Postmates Inc. v. Shawn Andrew / Transportation
Claim Number: FA1909001861909
Complainant is Postmates Inc. (“Complainant”), represented by Chelsea E. Carbone of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Shawn Andrew / Transportation (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <postmatesonline.co>, registered with GoDaddy.com, LLC.
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 September 12, 2019; the Forum received payment on September 12, 2019.
On September 13, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <postmatesonline.co> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 September 13, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 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@postmatesonline.co. Also on September 13, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 4, 2019, 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.
Complainant offers a software platform which connects customers with local couriers to facilitate the prompt delivery of anything from any nearby store or restaurant. Complainant offers its services to consumers via a mobile app, available for iOS and Android, as well as its website hosted at <postmates.com>. Complainant has rights in the POSTMATES mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,548,033, registered June 10, 2014). See Compl. Ex. D. Respondent’s <postmatesonline.co> domain name is identical or confusingly similar to Complainant’s mark as it adds the term “online” and the “.co” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <postmatesonline.co> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent diverts users to the disputed domain name and uses Complainant’s mark and logos to imply a connection or affiliation with Complainant.
Respondent registered and uses the <postmatesonline.co> domain name in bad faith because Respondent attempts to disrupt Complainant’s business by diverting internet traffic to the disputed domain name. Further, Respondent attempts 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. Respondent also attempts to gain information from users seeking Complainant’s website. Finally, Respondent had actual knowledge of Complainant’s mark and attempts to trade off the value and goodwill associated with the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that offers a software platform which connects customers with local couriers to facilitate prompt deliveries.
2. Complainant has established its trademark rights in the POSTMATES mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,548,033, registered June 10, 2014).
3. Respondent registered the <postmatesonline.co> domain name on August 2, 2019.
4. Respondent has diverted internet users to the disputed domain name and uses Complainant’s mark and logos to imply a connection or affiliation with 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant submits that it has rights in the POSTMATES mark based upon its registration of the mark with the USTPO. Registration with the USTPO generally establishes a complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides copies of its registration of the mark with the USTPO (e.g., Reg. No. 4,548,033 registered on June 10, 2014). See Compl. Ex. D. Accordingly, the Panel agrees and finds that Complainant has established rights in the POSTMATES mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s POSTMATES mark. Complainant argues that Respondent’s <postmatesonline.co> domain name is confusingly similar to Complainant’s mark because Respondent incorporates the POSTMATES mark in its entirety, adding only a generic term and a gTLD. The Panel notes that while Complainant argues that the “.co” is a gTLD, it is not a gTLD, but a country code top level domain (“ccTLD”). The addition of a generic term and a ccTLD may be insufficient to defeat a finding of confusing similarity under Policy ¶ 4(a)(i). See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis). Complainant argues that Respondent incorporates the POSTMATES mark in its entirety, adding the term “online,” and a “.co” ccTLD. Therefore, the Panel finds that the <postmatesonline.co> domain name is confusingly similar to Complainant’s mark 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take and use in a domain name Complainant’s POSTMATES trademark, adding only the generic word ”online”, which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent has diverted internet users to the disputed domain name and uses Complainant’s mark and logos to imply a connection or affiliation with Complainant;
(c) Respondent registered the <postmatesonline.co> domain name on August 2, 2019;
(d) Respondent has engaged in these activities without the consent or approval
of Complainant;
(e)Complainant argues that Respondent lacks rights and legitimate interests in the <postmatesonline.co> domain name because Respondent is not authorized or permitted to use Complainant’s POSTMATES mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson,FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from a complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The Panel notes that the WHOIS of record identifies the Respondent as “Shawn Andrew / Transportation” and no information in the record shows that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. See Amend. Compl. Ex. A. Accordingly, the Panel concludes that Respondent lacks rights and legitimate interests in the <postmatesonline.co> domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <postmatesonline.co> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent attempts to divert Internet users to Respondent’s website. Using a disputed domain name to divert Internet users through an implied connection may not be a bona fide offering or a legitimate noncommercial or fair use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant argues that Respondent diverts Internet users searching for Complainant’s business to the disputed domain name where Respondent prominently features the POSTMATES mark and logo. Complainant provides a screenshot of the disputed domain name’s resolving webpage which displays Complainant’s logo and requests users to log in to their account. See Compl. Ex. G. Therefore, the Panel finds that Respondent makes no bona fide offerings or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
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 argues that Respondent uses the <postmatesonline.co> domain name in bad faith because Respondent attempts to disrupt Complainant’s business by diverting Internet users. Such use may evince bad faith under Policy ¶ 4(b)(iii). See United States Postal Service v. kyle javier, FA 1787265 (Forum June 12, 2018) (“Complainant alleges that Respondent is using the disputed domain name to divert Internet users to Respondent’s website, which features content that is identical to Complainant’s own website. The Panel finds that Respondent is disrupting Complainant’s business and that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).”). Here, Complainant provides evidence of disruption and argues that Respondent did attempt to disrupt Complainant’s business by diverting Internet users to Respondent’s website. As the Panel finds the evidence sufficient, the Panel may find bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant argues that Respondent uses the <postmatesonline.co> domain name to attract Internet users by creating a likelihood of confusion and profiting from that confusion. Fraudulently profiting by creating a likelihood of confusion may evince bad faith under Policy ¶ 4(b)(iv). See Zoetis Inc. and Zoetis Services LLC v. Paul Adams / zoetismail, FA 1729095 (Forum June 5, 2017) (holding that the respondent registered and used the <zoetismail.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). Here, Complainant argues that the disputed domain name promises fraudulent Postmates’ services and provides a screenshot of the disputed domain name’s resolving webpage. See Compl. Ex. G. As the Panel finds the evidence sufficient, the Panel finds bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that Respondent uses the <postmatesonline.co> domain name to gain information from Internet users. Such use may evince bad faith under Policy ¶ 4(a)(iii). See United States Postal Service v. kyle javier, FA 1787265 (Forum June 12, 2018) (“Use of a domain name to phish for Internet users’ personal information is evidence of bad faith.”). Here, Complainant provides a screenshot of the disputed domain name’s resolving webpage which prompts users to log in to their accounts. Complainant further argues that the inclusion of the POSTMATES mark and logo on the disputed domain name’s resolving webpage will prompt users to enter their account information. See Compl. Ex. G. Therefore, the Panel finds and faith under Policy ¶ 4(a)(iii).
Fourthly, Complainant argues that Respondent had actual knowledge of Complainant’s POSTMATES mark. Actual knowledge of complainant’s rights in a mark may support a finding of bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant provides screenshots of the resolving of the websites of the disputed domain name which displays the POSTMATES mark and logo prominently and could be mistaken for Complainant’s website or a website associated with Complainant’s services. See Compl. Ex. G. Accordingly, the Panel may find that Respondent did have actual knowledge of Complainant’s mark and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
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 domain name using the POSTMATES mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed 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 <postmatesonline.co> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC Panelist
Dated: October 5, 2019
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