United States Postal Service v. Domain Admin / Whois Privacy Corp. / Not disclosed Not disclosed / Network Relocations Inc. / Digital Movers Inc. / Classic Digs, Inc. / Home Services Network / Expert Relocators Inc. / Relocentral / Mark Gradine
Claim Number: FA1906001848992
Complainant is United States Postal Service (“Complainant”), represented by Jennifer A. Van Kirk of Lewis Roca Rothgerber Christie LLP, Arizona, USA. Respondent is Domain Admin / Whois Privacy Corp. / Not disclosed Not disclosed / Network Relocations Inc. / Digital Movers Inc. / Classic Digs, Inc. / Home Services Network / Expert Relocators Inc. / Relocentral / Mark Gradine (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <us-mailforward.com>, <us-mail-update.com>, <update-my-us-mail.online>, <forward-usmail.net>, <usmailupdate.com>, <update-address-us-ps.com>, <updateaddress-us-ps.com>, <addressupdate-us-ps.com>, <updateaddress-us-ps.net>, <addressupdate-us-ps.online>, <update-us-ps-address.online>, <updateaddress-us-ps.online>, <mailforward-us-ps.website>, <mailforward-us-ps.online>, <us-ps-updateaddress.online>, <mail-forward-usps.online>, <uspsupdateaddress.online>, <updateaddressusps.online>, <mailforwardusps.online>, and <mailforwardusps.website> registered with TLD Registrar Solutions Ltd.; Internet Domain Service BS Corp..
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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 20, 2019; the Forum received payment on June 20, 2019.
On June 28, 2019; July 1, 2019, TLD Registrar Solutions Ltd.; Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <us-mailforward.com>, <us-mail-update.com>, <update-my-us-mail.online>, <forward-usmail.net>, <usmailupdate.com>, <update-address-us-ps.com>, <updateaddress-us-ps.com>, <addressupdate-us-ps.com>, <updateaddress-us-ps.net>, <addressupdate-us-ps.online>, <update-us-ps-address.online>, <updateaddress-us-ps.online>, <mailforward-us-ps.website>, <mailforward-us-ps.online>, <us-ps-updateaddress.online>, <mail-forward-usps.online>, <uspsupdateaddress.online>, <updateaddressusps.online>, <mailforwardusps.online>, and <mailforwardusps.website> domain names are registered with TLD Registrar Solutions Ltd.; Internet Domain Service BS Corp, and that Respondent is the current registrant of the names. TLD Registrar Solutions Ltd.; Internet Domain Service BS Corp has verified that Respondent is bound by the TLD Registrar Solutions Ltd.; 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 July 5, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 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@us-mailforward.com, postmaster@us-mail-update.com, postmaster@update-my-us-mail.online, postmaster@forward-usmail.net, postmaster@usmailupdate.com, postmaster@update-address-us-ps.com, postmaster@updateaddress-us-ps.com, postmaster@addressupdate-us-ps.com, postmaster@updateaddress-us-ps.net, postmaster@addressupdate-us-ps.online, postmaster@update-us-ps-address.online, postmaster@updateaddress-us-ps.online, postmaster@mailforward-us-ps.website, postmaster@mailforward-us-ps.online, postmaster@us-ps-updateaddress.online, postmaster@mail-forward-usps.online, postmaster@uspsupdateaddress.online, postmaster@updateaddressusps.online, postmaster@mailforwardusps.online, postmaster@mailforwardusps.website. Also on July 5, 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 Response was received on July 5, 2019, but the Administrative Panel (the "Panel") finds that the Response is deficient for failure to comply with Paragraph 5(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"). However, as discussed below, the Panel has decided to allow the Response.
A timely Additional Submission from Complainant was received and determined to be complete on July 10, 2019.
On July 11, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster as Panelist.
Having reviewed the communications records, the Panel finds that the Forum has discharged its responsibility under Paragraph 2(a) of 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 will 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 a complete response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
- Complainant's predecessor was the second oldest department of the United States of America, and Complainant has been known as the United States Postal Service since 1971. Complainant serves millions of customers daily and sets the global industry standard for mailing and shipping, and related goods and services.
- Complainant has rights in the USPS and US MAIL marks through its registration of the marks with the United States Patent and Trademark Office.
- The disputed domain names are confusingly similar to Complainant’s USPS and US MAIL marks. Each disputed domain name incorporates Complainant’s mark and adds one or more of the descriptive terms “address,” “update,” “forward,” or “mail” to the mark. Additionally, Respondent adds a hyphen to various disputed domain names and a “.com,” “.online,” “.website,” or “.net” generic top-level domain (“gTLD”).
- Respondent has no rights or legitimate interests in the disputed domain names. Respondent has not been authorized or licensed by Complainant to use its marks in domain names or for any other reason. Respondent cannot claim to be commonly known as any of the disputed domain names. The disputed domain names are being held passively by Respondent, which constitutes neither a bona fide offer of goods or services nor a legitimate noncommercial or fair use of those names. Respondent is most likely using the disputed domain names to fraudulently acquire confidential and/or personal information from internet users.
- The disputed domain names were registered and are being used in bad faith. Due to the fame of Complainant's marks, Respondent was well aware of them and the goodwill attached to them when Respondent registered the marks. Further, Respondent is attempting to attract internet users for commercial gain by creating a likelihood of confusion as to the source, sponsorship, endorsement, or affiliation of Respondent’s website. Additionally, Respondent’s bad faith is evidenced by Respondent’s attempts to fraudulently procure confidential and/or personal information. Finally, Respondent’s passive non-use of some of the disputed domain names is consistent with bad faith registration and use of those names.
B. Respondent
- Per its deficient Response, Respondent asserts that it was unaware that any of the disputed domain names would violate trademark rights. The names were registered and designed for development/demonstration purposes only, and not intended for production or ecommerce use.
- Respondent apologizes for any inadvertent infringement of rights, and consents to the transfer of the disputed domain names to Complainant.
C. Complainant's Additional Submission
- As Respondent consents to the transfer of the disputed domain names, the Panel should forego the standard Policy analysis and order an immediate transfer of the names to Complainant.
For the reasons set forth below, the Panel will not make any findings of fact.
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.
PRELIMINARY ISSUE: CONSENT TO TRANSFER
Although the Response was found to be deficient by the Panel per Rule 5(c), that communication from Respondent clearly states that Respondent consents to transfer the disputed domain names to Complainant. Accordingly, consistent with Rules 10(a), 10(b) and 10(d), the Panel decides to accept the Response. See Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO, Mar. 3, 2000) (“While this email does not formally constitute a Response as defined by paragraph 5 of the Rules, its content will be taken into account in the analysis of this matter.”).
However, after the initiation of this proceeding, TLD Registrar Solutions Ltd.; Internet Domain Service BS Corp. placed a hold on Respondent’s account, and therefore Respondent cannot transfer the disputed domain names while this proceeding is still pending. As a result, the Panel finds that, in a circumstance such as this where Respondent has failed to contest the transfer of the disputed domain names, but instead agrees to transfer the domain names in question to Complainant, the Panel may forego the standard UDRP analysis and order an immediate transfer of the disputed domain names. as Also, the Complainant, in reaction to the Response, explicitly requested an immediate transfer of the disputed domain names without an analysis of issues under the Policy. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”); see also Motorola, Inc. and Symbol Tech., Inc. v. Domain Manager, FA 1142633 (Forum Apr. 1, 2008); see also Sazerac Brands, LLC v. Derricks, FA 1817727 (Forum Dec. 18, 2018).
For the reasons set forth above, the Panel will not analyze this element of the Policy.
For the reasons set forth above, the Panel will not analyze this element of the Policy.
For the reasons set forth above, the Panel will not analyze this element of the Policy.
Given the common request of the Parties, it is Ordered that the <us-mailforward.com>, <us-mail-update.com>, <update-my-us-mail.online>, <forward-usmail.net>, <usmailupdate.com>, <update-address-us-ps.com>, <updateaddress-us-ps.com>, <addressupdate-us-ps.com>, <updateaddress-us-ps.net>, <addressupdate-us-ps.online>, <update-us-ps-address.online>, <updateaddress-us-ps.online>, <mailforward-us-ps.website>, <mailforward-us-ps.online>, <us-ps-updateaddress.online>, <mail-forward-usps.online>, <uspsupdateaddress.online>, <updateaddressusps.online>, <mailforwardusps.online>, and <mailforwardusps.website> domain names be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: July 24, 2019
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