United States Postal Service v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1708001746735
Complainant is United States Postal Service (“Complainant”), represented by Nathaniel Edwards of Lewis Roca Rothgerber LLP, Arizona, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Commonwealth of the Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <changeusapostaladdress.com>, <changeusa-postaladdress.com>, <change-usapostaladdress.com>, <changeusapostaladdress.net>, <changeusa-postaladdress.net>, <change-usapostaladdress.net>, <changeusapostaladdress.online>, <changeusa-postaladdress.online>, <change-usapostaladdress.online>, <changeusapostaladdress.org>, <changeusa-postaladdress.org>, <change-usapostaladdress.org>, <change-uspostaladdress.biz>, <change-uspostaladdress.org>, <change-uspostaladdress.com>, <change-uspostaladdress.net>, <changeuspostaladdress.biz>, <changeuspostaladdress.org>, <changeuspostaladdress.com>, and <changeuspostaladdress.net>, registered with Internet Domain Service BS Corp.; and
<change-uspostaladdress.online>, <changeuspostaladdress.online>, <changeuspostaladdress.site>, <changeuspostaladdress.website>, <change-usapostaladdress.site>, <change-usapostaladdress.website>, <changeusa-postaladdress.site>, <changeusa-postaladdress.website>, <changeusapostaladdress.site>, <changeusapostaladdress.website>, registered with TLD Registrar Solutions 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.
Debrett G Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 29, 2017; the Forum received payment on August 29, 2017.
On August 31, 2017, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <changeusapostaladdress.com>, <changeusa-postaladdress.com>, <change-usapostaladdress.com>, <changeusapostaladdress.net>, <changeusa-postaladdress.net>, <change-usapostaladdress.net>, <changeusapostaladdress.online>, <changeusa-postaladdress.online>, <change-usapostaladdress.online>, <changeusapostaladdress.org>, <changeusa-postaladdress.org>, <change-usapostaladdress.org>, <change-uspostaladdress.biz>, <change-uspostaladdress.org>, <change-uspostaladdress.com>, <change-uspostaladdress.net>, <changeuspostaladdress.biz>, <changeuspostaladdress.org>, <changeuspostaladdress.com>, and <changeuspostaladdress.net> domain names are registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the names. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 August 31, 2017, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <change-uspostaladdress.online>, <changeuspostaladdress.online>, <changeuspostaladdress.site>, <changeuspostaladdress.website>, <change-usapostaladdress.site>, <change-usapostaladdress.website>, <changeusa-postaladdress.site>, <changeusa-postaladdress.website>, <changeusapostaladdress.site>, and <changeusapostaladdress.website> domain names are registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the names. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On September 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 25, 2017 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@change-uspostaladdress.online, postmaster@change-uspostaladdress.biz, postmaster@change-uspostaladdress.org, postmaster@change-uspostaladdress.com, postmaster@change-uspostaladdress.net, postmaster@changeuspostaladdress.online, postmaster@changeuspostaladdress.biz, postmaster@changeuspostaladdress.org, postmaster@changeuspostaladdress.com, postmaster@changeuspostaladdress.net, postmaster@changeuspostaladdress.site, postmaster@changeuspostaladdress.website, postmaster@change-usapostaladdress.online, postmaster@change-usapostaladdress.org, postmaster@change-usapostaladdress.com, postmaster@change-usapostaladdress.net, postmaster@change-usapostaladdress.site, postmaster@change-usapostaladdress.website, postmaster@changeusa-postaladdress.online, postmaster@changeusa-postaladdress.org, postmaster@changeusa-postaladdress.com, postmaster@changeusa-postaladdress.net, postmaster@changeusa-postaladdress.site, postmaster@changeusa-postaladdress.website, postmaster@changeusapostaladdress.online, postmaster@changeusapostaladdress.org, postmaster@changeusapostaladdress.com, postmaster@changeusapostaladdress.net, postmaster@changeusapostaladdress.site, and postmaster@changeusapostaladdress.website. Also on September 5, 2017, 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 September 26, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in U.S. POSTAL and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademark U.S. POSTAL in connection with the provision of mail and shipping services, including change of mailing address services;
2. the trademark U.S. POSTAL is the subject, inter alia, of United States Trademark Reg. No. 5,182,009, filed September 29, 2014 and registered April 11, 2017;
3. the disputed domain names were registered during April and May, 2017;
4. the disputed domain names resolve to the same website which purports to offer change of mailing address services; and
5. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of a United States Patent and Trademark Office trademark registration for U.S. POSTAL, the Panel is satisfied that it has trademark rights in that expression (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
Panels agree that the gTLD can be ignored for the purposes of comparing the disputed domain names with the trademark (see PepsiCo, Inc. v. Shah, FA 103934 (Forum Mar. 4, 2002); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)). Otherwise, the domain names combine the trademark U.S. POSTAL (or a confusingly similar term, “usa postal”), sometimes by hyphenation, with the words “change” and “address”.
Had these administrative proceedings benefited from a Response, argument might have evolved as to whether the trademark should be taken to be confusingly similar to an expression such “change US postal address” (and certainly, that might have constituted a respectable enquiry under paragraphs 4(a)(ii) and (iii) of the Policy). However, in this undefended case the Panel is satisfied that none of the additions made to the trademark by the disputed domain names significantly alters the identity of the trademark which remains the distinctive element of the domain names (see Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) finding the <amextravel.com> domain name confusingly similar to the AMEX mark because the mere addition of a generic or descriptive word to a registered mark does not negate a finding of confusing similarity under Policy ¶ 4(a)(i); see YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) finding that the words “powder coating” in <yetipowdercoating.com> were “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark; see also OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015 (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”).
Panel is satisfied that the disputed domain names are confusingly similar to Complainant’s trademark and so Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information does not provide any prima facie evidence that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any trademark rights. Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark. Further, it is Complainant’s contention that the disputed domain names are used to facilitate a fraudulent scheme by which Respondent allegedly offers the same change of address services for 4980% more than that charged by Complainant. Complainant asserts that this activity is illegal and has caused Complainant to circulate a warning to consumers.
The Panel finds that whether or not the described activity is illegal – an issue not made entirely clear by the Complaint – it remains that the activity is offered in direct competition with the services provided by Complainant under the trademark. Viewed one way or the other, the use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names (see Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”; see Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The Panel finds that Complainant has established a prima facie case. Accordingly, the onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, the prima facie case against Respondent is not met and so the Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and are being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. The Panel has already found the disputed domain names to be confusingly similar to Complainant’s trademark. Complainant submits evidence of the resolving webpage corresponding with the disputed domain names. The object of the website is monetary gain. In terms of paragraph 4(b)(iv) of the Policy, the Panel finds that Respondent is using the domain names to attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark (see Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site; see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).
The Panel finds registration and use in bad faith and the third limb of the Policy established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <change-uspostaladdress.online>, <change-uspostaladdress.biz>, <change-uspostaladdress.org>, <change-uspostaladdress.com>, <change-uspostaladdress.net>, <changeuspostaladdress.online>, <changeuspostaladdress.biz>, <changeuspostaladdress.org>, <changeuspostaladdress.com>, <changeuspostaladdress.net>, <changeuspostaladdress.site>, <changeuspostaladdress.website>, <change-usapostaladdress.online>, <change-usapostaladdress.org>, <change-usapostaladdress.com>, <change-usapostaladdress.net>, <change-usapostaladdress.site>, <change-usapostaladdress.website>, <changeusa-postaladdress.online>, <changeusa-postaladdress.org>, <changeusa-postaladdress.com>, <changeusa-postaladdress.net>, <changeusa-postaladdress.site>, <changeusa-postaladdress.website>, <changeusapostaladdress.online>, <changeusapostaladdress.org>, <changeusapostaladdress.com>, <changeusapostaladdress.net>, <changeusapostaladdress.site>, and <changeusapostaladdress.website> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: September 28, 2017
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