WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
United Parcel Service of America, Inc. v. Shipping Administration
Case No. D2002-1162
1. The Parties
The Complainant is United Parcel Service of America, Inc of Atlanta, Georgia, United States of America ("UPS"), represented by King & Spalding of New York, New York, United States of America.
The Respondent is Shipping Administration, whose postal address is listed in Beverly Hills, California, United States of America, and whose technical contact is listed as YahooDomains TechContact of Sunnyvale, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <upsovernight.com> and <upspackages.com> are registered with Melbourne IT Limited of Melbourne, Victoria, Australia ("Melbourne IT").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 20, 2002. On December 24, 2002, the Center transmitted by email to "Melbourne IT trading as Internet Name Worldwide" a request for registrar verification in connection with the domain names at issue. On January 4, 2003, Melbourne IT transmitted by email to the Center its verification response confirming that the Respondent is listed as the current registrant for the domain names at issue and providing the contact details for the registered organization, as well as its administrative and technical contacts. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 7, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on January 29, 2003.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on February 4, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The undisputed facts are established by sworn affidavits of counsel Larry H. Tronco and of Elizabeth W. Calvert, Assistant Secretary of Complainant UPS, as well as by documents annexed to the Complaint.
Complainant UPS operates the worldís largest private package delivery and courier service. It has used the "UPS" mark in connection with this service since 1933. The United States registrations of the "UPS" mark under Reg. Nos. 966,774 and 1,752,464 (issued in 1973 and 1993, respectively) have become incontestable under 15 U.S.C. ßß 1065 and 1115. UPS has operated in Europe since 1976. The letters "UPS," a distinctive "Shield Device" in which the "UPS" mark is incorporated, and a variety of derivative trademarks, service marks, and service names (including "UPS.com" and "UPS Online") have been used in commerce in virtually every country in the world and are the subject of more than 2,000 current trademark registrations and pending applications by Complainant, in approximately 140 countries. Complainant has also registered "UPS" as a domain name in nearly every ccTLD in the world.
The UPS trade name and marks are well known and widely used. UPS employs over 370,000 people (of whom more than 25,000 work in Europe), delivers billions of packages annually, and posted revenues of US $30.6 billion in 2001. The UPS mark and Shield Device are prominently displayed on tens of thousands of delivery trucks, employee uniforms, shop fronts and shipping centers, as well as in widespread advertising campaigns for which UPS pays hundreds of millions of dollars annually.
By contrast, there is no evidence that Respondent, which registered the Domain Names in August 2002, engaged in any legitimate business whatsoever. The postal address included in its domain name registrations is in fact the address of the Crowne Plaza Hotel in Beverly Hills, California, whose owners have, through counsel, disclaimed any knowledge of Respondent. A screen shot of the <upsovernight.com> website (which is no longer available on the Web), displayed the "UPS" and "UPS and Shield Device" marks and advertised "Overnight Air Delivery in Europe since 1985." The website, which apparently consisted of only one page and was labeled "Under Construction," also referred to a "UPS Custody Express" service and asserted copyright and trademarks on behalf of "UPS Inc." UPS avers that it did not authorize such use of its marks or copyright by Respondent.
In 2002, a number of European consumers who purchased goods through auction websites such as <ebay.com> received e-mails from "custody service" or "admin" at one of the contested Domain Names, informing them that the goods had been deposited with "UPS Custody Express Service" and would be shipped to them after they wired payment of the purchase price via Western Union according to instructions to be provided by e-mail. The e-mails refer to "UPS France," "UPS UK," or "UPS Italy." The goods had not, in fact, been deposited with any UPS office. Worse, according to UPS (although it submitted no affidavits or other evidence to support this assertion), the consumers received neither the goods nor a refund of their money from Respondent. Redacted copies of three such e-mails using one of the Domain Names are attached to the Complaint.
5. Partiesí Contentions
UPS asserts ownership of the UPS mark and argues that the Domain Names confusingly incorporate that famous name in its entirety. UPS points out that there is no evidence that Respondent used the UPS mark at any time in a bona fide offering of goods or services, or that it operated a business known by either of the Domain Names. To the contrary, Respondent appears to have been using the familiar UPS mark simply to entice consumers to send payments to an account associated with neither UPS nor the vendor of the goods they had arranged to purchase. UPS concludes that Respondent has no right to use Domain Names that misleadingly incorporate Complainantís marks. Respondentís bad faith in registering the Domain Names is evidenced by the fraudulent scheme, the fictitious references to UPS offices in the e-mails, and the unauthorized use of the actual "UPS" and "UPS and Shield Device" marks on the website.
The Respondent has not replied to the Complainantís contentions or, indeed, to any of the notifications in this proceeding.
6. Discussion and Findings
The Panel will review the uncontested facts in light of the three criteria set forth in the Policy, paragraph 4(a): Complainant is entitled to transfer or cancellation of the disputed Domain Names if
(a) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights, and
(b) Respondent has no rights or legitimate interests in the Domain Names, and
(c) Respondent registered and used the Domain Names in bad faith.
As directed by paragraph 15(a) of the Rules, the Panel will base its decision on the statements and documents submitted (by Complainant alone, in this case), with reference to applicable rules and principles of law.
A. Identical or Confusingly Similar
Complainantís ownership of the "UPS" mark and trade name, in connection with package delivery and courier service, is undisputed in this proceeding. Complainant has adduced prima facie evidence to support its claim of ownership, i.e., its US Patent and Trademark Office registrations and affidavits referring to Complainantís global use of the mark and numerous registrations and applications in most of the worldís trademark jurisdictions.
In the Domain Names <upsovernight.com> and <upspackages.com>, the distinctive part of the name is "UPS," Complainantís mark, to which a non-distinctive, merely descriptive word is added. The added word, in each case, is closely associated with the package delivery and courier business of UPS, since UPS handles "packages" and provides "overnight" (as well as longer term) delivery services. The addition of such relevant descriptive words -- just what a customer of might expect to see in connection with UPS -- reinforces rather than detracts from the conclusion that each of the Domain Names confusingly refers to the business of UPS and would likely cause at least some customers to assume that the Domain Names were associated with UPS. See, e.g., Ermenegildo Zegna Corp., Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A.. v. Steven Shiekman, WIPO Case No. D2000-1375 (December 20, 2000) (<zegnasuit.com> found to be confusingly similar to the "Zegna" mark owned by a fashion design company, since consumers would indeed look for menís suits by Zegna and "may be induced in believing that ZEGNASUIT is a sector of activity, or specialized trademark of the Complainants"); The Coca-Cola Co. v. Gamlebyen Invest AS, WIPO Case No. D2000-1677 (February 14, 2001) (the domain name <cocacoladrinks.com> was confusingly similar to Coca-Colaís famous mark for soft drinks). See also General Electric Co. v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087 (May 2, 2001) (in trademark law, the user of a mark "may not avoid likely confusion by appropriating anotherís entire mark and adding descriptive or non-distinctive matter to it," quoting 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, ß 23:50 (4th ed. 1998)).
In addition, Respondent reproduced on its websites and e-mails the UPS mark alone, as well as the "UPS and Shield Device" and spurious references to "UPS Inc.," "UPS France," "UPS UK," "UPS Italy," "UPS Tracking Numbers," "UPS Waybills," and various real or fictional "UPS" branded services. This must be viewed as an endeavor to mislead customers into thinking that their goods were being held securely by the reputable shipper UPS and would be released to them on payment of the purchase price per instructions provided by Respondent, which had no arrangements with UPS -- and possibly not with the sellers of the goods who were supposed to receive the purchase money.
The Panel is compelled to conclude not only that the Domain Names are "confusingly similar" to Complainantís mark, but that the now-missing Respondent intended precisely such confusion.
B. Rights or Legitimate Interests
Respondent has not replied to any notifications or contentions in this proceeding, so it has not come forward with any evidence that it ever previously conducted a legitimate business under the names "upsovernight" or "upspackages," or was ever commonly known by these Domain Names, or made any legitimate noncommercial or fair use of either name. See the Policy, paragraph 4(c). The only instances on the record of Respondentís use of the Domain Names are in connection with what appears to be manifestly misleading and possibly criminal activity. There is no evidence that Respondent actually carried out a legitimate business by serving as an intermediary in the delivery of goods purchased in online auctions, and it clearly made efforts beyond the use of the Domain Names themselves to lead customers to believe that its websites and e-mails originated with Complainant UPS rather than some other business concern. See Justerini & Brooks Ltd v. "Colmenar", WIPO Case No. D2000-1308 (December 11, 2000) (given the distinctiveness and notoriety of complainantís name, it would not be chosen legitimately by another trader except to create a false impression).
This is not a case, then, of balancing the interests of competitors or other legitimate commercial parties, nor of recognizing a right to express parody or criticism. Rather, the only evidence brought to the attention of the Panel concerns an apparent attempt to mislead or defraud consumers, simply using the Complainantís famous name to give them a false sense of security so that they would wire money to Respondent as a purported intermediary. This cannot be deemed a legitimate interest in the UPS name. See The British Council v. Mr. Li Yen Chun, WIPO Case No. D2001-0997 (October 7, 2001) ("the inherent deceptiveness of the disputed domain name in the hands of the respondent or his client negates any possibility that the respondent has rights to or a legitimate interest in the disputed domain name").
C. Registered and Used in Bad Faith
Respondent registered the Domain Names in August 2002, long after Complainant established the "UPS" and "UPS and Shield Device" marks in commercial use and registered them in North America, Europe, and indeed throughout the world. Under the Policy (paragraph 4(b)(iv)), bad-faith registration and use may be indicated if the Panel concludes that the Respondent "intentionally attempted to attract, for commercial gain, Internet users to [its] web site" by creating a "likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site." There is evidence of such intent here, not only in the use of the UPS name with relevant descriptive additions, but also of Complainantís "UPS and Shield Device" symbol and in making multiple references in e-mails and at least one Web page to specific UPS offices, services, packaging, labels, and tracking numbers. Coincidence is beyond the pale of possibility; these Domain Names were registered as part of a scheme to mislead consumers into dealing with Respondent and possibly merely to defraud them.
Here, the websites are not the chief concern. The Domain Names seem to have been registered primarily so that Respondent could send Internet auction customers authentic-looking e-mails with what appeared to be a UPS-associated domain name. The only Web page in evidence is one that was marked "Under Construction," although it contained numerous references to UPS and to the "UPS Custody Express" service mentioned in the e-mails. In short, the Web "presence" was barely enough to lend credibility to the e-mails, which seem to have been the principal instrumentalities for contacting consumers and persuading them to wire money according to instructions provided by Respondent. The conclusion is inescapable that Respondent intentionally obtained these particular Domain Names in order to mislead not only website visitors but more especially the recipients of e-mails from these domains.
A similar case of bad faith is presented in Royal Bank of Canada v. Hattingh United Trade Group Paul Hattingh, WIPO Case No. D2001-0938 (September 18, 2001). There, as here, the principal use of the misleading domain name was for e-mail addresses used in what appeared to be an Internet fraud scheme. The Panel found that this constituted bad faith within the meaning of the Policy, paragraph 4(b)(iii) (disruption of the Complainantís business) as well as paragraph 4(b)(iv) (intentional confusion), a conclusion that fits the present case as well.
Respondentís bad faith might have been demonstrated with more concrete evidence of fraudulent or criminal activity, which Complainant asserts here by inference rather than proof. Affidavits from disappointed consumers, copies of police reports, or action taken by one of the auction sites would have better supported such assertions. However, for these proceedings it is not necessary to establish conclusively that Respondent lied to customers about holding the goods they had purchased or succeeded in obtaining money from consumers by fraud, which would surely amount to bad faith even if it is not listed among the non-exclusive illustrations of bad faith given in the Policy, paragraph 4(b). It is sufficient that Respondent attempted to pass itself off as UPS and lied to consumers when it stated that the goods they purchased had been consigned to UPS. Respondent intentionally misled those to whom it sent e-mails and those who visited its website. Whether Respondent was trying to supplant UPS in providing auction delivery services under false pretenses or, as seems more likely, simply trying to dupe consumers into sending Respondent payments that it had no intention of forwarding to the sellers, its employment of the Domain Names was intentionally misleading, disruptive, and illegitimate. Particularly in the absence of any alternative explanation by Respondent, its registration and use of the Domain Names must be held to be in bad faith.
Finally, the Panel finds support for its conclusion that Respondent acted in bad faith, as part of a short-term scheme to mislead and probably to defraud Internet auction customers, from the following facts: (a) Respondent registered the Domain Names using only third-party contacts and a false physical address (which is actually the location of a hotel in Beverly Hills, California that denies all knowledge of Respondent) and (b) Respondent has not replied to any electronic or postal notifications in this proceeding, nor to Complainantís earlier cease-and-desist correspondence. Its failure to provide or maintain accurate contact information and to respond to serious charges of infringement and potentially criminal activity is consistent with Respondentís profligate and misleading use of names, symbols, terms, and services associated with a well-established company Ė all evidence of bad faith in the registration and use of these Domain Names.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <upspackages.com> and <upsovernight.com> be transferred to the Complainant.
W. Scott Blackmer
Dated: February 17, 2003