DECISION
Unified Carrier Registration Plan v. Bogash, Uliana / Excelsior Enterprises International, Inc.
Claim Number: FA2311002069319
PARTIES
Complainant is Unified Carrier Registration Plan ("Complainant"), represented by Ashley M. Robinson of Bradley Arant Boult Cummings LLP, Alabama, USA. Respondent is Bogash, Uliana / Excelsior Enterprises International, Inc. ("Respondent"), represented by Bradford C. Craig of Blank Rome LLP, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ucrregistration.com>, registered with Register.com, Inc.
PANEL
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Kateryna Oliinyk and Charles Kuechenmeister, Panelists and Alan L. Limbury as Panelist and Chair.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on November 2, 2023. Forum received payment on November 2, 2023.
On November 6, 2023, Register.com, Inc. confirmed by e-mail to Forum that the <ucrregistration.com> domain name is registered with Register.com, Inc. and disclosed registrant and contact information for the domain name which differed from that of the named Respondent (Perfect Privacy, Privacy LLC) in the Complaint. Register.com, Inc. verified that Respondent is bound by the Register.com, 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").
Forum sent an email communication to Complainant on November 7, 2023, providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an Amended Complaint that day.
On November 7, 2023, Forum served the Amended Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 27, 2023 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@ucrregistration.com. Also on November 7, 2023, 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.
On November 17, 2023, Respondent requested an extension of time to respond to the Complaint, based upon extenuating circumstances. That day Forum granted Respondent an extension until December 21, 2023 to submit a Response.
A timely Response was received and determined to be complete on December 21, 2023.
On January 3, 2024, Complainant submitted to Forum a Reply to the Response.
On January 3, 2024, pursuant to Respondent's request to have the dispute decided by a three-member Panel, Forum appointed Kateryna Oliinyk and Charles Kuechenmeister as Panelists and Alan L. Limbury as Panelist and Chair.
On January 8, 2024, Respondent submitted to Forum a Reply to Complainant's Reply to the Response.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: RESPONDENT'S REQUEST FOR STAY
By email to Forum on December 8, 2023, Respondent's representative sought a stay of this proceeding pending the disposition of a pending cancellation action in relation to Complainant's trademark registration. Complainant does not consent to a stay.
In light of the Panel's findings below, it is unnecessary to stay this proceeding.
PARTIES' CONTENTIONS
A. Complainant
Complainant, Unified Carrier Registration Plan, owns common law trademark rights in the marks UCR and UNIFIED CARRIER REGISTRATION PLAN because they have established secondary meaning through extensive and long-standing use, recognition, and promotional advertising since the UCR Act was enacted in 2005. Complainant has used those marks extensively in connection with maintaining a registry of motor carriers, motor private carriers, brokers, freight forwarders, and leasing companies engaged in interstate transportation across the United States. Complainant advertises the UCR registration services on its website "https://plan.ucr.gov".
Complainant also owns United States Patent and Trademark Office ("USPTO") registered trademark UCR UNIFIED CARRIER REGISTRATION PLAN and Design, (Reg. No. 5,397,410 registered on February 6, 2018).
Respondent's <ucrregistration.com> domain name is confusingly similar to and copies Complainant's marks.
Respondent has no rights or legitimate interest in the <ucrregistration.com> domain name. Before any notice to Respondent of the dispute, Respondent has not used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent is using the confusingly similar domain name to reroute Internet users to its own website, which purports to sell Complainant's services for an additional fee.
While Respondent posts a disclaimer on its website stating that it is a "private, third-party provider offering services for a fee," ICANN panels have consistently held that use of a disclaimer does not mitigate the confusion of association with Complainant.
Respondent therefore is not making a legitimate non-commercial or fair use of the <ucrregistration.com> domain name, nor is Respondent using the domain name without intent for commercial gain or without intent to tarnish Complainant's marks.
Upon information and belief, Respondent registered and is using the domain name to suggest an affiliation with Complainant and to divert internet users searching for Complainant's website at "https://plan.ucr.gov".
Respondent has not been commonly known by the name "UCR" or the <ucrregistration.com> domain name. Respondent is not now using or commonly known under, never has used or been commonly known under, and has no bona fide intent to use or be commonly known under the name "UCR," or any term or phrase including "UCR" as a part of its name, service mark, or trademark, except in connection with the registration of the <ucrregistration.com> domain name. Further, Complainant has never authorized Respondent to register a domain name containing the UCR Mark.
The <ucrregistration.com> domain name has been registered and is being used in bad faith. Upon information and belief, Respondent selected the domain name on the basis that it would cause Internet users intending to register with Complainant instead to use Respondent's website because of the confusingly similar domain name. This disruption of Complainant's business is evidence of bad faith. Because Respondent attempts to profit from this confusion through the promotion of its own services, this use is for commercial gain and is also evidence of bad faith. Respondent's use of a disclaimer does not reduce the likelihood of confusion with Complainant and does not mitigate bad faith. Further, Respondent registered the domain name using a privacy service to hinder anyone's ability to identify Respondent as the party responsible for the activity associated with the domain name.
B. Respondent
Respondent, Bogash, Uliana / Excelsior Enterprises International, Inc., says this proceeding was filed in a malicious and bad faith attempt to deprive Respondent of her <ucrregistration.com> domain name that she has used in connection with her motor carrier permitting services for more than thirteen (13) years.
First, the <ucrregistration.com> domain name is neither identical nor confusingly similar to any trademark in which Complainant alleges to have rights. Indeed, Complainant's attempt to claim that it has trademark rights in "UCR" is utterly asinine. In the transport context, "UCR" is ubiquitous shorthand for "Unified Carrier Registration," a clear and universally understood reference to the federally created motor carrier registration system (49 U.S.C. § 14504a). Complainant's contention that "UCR" has source-identifying significance defies logic and ignores reality.
Second, Respondent can in no way be considered to have no rights or legitimate interests in respect of her <ucrregistration.com> domain name. Respondent has used her <ucrregistration.com> domain name in connection with her business since at least as early as 2010 and has spent significant resources in making her brand and business successful, while also aiding Complainant by facilitating annual motor carrier registrations and increasing Complainant's revenue, which is not business revenue in terms of operating in commerce, but is essentially tax revenue that is paid through a central depository to the 41 participating states in the "UCR Agreement," a Congressionally-approved interstate compact of states. Complainant fraudulently suggests Respondent is a competitor infringing on its alleged trademark rights when it is simply impossible for a for-profit business to compete with an interstate compact of state governments. In addition, the state of New Jersey granted Respondent the right to use the doing business as (dba) name ("alternate name") of "UCR Registration," which directly corresponds to Respondent's <ucrregistration.com> domain name and reflects and affirms Respondent's trademark rights therein.
Third, Respondent registered and has at all times used her <ucrregistration.com> domain name in good faith – again, in connection with her legitimate and successful motor carrier registration permitting service business, which drives tax revenues to the states that are then used for motor carrier safety initiatives and enforcement in the public interest.
By contrast, the Complaint is clearly a maliciously motivated retaliatory action against Respondent stemming from successful litigation by Respondent's related company against Complainant and its Board members, which resulted in Complainant being enjoined from further violating the Sunshine Act as required by Congress in the UCR Act, a violation of Complainant's own whistleblower policy. Just last month, Complainant violated that injunction, and when called out, Complainant was forced to cancel its improperly noticed subcommittee meeting. Indeed, it is Complainant who has unequivocally engaged in bad faith, and decidedly not Respondent.
Finally, in Complainant's Board meeting of March 3, 2022, Complainant's outside counsel stated as follows:
"I got a report this afternoon on our activities with six third-party permitting services that we have interacted with. The first is the Simplex group. We sent them a demand letter insisting that they stop using our registered logo. They engaged a lawyer to respond who sent us a letter agreeing with us that they should stop using the logo but they also believe that using the phrase 'UCR permit' and 'UCR registration' and similar phrases are permitted uses. We agree with that".
Therefore, Complainant itself unequivocally conceded that it does not have, and cannot claim, rights in "UCR" and "UCR REGISTRATION".
Respondent annexes a Declaration by James Lamb, the Executive Director of the Small Business in Transportation Coalition, a transportation industry trade association representing over 20,000 trucking companies and independent truckers. Mr. Lamb declares that:
· in the transportation industry, "UCR" is universally known to refer to the "Unified Carrier Registration" system, which registers and collects fees from the operators of vehicles engaged in interstate travel;
· the UCR system was created under the federal Unified Carrier Registration Act of 2005;
· "UCR" is no more than an abbreviation for "Unified Carrier Registration";
· members of our industry do not associate "UCR" with any particular entity, company, association, or organization;
· "UCR" does not have source identification significance;
· the "Unified Carrier Registration Plan" is the name of an "organization of State, Federal, and industry representatives responsible for developing, implementing, and administering the "unified carrier registration agreement," as defined in the Unified Carrier Registration Act of 2005; and
· no one in our industry would mistakenly assume that UCRREGISTRATION.COM refers to or is related in any way to the Unified Carrier Registration Plan.
Respondent says "UCR" clearly and unequivocally does not and cannot itself carry any source identifying significance. Complainant simply cannot claim exclusive trademark rights in "UCR." Indeed, the marketplace features numerous domain names containing the word "UCR" that are used in connection with overlapping or related services, including <ucrportal.info>, <ucrregistration.org>, <ucrregistration.us>, <ucrregistration2024.com> and <2024ucr.com>. These numerous directly analogous "UCR"-formative marks further underscore the reality that "UCR" is not itself alone a source indicator (for Complainant or otherwise), but rather a reference to the Unified Carrier Registration system.
C. Additional Submissions
Complainant
In its Reply to the Response, Complainant says that, contrary to Respondent's allegations, Complainant's Complaint is neither "utterly asinine" nor does it "def[y] logic [or] ignore[] reality." In fact, it is grounded in the reality of a federal trademark registration and valid common law trademark rights in both UCR UNIFIED CARRIER REGISTRATION PLAN (and design) and "UCR."
The <ucrregistration.com> domain name is identical and confusingly similar to the marks in which Complainant has rights. It is improper for Respondent to rely on a cancellation proceeding filed 13 days after Complainant filed its Amended Complaint. Complainant's mark has not been cancelled. Complaint holds a valid federal trademark registration.
As to rights or legitimate interest, while Respondent alleges use of the domain name since 2010, use itself is not sufficient to support a claim of rights or legitimate interests in the domain name. Because Respondent is not making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers, Respondent cannot claim a legitimate interest in the domain name.
As to bad faith, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's mark as to, at least, the affiliation of its website. Respondent's allegations that Complainant has "engaged in malicious retaliation" is baseless. Respondent hid its ownership and contact information behind a privacy service. That fact alone is evidence of bad faith. Until Forum requested the Registrar to provide the domain name owner information, after the Complaint was filed, Complainant was unaware that Respondent owned the domain name. Thus, it is factually impossible for this Complaint to have been filed in "malicious retaliation". In fact, Respondent's allegations of such appear to be an attempt to distract the Panel from the fact that Respondent has registered, in bad faith, a domain name that is confusingly similar to the marks Complainant owns.
Respondent
In its Reply to Complainant's Reply to the Response, Respondent repeats its assertions and submits that Complainant's contention that Respondent's use of a domain privacy registration service "alone is evidence of bad faith" is false and mischaracterizes the case on which it relies, Enterprise Products Partners L.P. v. Major World / Major World Automobile, FA2205001996171 (Forum June 28, 2022), in which the Panel explained:
"Registrars allow the use of privacy protections, however, and as such it cannot be taken as ipso facto evidence of bad faith. There are any number of plausible reasons a registrant might choose to use a privacy service that do not involve bad faith."
Respondent notes that Complainant itself used a privacy service when registering its domain name <ucr.gov>.
Respondent also annexes correspondence showing that Complainant was aware in 2011 of Respondent's business as a truck permit company, offering UCR filing services for motor carriers.
FINDINGS
Complainant has failed to establish all the elements entitling it to relief.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.
The WIPO Jurisprudential Overview 3.0, section 4.8 provides:
"Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision."
In considering the issues in this proceeding, the Panel has accessed the websites of the parties.
Identical and/or Confusingly Similar
Complainant, Unified Carrier Registration Plan, is the organization of State, Federal and industry representatives in the United States responsible for developing, implementing and administering the "UCR Agreement", under which motor carriers involved in interstate commerce are required to register and pay annual fees based on fleet size to supplement funding for state highway motor carrier registration and safety programs. The UCR Agreement and the UCR Plan are defined in 49 United States Code §14504a (8) and (9) (Response Annex 4).
It is unclear to the Panel from the detailed provisions of that Code whether the organization of persons constituting Complainant or its Board of Directors is a legal person that has the capacity to bring a UDRP proceeding. However, for present purposes, the Panel is prepared to proceed on the basis that Complainant does have such capacity.
The Panel notes that "UCR" is used as an abbreviation for "Unified Carrier Registration" in the statutory definitions of "Unified Carrier Registration Agreement" and "Unified Carrier Registration Plan" in 49 U.S. Code § 14504a (8) and (9). It is clear from Mr. Lamb's Declaration that "UCR" is regarded in the industry as an abbreviation and does not have source identification significance. Further, in its application to register its stylized design mark, Complainant disclaimed the words UNIFIED CARRIER REGISTRATION PLAN apart from the mark as shown.
Accordingly, the Panel is not satisfied that Complainant has common law trademark rights in either "UCR" or "UNIFIED CARRIER REGISTRATION PLAN".
The Panel accepts that, through registration with the USPTO, Complainant acquired rights in the stylized design mark:
(Reg. No. 5,397,410, registered on February 6, 2018 upon application filed on October 13, 2016, claiming first use in commerce on May 31, 2017 in Class 35 for "maintaining a registry of motor carriers, motor private carriers, brokers, freight forwarders, and leasing companies engaged in interstate transportation"). The words UNIFIED CARRIER REGISTRATION PLAN are disclaimed apart from the mark as shown (the "Registered Mark").
On November 20, 2023, after the Amended Complaint was filed, Small Business in Transportation Coalition, Inc. filed a petition in the USPTO before the Trademark Trial and Appeal Board, seeking cancellation of Complainant's stylized design mark, upon grounds including that the "UCR" portion of the Registered Mark is generic and that the Registrant failed to disclaim exclusive rights to the generic "UCR" in the Registered Mark. That petition is currently pending.
While the pending cancellation proceedings do not involve the disputed domain name, the Panel will nevertheless address them insofar as they relate to the present proceeding. In this respect, it is not incumbent on the Panel to determine the validity of Complainant's trademark rights, nor does the Panel have jurisdiction to do so, that being the role of the USPTO or any other intellectual property offices. Notwithstanding the pending cancellation proceedings before the Trademark Trial and Appeal Board of the USPTO, Complainant is (at the time of this decision) the registered trademark holder of the Registered Trademark, registered in the United States, the registration details of which are provided above.
Under the first element, Complainant must establish that the disputed domain name is identical or confusingly similar to Complainant's trademark.
There are two parts to this inquiry: (i) Complainant must demonstrate that it has rights in a trademark and, if so, (ii) the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The object of the Uniform Domain Name Dispute Resolution Policy is to provide a fast-track and simple procedure to resolve domain-name disputes. In the view of the Panel, it would undermine the object and effect of the Policy if a Respondent could avoid a decision against it, and thereby also hinder the transfer of a domain name if the conditions of the Rules are fulfilled, merely by initiating invalidity proceedings. If the Complainant can prove that it has rights in a trademark, as stated in the Rules paragraph 4(a)(i), this fact should, as a starting point, be decisive and will remain so until the trademark in question is cancelled or held invalid by the competent authorities.
Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. See section 1.2 of the WIPO Jurisprudential Overview 3.0. Complainant submitted evidence that the Registered Trademark enjoys protection under the national trademark registration. Thus, the Panel finds that Complainant's rights in the Registered Mark have been established pursuant to the first element of the Policy.
In the circumstances, the Panel does not consider it necessary to suspend or terminate the present UDRP proceeding and finds it appropriate to proceed to issue a decision on the merits. However, the Panel's decision is without prejudice to the outcome of any other legal proceedings concerning the Registered Mark, including the pending cancellation proceedings before the USPTO.
According to section 1.10 of the WIPO Jurisprudential Overview 3.0, Panel assessment of identity or confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark. To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element. Such design elements may be taken into account in limited circumstances e.g., when the domain name comprises a spelled-out form of the relevant design element.
On this basis, trademark registrations with design elements would prima facie satisfy the requirement that a complainant show "rights in a mark" for further assessment as to confusing similarity.
On the assumption that the Registered Mark is currently valid and based on the assessment of confusing similarity between the disputed domain name and the Registered Mark, the Panel is prepared to proceed on the basis that Respondent's <ucrregistration.com> domain name is confusingly similar to the undisclaimed "UCR" element of Complainant's Registered Mark, only differing by the addition of the word "registration", which is insufficient to distinguish the domain name from the mark, and the inconsequential ".com" generic top-level domain ("gTLD"), which may be ignored. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Respondent, Ms. Uliana Bogash, is the President of Carrier Registration, Inc., formerly Excelsior Enterprises International, Inc., a New Jersey company incorporated on January 3, 2010, which registered the trade name UCR Registration on July 11, 2014 and the trade name Carrier Registration on March 18, 2018. On September 23, 2021, the company applied to the USPTO to register "UCRREGISTRATION.COM" as a trademark. That application is currently pending and the Panel makes no finding as to whether Respondent has trademark rights in that name.
The <ucrregistration.com> domain name was registered by Respondent on November 16, 2010, several years before the claimed first use in commerce of Complainant's registered mark. Since 2010 the domain name has resolved to a website offering motor carrier registration services for a fee which is in addition to the official Unified Carrier Registration state fees promulgated by the Federal Motor Carrier Safety Administration. The services provided by Respondent are analogous to those provided by firms which assist U.S. income taxpayers with the preparation and filing of their income tax returns. The website does not display Complainant's registered stylized design mark.
According to the Panel's review of Complainant's published Handbook which provides information about its program, it has been further established that an entity subject to UCR may engage a third party to perform UCR registration and pay UCR fees. Such arrangements may be subject to the rules of individual participating states. The UCR program does not regulate the fees a private party may charge a registrant for such a service1.
Thus, it is inevitable that such service providers would refer to the UCR name as the respective services are not readily identifiable without the use of the UCR name.
The Panel finds these circumstances to be insufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent.
Thus, based on the circumstances of the case, the Panel finds that the following overall facts and circumstances are supportive of the fair use of the domain name by Respondent: (i) the domain name has been registered and is being used for legitimate purposes and not as a pretext for commercial gain or other such purposes inhering to Respondent's benefit; (ii) it is clear to Internet users visiting Respondent's website that it is not operated by Complainant through publication of the prominent disclaimer on Respondent's website to which the domain name resolves; (iii) the domain name registration and use by Respondent are consistent with a pattern of bona fide activity of third parties performing UCR registrations and paying UCR fees.
Further, according to a Declaration by Ms. Bogash (Response Annex 8), Respondent has rendered services under its UCRREGISTRATION.COM mark to customers in 48 states and Canada; has facilitated in excess of 120,000 original registrations and registration renewals for motor carriers in the United States; and facilitates and contributes to Complainant's revenue, which is essentially a full tax fee revenue on every order placed by the public through <ucrregistration.com> that is paid through a central depository to the 41 participating states in the "UCR Agreement," a Congressionally-approved interstate compact of states.
The Panel accepts this evidence and finds that before any notice to Respondent of the dispute, Respondent has used the domain name in connection with a bona fide offering of services and that Respondent's business has been commonly known by the <ucrregistration.com> domain name. Accordingly, the Panel is satisfied that Respondent has demonstrated rights to and legitimate interests in the domain name pursuant to each of sub-paragraphs 4(c)(i) and (ii) of the Policy.
Complainant has failed to establish this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct;
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on its website or location.
Because the domain name was registered several years before Complainant's claimed first use of its registered stylized design mark and because, as the Panel has found, Complainant has not shown that it has common law rights in either "UCR" or "UNIFIED CARRIER REGISTRATION PLAN", the Panel finds that Respondent could not have been aware of Complainant's Registered Mark when she registered the <ucrregistration.com> domain name and did not do so in bad faith. Further, that Respondent's use of the domain name has been for a legitimate purpose and has remained unchanged since the registration of Complainant's stylized design mark. The Panel finds that such use is not in bad faith.
Complainant has failed to establish this element.
Reverse domain name hijacking
Respondent has requested a finding against Complainant of Reverse Domain Name Hijacking ("RDNH"), defined in Rule 1 as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name". Rule 15(e) provides, in part:
"If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."
As to Complainant's asserted common law trademark rights, the evidence before the Panel clearly shows that, prior to the filing of its initial Complaint in this proceeding, Complainant, Unified Carrier Registration Plan, established under a statute which uses "UCR" as an abbreviation for Unified Carrier Registration in the definition of Complainant, was well aware that it has no common law trademark rights in that abbreviation, nor in its combination with the descriptive word "registration", as its outside Counsel so advised Complainant in 2022. The Panel notes that Complainant's own website at "https://plan.ucr.gov/about-ucr/" uses "UCR" as an abbreviation:
"Motor carriers involved in interstate commerce, and other businesses subject to Unified Carrier Registration (UCR) are required to submit annual fees based on fleet size to supplement funding for state highway motor carrier registration and safety programs."
As to legitimacy, the Amended Complaint asserted, as set out above:
"Before any notice to Respondent of the dispute, Respondent has not used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent is using the confusingly similar domain name to reroute Internet users to its own website, which purports to sell Complainant's services for an additional fee.
Although the identity of Respondent was not disclosed by the Registrar until after the filing of the Complaint, it is clear that Complainant had long been aware of the legitimate services provided by Respondent and others in the industry, since those services involve payments to Complainant on behalf of their customers, a service expressly recognized by Complainant as permissible in the UCR HANDBOOK, approved by the Board of Directors of Complainant, effective August 11, 2022, available on Complainant's website:
"Registration Through Third Parties
An entity subject to UCR may engage a third party to perform UCR registration and pay UCR fees. Such arrangements may be subject to the rules of individual participating states. The UCR program does not regulate the fees a private party may charge a registrant for such a service."
Nevertheless, Complainant proceeded to file its Amended Complaint with full knowledge of Respondent's rights and legitimate interests in the domain name.
Having regard to all the circumstances of this case, the Panel finds that both the Complaint and the Amended Complaint were brought in bad faith and that each constitutes an abuse of the administrative proceeding.
DECISION
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <ucrregistration.com> domain name REMAIN WITH Respondent.
Kateryna Oliinyk, Panelist
Charles Kuechenmeister, Panelist
Dated: January 14, 2024
Alan L. Limbury, Panelist and Chair
Dated: January 14, 2024
[1] See UCR HANDBOOK Approved by the Board of Directors of the Unified Carrier Registration Plan
Effective August 11, 2022 accessible at https://prod-public-ucr-docs-governing-documents.s3.amazonaws.com/UCR%20Handbook%20081122.pdf
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page