United States Postal Service v. Pertshire Marketing, Ltd
Claim Number: FA0606000729872
Complainant is United States Postal Service (“Complainant”), represented by Christopher T. Pierson, of Lewis and Roca, LLP, 40 North Central Avenue, Phoenix, AZ 85004. Respondent is Pertshire Marketing, Ltd (“Respondent”), Trident Chambers, Wickhams Cay 1, P.O. Box 146, Road Town, Tortola VG.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <wwusps.com>, <uspsonlinepostage.com>, <www-usps.com>, <uspsfedx.com>, <globalexpressmail.com>, <uspsground.com>, <uspps.org>, <uspschangeofaddress.com>, <uspsotalservice.com>, <usps-liteblue.com>, and <wwwusps.org>, registered with DotRegistrar.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 9, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 12, 2006.
On June 12, 2006, DotRegistrar confirmed by e-mail to the National Arbitration Forum that the <wwusps.com>, <uspsfedx.com>, <globalexpressmail.com>, <uspsground.com>, <uspschangeofaddress.com>, <uspsotalservice.com>, and <usps-liteblue.com> domain names are registered with DotRegistrar and that Respondent is the current registrant of the names. DotRegistrar has verified that Respondent is bound by the DotRegistrar registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 15, 2006, DotRegistrar confirmed by e-mail to the National Arbitration Forum that the <wwwusps.org> domain name is registered with DotRegistrar and that Respondent is the current registrant of the name. DotRegistrar has verified that Respondent is bound by the DotRegistrar registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On June 17, 2006, DotRegistrar confirmed by e-mail to the National Arbitration Forum that the <uspps.org> domain name is registered with DotRegistrar and that Respondent is the current registrant of the name. DotRegistrar has verified that Respondent is bound by the DotRegistrar registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On June 20, 2006, DotRegistrar confirmed by e-mail to the National Arbitration Forum that the <uspsonlinepostage.com> and <www-usps.com> domain names are registered with DotRegistrar and that Respondent is the current registrant of the names. DotRegistrar has verified that Respondent is bound by the DotRegistrar registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On June 26, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 17, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@wwusps.com, postmaster@uspsonlinepostage.com, postmaster@www-usps.com, postmaster@uspsfedx.com, postmaster@globalexpressmail.com, postmaster@uspsground.com, postmaster@uspps.org, postmaster@uspschangeofaddress.com, postmaster@uspsotalservice.com, postmaster@usps-liteblue.com, and postmaster@wwwusps.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 26, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <wwusps.com>, <uspsonlinepostage.com>, <www-usps.com>, <uspsfedx.com>, <uspsground.com>, <uspps.org>, <uspschangeofaddress.com>, <usps-liteblue.com>, and <wwwusps.org> domain names are confusingly similar to Complainant’s USPS mark.
Respondent’s <globalexpressmail.com>
domain name is identical to Complainant’s GLOBAL EXPRESS MAIL mark.
Respondent’s <uspsotalservice.com>
domain name is confusingly similar to Complainant’s U.S. POSTAL SERVICE
mark.
2. Respondent does not have any rights or legitimate interests in the <wwusps.com>, <uspsonlinepostage.com>, <www-usps.com>, <uspsfedx.com>, <globalexpressmail.com>, <uspsground.com>, <uspps.org>, <uspschangeofaddress.com>, <uspsotalservice.com>, <usps-liteblue.com>, and <wwwusps.org> domain names.
3. Respondent registered and used the <wwusps.com>, <uspsonlinepostage.com>, <www-usps.com>, <uspsfedx.com>, <globalexpressmail.com>, <uspsground.com>, <uspps.org>, <uspschangeofaddress.com>, <uspsotalservice.com>, <usps-liteblue.com>, and <wwwusps.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, United States Postal Service, is an Independent Establishment of the Executive Branch of the Government of the United States. Complainant is also the second oldest department or agency of the United States, having been established on July 26, 1775. Complainant holds several federal trademark registrations with the United States Patent and Trademark Office (“USPTO”). Complainant first registered the USPS mark with the USPTO on January 23, 2001 (Reg. No. 2,423,574). Complainant first registered the U.S. POSTAL SERVICE with the USPTO on April 22, 2003 (Reg. No. 2,709,131). Complainant first registered the GLOBAL EXPRESS MAIL mark with the USPTO on August 10, 2004 (Reg. No. 2,872,048). Complainant utilizes each of the aforementioned marks in connection with the delivery of hundreds of millions of messages and billions of dollars in financial transactions daily throughout the United States.
Respondent, Pertshire Marketing, Ltd, registered the <wwusps.com> domain name on January 28, 2004, the <uspsonlinepostage.com> domain name on May 23, 2005, the <www-usps.com> domain name on December 17, 2004, the <uspsfedx.com> domain name on September 27, 2005, the <globalexpressmail.com> domain name on November 24, 2005, the <uspsground.com> domain name on November 6, 2005, the <uspps.org> domain name on October 12, 2005, the <uspschangeofaddress.com> domain name on October 13, 2005, the <uspsotalservice.com> domain name on January 10, 2006, the <usps-liteblue.com> domain name on January 16, 2006, and the <wwwusps.org> domain name on August 25, 2004. Respondent’s disputed domain names resolve to websites containing links to several third-party websites that offer products and services that directly compete with Complainant. Several of the disputed domain names provide links to Complainant’s website, located at the <usps.com> domain name. Respondent also receives advertising revenue through its provision of links on the websites for the disputed domain names.
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."
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(e), 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 (Nat. Arb. 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.”).
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.
The Panel finds that Complainant has sufficiently demonstrated rights in the USPS, U.S. POSTAL SERVICE, and GLOBAL EXPRESS MAIL marks pursuant to Policy ¶ 4(a)(i) through Complainant’s submission of evidence of trademark registrations with the USPTO. See Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. 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 ¶ 4(a)(i).); see also Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)).
Furthermore, the Panel finds that Respondent’s <wwusps.com>, <uspsonlinepostage.com>, <www-usps.com>, <uspsfedx.com>, <uspsground.com>, <uspps.org>, <uspschangeofaddress.com>, <uspsotalservice.com>, <usps-liteblue.com>, and <wwwusps.org> domain names are confusingly similar to Complainant’s USPS and U.S. POSTAL SERVICE marks under Policy ¶ 4(a)(i). Respondent’s <uspsonlinepostage.com>, <uspsfedx.com>, <uspsground.com>, <uspschangeofaddress.com>, and <usps-liteblue.com> domain names consist of Complainant’s USPS mark with the addition of terms that describe aspects of Complainant’s offering of goods and services, and the generic top-level domain (gTLD) “.com.” In Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005), the panel found that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark. Consequently, in light of Complainant’s provision of mailing services and posting and shipping supplies through its official website in the present case, the Panel finds that the addition of descriptive terms to Complainant’s USPS mark do not sufficiently differentiate the disputed domain names from Complainant’s registered mark pursuant to Policy ¶ 4(a)(i). See also Disney Enter. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the alterations to the complainant’s DISNEY mark in the respondent’s <finestdisneyhomes.com> domain name are insufficient to differentiate the domain name from the mark pursuant to Policy 4(a)(i)); see also Dollar Fin. Group, Inc. v. Advanced Legal Sys., Inc., FA 95102 (Nat. Arb. Forum Aug. 14, 2000) (finding that the domain name <loan-mart.com> is confusingly similar to the complainant’s mark).
Moreover, the Panel finds that Respondent’s <wwusps.com>, <www-usps.com>, <uspps.org>, <uspsotalservice.com>, and <wwwusps.org> domain names are confusingly similar to Complainant’s USPS and U.S. POSTAL SERVICE marks, because the disputed domain names attempt to take advantage of common typing errors committed by Internet users by omitting the period between the “www” and the domain name, adding letters to Complainant’s marks, or transposing letters in Complainant’s marks. As a result of Respondent’s typosquatting conduct, the Panel finds that Respondent’s <wwusps.com>, <www-usps.com>, <uspps.org>, <uspsotalservice.com>, and <wwwusps.org> domain names are confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i). See Meade Instruments Corp. v. Drop One – Buy/Sell/Lease and Snapping Serv., FA 423017 (Nat. Arb. Forum Apr. 12, 2005), (finding that the <wwwmeade.com> domain name was confusingly similar to Complainant’s MEADE mark because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet.”); see also Pier 1 Imps., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com> is confusingly similar to the complainant's PIER 1 mark); see also Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names <teleplace.org>, <tele-place.com>, and <theteleplace.com> are confusingly similar to the complainant’s TELEPLACE trademark).
Additionally, the Panel finds that Respondent’s <globalexpressmail.com> domain name is identical to Complainant’s GLOBAL EXPRESS MAIL mark pursuant to Policy ¶ 4(a)(i). Respondent’s <globalexpressmail.com> domain name incorporates Complainant’s registered mark in its entirety, with the addition of the gTLD “.com.” In Treeforms, Inc. v. Cayne Indus. Sales, Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000), the panel found that the respondent’s <treeforms.com> domain name was identical to the complainant’s TREEFORMS mark. Similarly, in Western Union Holdings, Inc. v. Topiwala, D2005-0945 (WIPO Oct. 20, 2005), held that the <wuib.com> was identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance. Therefore, the Panel finds that Respondent’s <globalexpressmail.com> domain name is identical to Complainant’s GLOBAL EXPRESS MAIL mark in accord with Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must initially demonstrate that Respondent lacks rights or legitimate interests with respect to the disputed domain names. However, once Complainant establishes a prima facie case, the burden then shifts to Respondent to establish that it has rights or legitimate interests in connection with the disputed domain names under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel finds that Complainant has established a prima facie case and will evaluate the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain name under Policy ¶ 4(c).
Respondent’s <wwusps.com>, <uspsonlinepostage.com>,
<www-usps.com>, <uspsfedx.com>, <globalexpressmail.com>,
<uspsground.com>, <uspps.org>, <uspschangeofaddress.com>,
<uspsotalservice.com>, <usps-liteblue.com>, and <wwwusps.org>
domain names resolve to websites providing links to Complainant’s website, as
well as to third-party websites that offer mailing services and products in
competition with Complainant. Thus, the
Panel finds that such use by Respondent does not represent either a bona
fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439
(Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use
of the complainant’s marks to send Internet users to a website which displayed
a series of links, some of which linked to the complainant’s competitors, was
not a bona fide offering of goods or services); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that
the respondent used a domain name for commercial benefit by diverting Internet
users to a website that sold goods and services similar to those offered by the
complainant and thus, was not using the name in connection with a bona fide
offering of goods or services nor a legitimate noncommercial or fair use).
Moreover, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). Complainant asserts that Respondent is not a licensee or vendor of Complainant, and has not received permission from Complainant for the use of its marks. Additionally, nothing in Respondent’s WHOIS information indicates that Respondent is commonly known by the disputed domain names. Therefore, the Panel finds that the evidence on record does not demonstrate that Respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain names, which are
confusingly similar or identical to marks in which Complainant has rights, to
operate websites containing links to the competitors of Complainant. Thus, the Panel finds that Respondent’s
registration and use of the <wwusps.com>, <uspsonlinepostage.com>,
<www-usps.com>, <uspsfedx.com>, <globalexpressmail.com>,
<uspsground.com>, <uspps.org>, <uspschangeofaddress.com>,
<uspsotalservice.com>, <usps-liteblue.com>, and <wwwusps.org>
domain names constitutes registration and use in bad faith under Policy ¶
4(b)(iv). In Zee TV USA, Inc. v.
Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), the panel found that
the respondent engaged in bad faith registration and use by using the disputed
domain name to operate a website displaying links to various third-party
websites, some of which resolved to the websites of Complainant’s competitors. Moreover, in State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept.
12, 2000), the panel found bad faith where the respondent registered the domain
name <bigtex.net> to infringe on the complainant’s goodwill and attract
Internet users to the respondent’s website. Therefore, in the instant case, the Panel
finds that Respondent registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iv).
Additionally, the Panel
finds that Respondent’s <wwusps.com>, <www-usps.com>,
<uspps.org>, <uspsotalservice.com>, and <wwwusps.org>
domain names consist of intentional
misspellings of Complainant’s marks, evincing typosquatting on the part of
Respondent. Consequently, the Panel
finds that such use also constitutes bad faith registration and use by the
Respondent pursuant to Policy ¶ 4(a)(iii).
See Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (“Respondent misspells the Mark
with intent to intercept internet users from Complainant's web site, given the
fact that Complainant's website is a popular website and the Disputed Domain
Name is a misspelling of the Mark which is highly likely to occur. This typosquatting is evidence of bad
faith.”); see also Nextel Commc'ns Inc. v. Geer, FA 477183 (Nat.
Arb. Forum Jul. 15, 2005) (finding that the respondent's registration and use
of the <nextell.com> domain name was in bad faith because the domain name
epitomized typosquatting in its purest form).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwusps.com>, <uspsonlinepostage.com>, <www-usps.com>, <uspsfedx.com>, <globalexpressmail.com>, <uspsground.com>, <uspps.org>, <uspschangeofaddress.com>, <uspsotalservice.com>, <usps-liteblue.com>, and <wwwusps.org> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 3, 2006
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