United States Postal Service v. Zhang Xiao
Claim Number: FA1805001788157
Complainant is United States Postal Service (“Complainant”), represented by Jennifer A. Van Kirk of Lewis Roca Rothgerber Christie LLP, Arizona, USA. Respondent is Zhang Xiao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usps.sale>, registered with Chengdu West Dimension Digital 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 23, 2018; the Forum received payment on May 23, 2018. The Complaint was received in both Chinese and English.
On May 24, 2018, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <usps.sale> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital 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 6, 2018, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 26, 2018 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@usps.sale. Also on June 6, 2018, the Chinese language 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 June 28, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, the second oldest department or agency of the United States of America, was founded on July 26, 1775. Complainant serves millions of customers daily and sets the global industry standard for mailing and shipping related goods and services. Complainant claims rights in the USPS mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,423,574, registered on Jan. 23, 2001). Respondent’s <usps.sale> domain name is confusingly similar to Complainant’s USPS mark as Respondent incorporates the mark in its entirety and adds the “.sale” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <usps.sale> domain name Respondent is not permitted or licensed to use Complainant’s USPS mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or a legitimate non-commercial or fair use. Rather, Respondent is using the disputed domain name to redirect users to a rotating series of third-party websites, none of which are related to Complainant. In addition, Respondent’s uses the domain name to infect users with malware in order to phish for users’ personal information.
Respondent has registered and is using the <usps.sale> domain name in bad faith. Respondent has been involved in prior UDRP disputes, and has thus demonstrated a pattern of bad faith registration and use. Further, Respondent uses of the disputed domain name to redirect Internet traffic to a rotation of third-party websites, presumably for Respondent’s commercial gain, which disrupts Complainant’s business. Moreover, Respondent attempts to fraudulently phish for personal information or download malware on users’ computers. Finally, Respondent registered the <usps.sale> domain name with actual knowledge of Complainant’s rights in the USPS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the <usps.sale> domain name was created on May 13, 2017.
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.”).
Complainant claims rights in the USPS mark based upon its registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides a copy of its USPTO registration for the USPS mark (e.g., Reg. No. 2,423,574, registered on Jan. 23, 2001). Therefore, the Panel finds that Complainant has rights in the USPS mark per Policy ¶ 4(a)(i).
Next, Complainant asserts that the <usps.sale> domain name is identical to the USPS mark as Respondent merely adds a gTLD to the mark. Adding a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant argues Respondent simply adds the “.sale” gTLD to Complainant’s USPS mark, making the domain name identical to Complainant’s mark. The Panel agrees with Complainant and finds that the disputed domain name does not contain changes that would sufficiently distinguish it from the USPS mark per Policy ¶ 4(a)(i).
Complainant asserts Respondent has no rights or legitimate interests in the <usps.sale> domain name. Complainant argues Respondent is not authorized or licensed to use Complainant’s USPS mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1574905 (Forum Sep. 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 AIRLINES mark). Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The relevant WHOIS information identifies Respondent as “Zhang Xiao.” Therefore, the Panel finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name.
Additionally, Complainant claims that Respondent uses a fast flux DNS (“FFDNS”) technique to automatically redirect Internet users attempting to access the domain names to a series of rotating third party websites. Use of FFDNS with a domain name to redirect Internet users is not a use indicative of rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See MoneyGram International, Inc. v. Domain Admin / Whois Privacy Corp., FA1698585 (Forum Nov. 28, 2016) (“Where a domain name redirects Internet users to a rotating series of webpages, such use does not demonstrate rights or legitimate interests within the meaning of the Policy.”); see also Harry Winston, Inc. v. Domain Admin / Whois Privacy Corp., FA 1749276 (Forum Oct, 18, 2017) (holding that use of a domain name to redirect Internet users to a rotating series of third-party websites, some of which attempt to install malware on users’ computers, does not show the respondent has rights or legitimate interests in the domain name). Complainant includes screenshots of the resolving webpages from the domain names, which appear to resolve to various, ever-changing webpages, some of which seek to defraud consumers, support phishing schemes, and/or produce affiliate revenue for Respondent by forwarding users to third-party websites. The Panel determines that Respondent’s lacks of rights and legitimate interests in the domain names is indicated by its use of the names as part of an FFDNS redirection scheme.
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent uses the disputed domain name to redirect Internet traffic to a rotation of third-party websites, presumably for Respondent’s commercial gain, which disrupts Complainant’s business. Use of the FFDNS technique to commercially gain and disrupt a complainant’s business, especially when some of the resolving webpages contain malware, can support a finding of bad faith. See Natural Supplement Association, Incorporated d/b/a Experimental and Applied Sciences, Inc. v. Private Registration- Rnew, FA 1365571 (Forum Feb. 9, 2011) (“[R]egistration and use of the disputed domain name to redirect Internet users to a series of websites offering products in competition with [c]omplainant constitutes a disruption of [c]omplainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Harry Winston, Inc. v. Domain Admin / Whois Privacy Corp., FA 1749276 (Forum Oct, 18, 2017) (finding the respondent acted in bad faith by using “a technique known as FFDNS to divert internet users to a rotating series of webpages unrelated to or in competition with Complainant’s business, some of which attempt to install malware onto users’ computers.”). As noted above, Complainant provides screenshots of the series of webpages, none of which are related to Complainant, and some of which appear to contain malware. Accordingly, the Panel agrees that Respondent’s employment of the FFDNS technique to disrupt Complainant’s business for commercial gain supports a finding of bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Further, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. Actual knowledge may be proven through a totality of circumstances surrounding the registration of the disputed domain name. See, e.g, Google Inc. v. Ahmed Humood, FA1591796 (Forum Jan. 7, 2015) Complainant asserts that given the widespread use of Complainant’s mark and the fact that Respondent registered the disputed domain name incorporating Complainant’s USPS mark in its entirety indicates that Respondent had actual knowledge of Complainant’s mark. The Panel infers that Respondent had actual knowledge of Complainant’s rights in the USPS mark when it registered and subsequently used the <usps.sale> domain name.
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <usps.sale> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: July 6, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page