is generally insufficient to prevent confusion between the domain name and the trademark.”) An objective bystander would undoubtedly think that the disputed domain name was related to the famous UPS marks and the transport services marketed under that mark and as relating to the provision of less than truckload freight transport by Complainant.
Accordingly, the Panel finds that Respondent’s <ltlupsfreight.com> domain name is confusingly similar to the UPS marks under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s UPS marks and to
use them in its <ltlupsfreight.com> domain name, adding only the generic expressions “ltl” and “ freight”;
(b) Respondent registered the domain name on May 16, 2006;
(c) The domain name previously redirected users to a malware website and as of the date of the Complaint, it resolves to a parked webpage which includes links to third-party websites that offer goods and services that compete with those of Complainant;
(d) Complainant argues that Respondent has no rights or legitimate interests in the <ltlupsfreight.com> domain name. Complainant submits that Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the UPS marks. As Complainant points out, Respondent’s name is “weiwei”, which does not even remotely correspond to the UPS word mark or to the disputed domain name. The Panel notes Complainant’s Appendix A, the WHOIS information regarding the disputed domain name, listing “weiwei” as registrant of record. The Panel also notes that Respondent has failed to submit a Response in this proceeding. Therefore, in light of the available evidence, the Panel agrees that there is no basis to find that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINE mark);
(e) Complainant also submits that Respondent is not making a bona fide offering of goods or services, nor a legitimate non-commercial or fair use through the <ltlupsfreight.com> domain name. Complainant submits that Respondent’s use of the domain name to direct traffic to a parked webpage containing sponsored links for products and/or services does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. The Panel notes that as of the date of the Complaint, the domain name resolved to a parked webpage which includes links to third-party websites. See Compl., at Annex AA. By doing so, Respondent is misleadingly diverting consumers in order to monetize the domain name by directing Internet traffic to a parked pay-per-click (or sponsored listings) website. See Compl., at Annex AA. The Panel notes that UDRP decisions have consistently held that registrants using disputed domain names to redirect traffic to parked webpages with click-through links, where the respondent presumably generates click-through fees, have not been accepted as a bona fide offering of goods or services giving rise to rights or legitimate interests in a disputed domain name. See, e.g., American Century Proprietary Holdings, Inc. v. Travis Martin, FA0905001262486 (Forum June 23, 2009) (holding no rights or legitimate interests where domain name resolves to a parked website and Respondent presumably generates click-through fees from such use); Genzyme Corp. v. Keyword Marketing, Inc., FA0706001007979 (Forum July 17, 2007) (holding no rights or legitimate interests where the domain name resolves to a pay-per-click website featuring sponsored links to various commercial websites); WeddingChannel.com Inc. v. Vasiliev, FA156716 (Forum June 12, 2003) (finding there was no bona fide offering of goods or services under the Policy where the respondent presumably received a referral fee for redirecting Internet users to websites unrelated to the complainant’s mark). Accordingly and as Complainant submits, pursuant to paragraph 4(c) of the Policy, all of these facts and circumstances support the finding that the Respondent has no rights or legitimate interests in the disputed domain name;
(f) Complainant also submits that as part of a phishing scheme, Respondent previously used the Domain Name to redirect unsuspecting users to a malware website in an attempt to obtain information from users of the disputed domain name fraudulently, offering users exclusive rewards if they participate in short surveys. See Compl., Annex AA. The Panel agrees with that submission and finds that the conduct of Respondent so demonstrated does not amount to a bona fide use or legitimate interest under Policy ¶¶ 4(c)(i) or (iii)). See, e.g., Yahoo! Inc. v. Domain Admin / PrivacyProtect.org / Whois Agent / Whois Privacy Protection Service, Inc., FA1312001532946 (Forum January 15, 2014) (finding that“[u]sing a domain name to resolve to a website attempting to solicit personal information indicates a phishing scheme” which is not bona fide use or legitimate interest under Policy ¶¶ 4(c)(i) or (iii));
(g)Finally, Respondent’s typosquatting of the domain name shows an intent to divert consumers and such use is neither legitimate nor fair. See the cases cited by Complainant: Edmunds.com, Inc. v. Yingkun Guo, dba This domain name is 4 sale, D2006-0694 (WIPO July 24, 2006) (noting that typosquatting “does not constitute fair use and is the obverse of a legitimate noncommercial or fair use of a domain name”); Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, D200-0517 (WIPO June 28, 2006) (finding that where disputed domain names constituted intentional mistypings of complainant’s mark, use of such domain names to divert Internet traffic from complainant’s website cannot be relied on to establish rights or legitimate interests); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent’s bad faith is shown by Respondent’s typosquatting of the domain name. The Panel agrees. Respondent has simply removed the period from Complainant’s own official domain name <ltl.upsfreight.com> to create the disputed domain name, which is deceptive in itself and has then used the typosquatted domain name to redirect unsuspecting Internet users to parked websites with sponsored links to third-party commercial websites for commercial gain, which is a classic example of typosquatting. The Panel has examined the website to which the domain name resolves and finds that it solicits business from obvious rivals to Complainant in the same field as well as other fields. As Respondent submits, it is well established that typosquatting is tantamount to evidence of bad faith. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Forum Oct. 15, 2003) (“Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Secondly, Complainant submits that Respondent registered the domain name in bad faith with actual knowledge of Complainant’s rights in its UPS marks because the UPS marks are internationally recognized and registered which is sufficient to satisfy the bad faith requirement. The Panel agrees that that is the only conclusion that can be reached in view of the international fame of the UPS marks and Respondent’s use of the UPS marks in its domain name without permission and so contrary to Complainant’s interests must therefore be bad faith. See Tumblr, Inc. v. Privacy Protect.org/Jiangchunyuan, D2013-0243 (WIPO Mar. 15, 2013) (bad faith where panel “finds it difficult to believe that Respondent was unaware of the TUMBLR mark and of the Complainant prior to registering the disputed domain name” and “draws the inference that the disputed domain name must have had its value to the Respondent because of the confusing similarity to the Complainant’s TUMBLR mark and <tumblr.com> domain name.”).
Thirdly, Complainant submits that Respondent’s bad faith use of the disputed domain name is further evidenced by the fact that Respondent is using the domain name to capture click-through revenue. The evidence of the resolving website and the competing businesses advertised on it supports that contention and having regard to that evidence which clearly has a commercial purpose, there can be no doubt that Respondent is acting in bad faith. See, e.g., Kmart v. Khan, FA 127708 (Forum Nov. 22, 2002) (finding that if a respondent profits from its diversionary use of a complainant's mark when the domain name resolves to commercial websites that respondent was using the domain name in bad faith); Hilton Group plc v. Forum LLC, WIPO Case No. D2005-0244 (use of domain name to attract users for commercial gain is evidence of bad faith); Kmart v. Khan, FA 127708 (Forum Nov. 22, 2002) (finding that if a 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)).
Fourthly, Complainant also submits that Respondent is a serial offender in registering and using domain names in bad faith. The Complainant further submits that Respondent’s portfolio of domain names is replete with other infringing domain names and the Panel agrees. See Compl., Annex CC. This conduct itself amounts to bad faith; see Facebook, Inc. and Instagram, LLC v. Xiamen eName Network Co. Ltd/weiwei, D2016-0409 (WIPO May 10, 2016).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <ltlupsfreight.com> domain name using the UPS marks and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ltlupsfreight.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: July 26, 2016
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