United States Postal Service v. Michael Ruccolo / usps partner
Claim Number: FA1905001845150
Complainant is United States Postal Service (“Complainant”), represented by Jennifer A. Van Kirk of Lewis Roca Rothgerber Christie LLP, Arizona, USA. Respondent is Michael Ruccolo / usps partner (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <uspscod.com> and <uspspartner.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 28, 2019; the Forum received payment on May 28, 2019.
On May 29, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <uspscod.com> and <uspspartner.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 2019 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@uspscod.com, postmaster@uspspartner.com. Also on June 3, 2019, 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.
A timely Response was received and determined to be complete on June 24, 2019.
On June 28, 2019, the Forum received the Additional Submission) by Complainant in a timely manner in accordance with the Forum’s Supplemental Rule #7. These documents have been considered by the Panelist along with the other materials submitted.
On June 26, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nathalie Dreyfus 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities that control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The holders of the domain names <upscod.com> and <uspspartner.com> share the same IP address. The domain names were registered within 2 months of each other and with the same registrar. Finally, the websites at <uspspartner.com> and the website at <uspscod.com> display identical images of Complainant’s Long Life Vehicles.
Previous Panels have found that domain names were commonly owned where domain names were registered with the same registrars within six months of each other, hosted at the same IP address, were used for similar schemes and had common naming pattern incorporating complainant’s mark (Google LLC v. Thierry georges anthoine Aillaud et al., FA 1801351, Forum Dec. 3, 2018).
The Panel finds that the registrant of the domain names is the same person or entity (“Respondent”).
Therefore, the Complaint is properly filed against both of the domain names under paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy.
PARTIES' CONTENTIONS
A. Complainant
Complainant contends that the Disputed Domain Names <uspscod.com> and <uspspartner.com> are confusingly similar to its trademarks USPS® as the combination with the <.com> gTLD does not prevent any likelihood of confusion:
(i) The domain name <uspscod.com> only adds the descriptive term “COD” to the trademark USPS®. Complainant asserts that “COD” refers to Collect on Delivery, which is one of its services allowing recipients to pay for shipping costs upon receipt of a package. The term “COD” therefore refers to a term associated to Complainant’s business and thus reinforces visitor’s mistaken expectation.
(ii) The domain name <uspspartner.com> adds the term “partner” to the Mark and relates to Complainant’s business that includes relationships with other service providers.
(iii) Internet users are likely to be confused by the similarities between Complainant’s trademark USPS® and the Disputed Domain Names <uspscod.com> and <uspspartner.com>.
Complainant further claims that Respondent lacks rights or legitimate interests in the Disputed Domain Names:
(i) Respondent could not be known through the domain names as “USPS”, “USPS COD” or “USPS PARTNER” as the Complainant’s trademark was registered and was well known throughout the US prior to Respondent’s registration of the Disputed Domain Names.
(ii) Respondent had actual knowledge of Complainant’s rights in the mark prior to registration of the Disputed Domain Names.
(iii) Respondent is not affiliated with, nor has it been licensed or permitted to use the USPS® trademarks in the Disputed Domain Names.
(iv) The Disputed Domain Name <uspspartner.com> is now being passively held by Respondent.
(v) Respondent is not using the Domain Names to comment upon Complainant, Respondent has therefore no free speech rights or interests in the Domain Names.
Complainant finally argues that the Disputed Domain Names was registered and is being used in bad faith:
(i) Respondent has registered the Disputed Domain Names with the intent to capitalize on confusion with Complainant.
(ii) The USPS® trademarks are well known and there are no reasons for Respondent to have registered the Disputed Domain Names other than to trade off the reputation and goodwill of Complainant’s trademarks.
(iii) Respondent’s use of the USPS sign within the Disputed Domain Names, combined with terms that are highly descriptive of Complainant’s goods and services shows opportunistic bad faith.
B. Respondent
The Rule 5 (c) sets forth the requirements for submitting a response to a UDRP Complaint.
The Response provided by Respondent does not meet the requirements under Rule 5(c)(i)-(ix). Indeed, Respondent failed to comply with Rule 5(c)(ii) which requires specifying the postal address, telephone and telefax numbers of the Respondent. Respondent also fails to comply with Rule 5(c)(viii) which requires a certification statement.
Previous Panels have held that the correspondence submitted by Respondent should be disregarded where it did not comply with ICANN Rule 5 (Sears Brands, LLC v. Airhart, FA 1350469, Forum Dec. 2, 2010; Vanity Shop of Grand Forks, Inc. v. Adolfo Meza / Blaze’s shop, FA 1712133, Forum Feb. 14, 2017).
The Panel therefore finds that the correspondence submitted by Respondent is not accepted and does not amount to a Response.
C. Additional Submissions
In its Additional Submissions, Complainant claims that:
(i) Respondent concedes that Complainant’s USPS mark is a “world-famous name”.
(ii) Respondent appears then to concede that the domain names are identical or confusingly similar to Complainant’s mark.
(iii) Respondent concedes that the <uspspartner.com> website is being passively held, which is not a legitimate use of the subject domain name.
(iv) Respondent did not provide any evidence of demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.
(v) Respondent admits that is it not making a legitimate or fair use of the domain name <uspspartner.com>
(vi) Respondent signed as USPSPARTNER but provided no evidence that it is commonly known by the domain name, nor that it was operating under the name “USPSPARTNER” at the time of registering the domain names.
(vii) Respondent does not address the arguments set forth in the Complaint and does not deny any of Complainant’s allegations regarding bad faith use and registration.
(viii) The Response further supports a finding of bad faith as Respondent intends to sell the domain name to Complainant.
(ix) The Response only alleges that the domain names are not related. Respondent does not argue that the domain names are not commonly owned.
Complainant is the United States Postal Service, an independent establishment of the executive branch of the United States Government. It was founded on July 26, 1775, and serves millions of customers, thus setting the global industry standard for mailing and shipping-related goods and services. It has built a reputation for quality and performance worldwide.
Complainant owns numerous US trademarks, incorporating the USPS® sign, and five registrations for the standard USPS® sign standing alone, covering sorting, handling and receiving packages, envelopes and letters, pickup, transportation and delivery of packages and documents, boxes, clothing, retail store and mail order services, philatelic products, shoulder and travel bags, stuffed animals, electronic transmission of data and documents. Complainant has also used the RUSH trademark in commerce since as early as 1971 and has common law rights on it. Complainant also owns registrations for the USPS® mark in different countries including Australia, Switzerland, Egypt, the EU, Israel, Norway, Russia, Singapore, Turkey, Ukraine and Vietnam. Complainant offers its goods and services through its primary website at the domain name USPS.COM®.
Respondent is Michael Ruccolo / usps partner, located in the United States of America.
Respondent registered the Disputed Domain Names <uspscod.com> and <uspspartner.com> on April 17, 2018 and on June 22, 2018. Based on the evidence provided in the case file, the Disputed Domain Name directs to images of Complainant’s USPS® mark along with Complainant’s trademarked Long Life Vehicles.
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.
Complainant asserts trademark rights in the USPS® sign through its numerous US trademark applications and registrations. The Panel finds that these registrations, along with the use of the USPS® sign in connection with sorting, handling and receiving packages, envelopes and letters, pickup, transportation and delivery of packages and documents, boxes, clothing, retail store and mail order services, philatelic products, shoulder and travel bags, stuffed animals, electronic transmission of data and documents sufficiently establish Complainant’s rights in the USPS® trademarks under Policy ¶ 4(a)(i) (See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542, Forum Aug. 9, 2015).
The Panel is also required to examine under Policy ¶ 4(a)(i) whether the disputed domain names <uspscod.com> and <uspspartner.com> are identical or confusingly similar to Complainant’s trademark.
The Disputed Domain Names <uspscod.com> and <uspspartner.com> fully incorporates Complainant’s USPS® trademark with the mere addition of the <.com> generic top-level domain (“gTLD"). The gTLD is irrelevant when comparing the trademark and the disputed domain name (see Starkey v. Bradley, FA 874575, Forum Feb. 12, 2007). The Panel finds that the full incorporation of Complainant’s trademark is sufficient to establish confusing similarity for the purposes of the Policy (See Retail Royalty Company and AE Direct Co LLC v. wang mo ran, FA 1654301, Forum Feb. 5, 2016).
Furthermore, the disputed domain name <uspspartner.com> adds the descriptive term “partner” to Complainant’s mark. The Panel finds that the term “partner” is related to Complainant’s business that includes relationships with other service providers. Similarly, the disputed domain name <uspscod.com> adds the generic or descriptive term “COD” which stands for “Collect on Delivery” and thus refers to a service provided by Complainant.
Previous Panels have found that a “domain name consisting of a well-known mark combined with a descriptive term or phrase is confusingly similar to the mark”, especially when the descriptive term has “an obvious relationship to Complainant’s business” (See Lacoste S.A. v. Lenawoo, FA 1249698, April 21, 2009)
Consequently, the Panel finds that the Disputed Domain Names are confusingly similar to the USPS® trademark in which Complainant has rights, in accordance with Policy ¶ 4(a)(i).
Complainant has therefore satisfied Policy ¶ 4(a)(i).
Respondent registered the Domain Names in April and June of 2018, forty-seven years after Complainant’s first use of the USPS® trademarks.
Under Policy ¶ 4(a)(ii), Complainant bears the burden of establishing that Respondent lacks rights or legitimate interests in the Disputed Domain Names. However, where Complainant shows a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name, the burden of proof shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828, Forum Aug. 18, 2006 and see also AOL LLC v. Gerberg, FA 780200, Forum Sept. 25, 2006). The Complainant has met this burden.
The Panel finds that Respondent lacks rights or legitimate interests in the disputed domain names, as Respondent is not commonly known as USPS, “USPS COD”, and “USPS PARTNER”, and is not commonly known by the <uspspartner.com> and <uspscod.com> domain names pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Further, Respondent is neither licensed nor authorized to use Complainant’s mark.
Because of the widespread use of the mark prior to registration of the Disputed Domain Names and the use of the mark within the Disputed Domain Names, it can be inferred that Respondent had actual knowledge Complainant’s rights. (see WordPress Fdn. v. Pham Dinh Nhut, FA 1603156, March 14, 2015, complainant’s extensive use of its mark warranted inference that respondent had knowledge of mark prior to registering the domain name).
The Panel also finds that the domain name <uspspartner.com> is being passively held. Previous Panels have found that respondent was not making a bona fide offering of goods or services when respondent was not making an active use of the disputed domain name (See NIC Industries, Inc. v. Abadaba S.A., FA 448503, Forum July 17, 2012).
The Panel thus finds that Respondent has not provided any bona fide offering of goods and services and has not used the Disputed Domain Names for a legitimate non-commercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) respectively.
As Respondent has not provided a Response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Therefore, the Panel determines that Respondent has no rights or legitimate interests in the Disputed Domain Name <uspscod.com> and <uspspartner.com> in accordance with Policy ¶ 4(a)(ii).
Complainant contends that its trademarks are indisputably famous, that Respondent was aware of the trademarks and goodwill attached to them when registering the domain names, and that, therefore, Respondent’s use of the Domain Names is in bad faith. See U.S Postal Service, FA 1273625, (in light of the Complainant’s fame, the Panel believes that Respondent was fully aware of Complainant’s trademark and of the goodwill attached to its trademark when he registered the disputed domain name).
Complainant asserts that the use of Complainant’s marks on the USPSCOD website, and previously on the USPSPartner website, shows actual knowledge of Complainant and thus demonstrates that Respondent intent to capitalize on confusion with Complainant.
Previous Panels have found that “respondent use of complainant’s trademarks on the website at the disputed domain name was bad faith conduct and evidence of respondent’s knowledge of complainant” (See America Online, Inc. v. Adrian Paul Miles, FA 0105890, May 31, 2002).
Complainant further asserts that Respondent’s use of the USPS sign within the Disputed Domain Names, combined with terms highly descriptive of Complainant’s goods and services show intentional diversion of customers from Complainant.
Previous Panels have found bad faith where respondent was diverting consumers to its own website by using Complainant’s trademarks (See Best Western Int’l, Inc. v. Lost in Space, FA 126834, Nov. 7, 2002).
The Panel therefore finds that the circumstances of this case strongly suggest that Respondent has both registered and used the disputed domain name in bad faith.
Consequently, the Panel finds Complainant has 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 <uspscod.com> and <uspspartner.com> domain names be TRANSFERRED from Respondent to Complainant.
Nathalie Dreyfus Panelist
Dated: 07/09/2019
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