United Parcel Service of America, Inc. v. Polyakov Andrey
Claim Number: FA2111001973589
Complainant is United Parcel Service of America, Inc. (“Complainant”), represented by Sabina A. Vayner of Greenberg Traurig, LLP, Georgia, USA. Respondent is Polyakov Andrey (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <track-ups-online.com>, <upsgroundtracking.net>, <upstrackingtool.com>, <ups-delivery-tracking.com>, <trackupspackage.com>, <upsshippingtracker.com>, <upsordertracking.net>, <upstrackingbynumber.com>, and <ups-freight-tracking.com>, (‘the Domain Names’) registered with NameCheap, Inc.
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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 16, 2021; the Forum received payment on November 16, 2021.
On November 22, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <track-ups-online.com>, <upsgroundtracking.net>, <upstrackingtool.com>, <ups-delivery-tracking.com>, <trackupspackage.com>, <upsshippingtracker.com>, <upsordertracking.net>, <upstrackingbynumber.com>, and <ups-freight-tracking.com> Domain Names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 November 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 2021 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@track-ups-online.com, postmaster@upsgroundtracking.net, postmaster@upstrackingtool.com, postmaster@ups-delivery-tracking.com, postmaster@trackupspackage.com, postmaster@upsshippingtracker.com, postmaster@upsordertracking.net, postmaster@upstrackingbynumber.com, postmaster@ups-freight-tracking.com. Also on November 29, 2021, 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 December 27, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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 Names be transferred from Respondent to Complainant.
A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of the mark UPS registered, inter alia, in the USA for transportation services with first use recorded as 1933. It owns ups.com.
The Domain Names registered in 2021 are confusingly similar to the Complainant’s mark adding only the generic terms “track,” “online,” “ground,” “tracking,” “tool”, “delivery” “package,” “shipping,” “order,” “freight,” “by number” and/or “tracker” and/or hyphens and the gTLD “.com” which do not prevent such confusing similarity.
Respondent has no rights or legitimate interests in the Domain Names, is not commonly known by them and is not authorized by the Complainant.
The Domain Names have been used for fraudulent purposes for sites purporting to be official sites of the Complainant using the Complainant’s trade mark, logo and trade dress in a phishing scheme. This is registration and use in bad faith diverting and confusing Internet users designed to disrupt the Complainant’s business in full knowledge of the Complainant and its rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark UPS registered, inter alia, in the USA for transportation services with first use recorded as 1933. It owns ups.com.
The Domain Names registered in 2021 have been used for fraudulent purposes for sites purporting to be official sites of the Complainant using the Complainant’s trade mark, logo and trade dress in a phishing scheme.
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 Domain Names in this Complaint combine the Complainant’s UPS mark (registered in the USA for transportation services with first use recorded as 1933), and/or hyphen (s), and/or the generic terms “track,” “online,” “ground,” “tracking,” “tool”, “delivery” “package,” “shipping,” “order,” “freight,” “by number” and/or “tracker”, and the gTLD .com.
The addition of generic terms and a gTLD does not negate confusing similarity between a domain name and a trade mark contained within it. See Wiluna Holdings LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD insufficient to distinguish a disputed domain name from a mark under Policy 4(a)(i).). Nor does the addition of hyphen(s). See Health Devices Corp. v. Aspen STC, FA 158254 (Forum July 1, 2003) (The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4(a)(i).).
Accordingly, the Panel finds that the Domain Names are confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 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). The Domain Names have been used for commercial purposes which is not legitimate noncommercial fair use.
The Domain Names have been used in a fraudulent phishing scheme using the Complainant’s logo and its trade dress. This is deceptive and confusing and amounts to passing off. As such it cannot amount to the bona fide offering of goods and services. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (finding that ‘Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use’). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate non-commercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Diverting Internet users for commercial gain and impersonating a complainant by use of a complainant’s mark and logo in a fraudulent phishing scheme is confusing and disruptive and evinces bad faith registration and use. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”).
As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <track-ups-online.com>, <upsgroundtracking.net>, <upstrackingtool.com>, <ups-delivery-tracking.com>, <trackupspackage.com>, <upsshippingtracker.com>, <upsordertracking.net>, <upstrackingbynumber.com>, and <ups-freight-tracking.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: December 28, 2021
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