WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
United Parcel Service of America, Inc. v. Michael Robert
Case No. D2008-0339
1. The Parties
Complainant is United Parcel Service of America, Inc., Atlanta, Georgia, United States of America, represented by King & Spalding, United States of America.
Respondent is Michael Robert, Lawrenceville Georgia, United States of America.
2. The Domain Name and Registrar
The disputed domain name <wwwups.org> (“Domain Name”) is registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2008, naming the Respondent as Steve Kerry. On March 7, 2008, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On March 12, 2008, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that Respondent Michael Robert is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on March 18, 2008, naming the Respondent as Michael Robert. The Center verified that the Complaint together with the amendment to 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 both the Respondent and Steve Kerry of the Complaint, and the proceedings commenced on March 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 8, 2008.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on April 15, 2008. 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
Complainant United Parcel Service of America, Inc., commonly referred to by the acronym UPS, is engaged in the business of transporting personal property by various modes of transportation. Complainant has used the name and mark UPS since 1933, and used the names and marks UPS and UPS.com and the color brown in connection with its products and services for many years prior to the registration of the Domain Name.
Complainant owns a number of registrations on the Principal Register of the United States Patent and Trademark Office of its marks, including the following:
UPS; Reg. No. 966,774; Reg. Date 8/21/73; Transportation of personal property for hire by diverse modes of transportation;
UPS; Reg. No. 1,752,464; Reg. Date 2/16/93; Packaging materials including paper, bags, labels, boxes, etc.;
UPS; Reg. No. 2,515,652; Reg. Date 12/4/01; Secure delivery and management of electronic information via a global computer network;
UPS; Reg. No. 2,520,558; Reg. Date 12/18/01; Software for use in preparing and printing shipping documents and invoices and tracking the shipped packages;
UPS.COM; Reg. No. 2,483,193; Reg. Date 8/28/01; Software for use in connection with worldwide pick up, tracing and delivery of personal property by various means;
UPS.COM; Reg. No. 2,496,805; Reg. Date 10/9/01; Electronic communication services, including electronic transmission of messages;
The color BROWN, Reg. No. 2,131,693; Reg. Date 1/27/98; for use on motor vehicle transportation and delivery of personal property;
The color BROWN, Reg. No. 2,901,090; Reg. Date 11/9/04; for use in transportation and delivery of personal property by air and motor vehicle.
Complainant registered the domain name <ups.com> in April 1992 and uses that web site to promote its services worldwide.
The Domain Name, <wwwups.org>, was registered on March 14, 2005, presumably by Steve Kerry.
5. Parties’ Contentions
Complainant originally filed its Complaint in this case on March 5, 2008, naming Steve Kerry as the registrant of the Domain Name and sole respondent, based on a WhoIs search Complainant made on January 25, 2008. By the time the Registrar responded to the Center’s request for Registrar verification on March 12, 2008, the Registrar identified the Domain Name registrant as Michael Robert. An online WhoIs search made by Complainant on March 14, 2008, indicated that the Domain Name registration record had last been updated on March 12, 2008, the same date as the Registrar’s verification. Complainant then filed an amended Complaint naming Michael Robert as the Respondent. Complainant contends that the change of registrant was not made in good faith and is in fact evidence of bad faith.
Complainant contends that it has legal rights in the marks UPS, UPS.COM and in the color BROWN by reason of its registration of those marks in the United States and many other countries and that the validity of those marks has become incontestable in the United States under 15 U.S.C. §§ 1065 and 1115. As a result of its longtime use and promotion of its marks, Complainant further contends that its marks have acquired special and particular significance and very valuable goodwill such that Complainant has acquired common law rights in the marks.
Complainant contends that as a result of its long use, widespread advertising and large volume of sales, the UPS mark has become well-recognized and famous in the United States of America and abroad, and that the marks represent goodwill of extraordinary value.
Complainant contends that the Domain Name is confusingly similar to its UPS marks. The Domain contains the entire UPS mark preceded by the letters “www”. This, Complainant contends, creates a strong likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s Domain Name and website by Complainant. The addition of the letters “www” and the top level domain “.org” do not negate the confusing similarity.
Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the name “UPS”. First, there is no evidence that Respondent used or was preparing to use the Domain Name in connection with a bona fide offering of goods or services. Rather, Respondent used the Domain Name to mislead and confuse the public by diverting Complainant’s consumers to Respondent’s web site, which contained links to various other shipping service businesses, for commercial purposes, which is not a legitimate use or considered to be a bona fide offering of goods or services in accordance with Paragraph 4(c) of the Policy.
Second, Complainant has never been known by the Domain Name or conducted business under the Domain Name.
Third, Complainant contends that Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Respondent is clearly using the Domain Name to deceive and confuse the public for the sole purpose of commercial gain, which tarnishes the trademark and constitutes a commercial use.
Bad Faith Registration and Use
Complaint contends that Respondent registered and is using the Domain Name in bad faith, as evidenced by several factors. The UPS trademark is exceptionally famous and far predates any of Respondent’s activity. The trademark is in fact so famous that Respondent must have been aware of it when selecting the <wwwups.org> domain.
The Domain Name redirects Internet users to websites containing services competing with Complainant, thus disrupting Complainant’s business under Paragraph 4(b)(iii) of the Policy.
Complainant contends that Respondent has intentionally attempted to attract, for commercial gain, Internet users to the disputed website by creating a likelihood of confusion with Complainant’s mark, which constitutes bad faith under Paragraph4(b)(iv) of the Policy. Respondent’s apparent purpose is to profit from the goodwill associated with Complainant’s UPS marks. The use of a trademark by an unlicensed party as all or part of a domain name with the intention of misleading or deceiving consumers constitutes bad faith and may subject the party to equitable and monetary remedies for trademark infringement, false designation of origin, dilution, and or violates the Anticybersquatting Consumer Protection Act.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Respondent did not respond to the Complaint, therefore the Panel considers whether Respondent has been given adequate notice of the proceeding. The evidence indicates the Center sent the Complaint in electronic form and in hard copy by courier service to both Respondent Michael Robert and to Steve Kerry, the originally named Respondent, at the addresses provided in Respondent’s registration information and Mr. Kerry’s registration information, respectively. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding. Neither Respondent Michael Robert, nor Steve Kerry filed a response to the Complaint.
Where a respondent does not respond to the complaint, the panel must decide the dispute based upon the complaint, Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable, Rules, paragraph 15(a). Under Rules, paragraph 14(b), Respondent’s failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate”.
Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:
(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent’s Domain Name was registered and is being used in bad faith.
The Panel considers each element in order.
A. Identical or Confusingly Similar
Complainant clearly owns legal rights in the trademarks UPS and UPS.com by reason of their registration in the United States of America and Complainant’s longstanding and extensive use of the marks in commerce in the United States and worldwide. The Panel finds, moreover that the UPS mark is so well and widely known in connection with the transportation of goods as to be deemed “famous” in the trademark sense.
The Domain Name, while not identical to Complainant’s UPS mark is confusingly similar to it. The Domain Name, first of all, incorporates the famous UPS mark in its entirety, an indicator of likely confusion.
The Domain Name is not identical to Complainant’s mark in that Respondent adds to the mark the letters “www”. This does not suffice to negate confusing similarity. In general, “[A] user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 2005). See General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Eastman Chemical Company. v. Manila Industries, Inc., NAF Case No. 450806; Pioneer Hi-Bred International, Inc. v. Manila Industries, Inc., NAF Case No. 444468. In this case, the use of the letters “www”, generally signifying and used to obtain access to the Worldwide Web, is a generic code used by virtually all Internet users to access most domain names and websites on the Web and cannot serve to distinguish the Domain Name from Complainant’s trademark. This is essentially a form of typosquatting in which Respondent attempts to rely upon the Internet user’s potential error in leaving out a dot after “www” to divert the user to a website that appears to be sponsored by or affiliated with Complainant but which is not.
Respondent’s use of the letters “www” and the top level domain, “.org” do not serve to distinguish the Domain Name from Complainant’s famous trademark, which forms the dominant part of the Domain Name, and the Domain Name is thus confusingly similar to Complainant’s mark.
Complainant has established the first element of its case.
B. Rights or Legitimate Interests
Complainant must show that Respondent has no rights or legitimate interests in the Domain Name. Here Complainant makes a sufficient prima facie case that Respondent possesses no rights or legitimate interests in the Domain Name.
There is no evidence that Respondent has ever been known by the Domain Name or has ever done business under the name “wwwups”.
The evidence further shows that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. The evidence on record demonstrates that Respondent, and the previous registrant before him, Steve Kerry, used the UPS marks as part of the Domain Name to divert Internet traffic intended for Complainant to a website which appeared to be affiliated with Complainant but which, in fact, provided advertising links to unrelated providers of goods and services, some of which compete with Complainant. Respondent presumably earns revenues from the website at the Domain Name when Internet users click on sponsored advertising links. Respondent is thus creating a false impression of association or sponsorship between Complainant and Respondent’s website which is deceptive to the Internet user and harmful to Complainant’s reputation and goodwill. This does not constitute a bona fide offering of goods or services by Respondent. See Dart Industries Inc. v. Leslie Rubin, supra; Sanrio Company Ltd v. Neric Lau, WIPO Case No. D2000-0172 (interests in the domain name not legitimate where there is no authorized association with trademark owner); Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The foregoing further demonstrates that this is not a case of noncommercial or fair use of the Domain Name.
Respondent, in default, has not come forward to offer evidence that he possesses rights or legitimate interests in the Domain Name.
The Panel thus concludes that he has none and that Complainant has established the second element of its case.
C. Registered and Used in Bad Faith
Complainant must demonstrate that Respondent both registered and is using the Domain Name in bad faith.
The registration of a domain name that is confusingly similar to a famous trademark by a person who has no relationship to that mark may in itself constitute sufficient evidence of bad faith registration and use. Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489, 498 (2d Cir. 2000); Pepperdine University v. BDC Partners, Inc., WIPO Case No. D2006-1003; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith). Complainant’s famous UPS trademark clearly was used in registering the Domain Name by someone who has no apparent relationship to Complainant or the mark.
Similarly, a number of UDRP panels have found bad faith registration where it was clear that the respondent had actual or constructive knowledge of the complainant’s mark and intentionally registered a confusingly similar domain name. Waterman, S.A.S. v. Brian Art, WIPO Case No. D2005-0340 (finding bad faith registration and noting that complainant’s mark was well-known); Microsoft Corporation v. Party Night, Inc. d/b/a/ Peter Carrington, WIPO Case No. D2003-0501 (“It is not reasonable to expect the [r]espondent to register the disputed Domain Names if the [r]espondent had no knowledge of the [c]omplainant’s trademark and services in connection thereto”). Prior UDRP panels have held that actual or constructive knowledge of complainant’s rights in trademarks is a factor indicating bad faith registration. Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551; The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038. The Domain Name was clearly registered with actual knowledge of Complainant’s famous trademark.
The Panel finds that the record does not support Complainant’s claim under Paragraph 4(b)(iii) of the Policy, which requires proof that Respondent registered the Domain Name “primarily for the purpose of disrupting the business of a competitor”. There is no proof that either Steve Kerry or Respondent is a competitor of Complainant and thus no proof of a primary purpose to disrupt a competitor’s business.
Nevertheless, the Panel concludes that the initial registration of the Domain Name was in bad faith. The registrant clearly had knowledge of Complainant’s famous UPS trademark and chose to incorporate it into the Domain Name for the purpose of exploiting Complainant’s goodwill in the mark and confusing Internet users seeking information about Complainant’s services.
The fact that Respondent did not initially register the Domain Name does not avoid a determination against him of bad faith registration. On the record before the Panel, there is a reasonable inference that the previous registrant, Steve Kerry, transferred the Domain Name to Respondent after receiving communications from Complainant’s counsel and very likely after receiving the original Complaint in this matter. Respondent likely knew that a Complaint had been filed or at least that the Domain Name he was accepting contained the famous trademark belonging to Complainant. In any event, Respondent certainly has not come forward to dispute Complainant’s quite plausible contention that the change in registration was itself made in bad faith.
Under the circumstances, the bad faith underlying the original registration is properly imputed to the recipient of domain name in question. If this were not the case, unscrupulous parties could easily subvert the purpose and provisions of the Policy by transferring domain names to third persons in anticipation of a case being brought and have the third party nominally refrain from engaging in bad faith use while the case was pending thereby possibly avoiding a finding of bad faith registration and/or use. The Panel concludes that the bad faith involved in the original registration of the Domain Name should be imputed to Respondent. In any event, the Panel would have little hesitation in concluding that Respondent was or should have been aware of Complainant’s well-known mark at the time of acquisition of the Domain Name in question, even if it had been genuinely acquired on an arms-length basis. This result is particularly appropriate here where the Domain Name uses such a famous mark as UPS and where, as discussed below, the recipient of the transfer continues to use the mark in bad faith.
With regard to bad faith use, the Policy provides that bad faith exists, inter alia, where the respondent “has intentionally attempted to attract, for commercial gain, Internet users to [its] website . . . by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on their website or location”. Policy, paragraph 4(b)(iv). This appears to be what Respondent is doing here. Respondent is using Complainant’s UPS mark, trading on its goodwill, to attract and divert Internet users to a webpage by creating a false impression that the site is affiliated with or sponsored by Complainant. The fact that the webpage contains advertising links, from which Respondent likely benefits or seeks to benefit financially supports the inference that the purpose of Respondent’s diversion of traffic from Complainant to himself is for Respondent’s own commercial gain. See Ticketmaster Corporation v. Yong Li, WIPO Case No. D2003-0905; Costco Wholesale Membership, Inc., Costco Wholesale Corporation v. Henry Chan, WIPO Case No. D2004-0218; Scholastic, Inc. v. Applied Software Solutions, Inc., WIPO Case No. D2000-1629. The Panel finds bad faith use of the Domain Name under Policy, paragraph 4(b)(iv).
The Panel finds it unnecessary to consider the remainder of Complainant’s contentions as to Respondent’s bad faith.
Complainant has established bad faith registration and use of the Domain Name, the third and final element of its case, under the Policy, paragraph 4(a)(iii).
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 name <wwwups.org> be transferred to Complainant.
John R. Keys, Jr.
Dated: April 29, 2008