Complainant is United Parcel Service of America, Inc. of Atlanta, Georgia, United States of America, represented by King & Spalding, LLP, United States of America.
Respondent is upsgroundmap.com of Roatan, The Bay Islands, Honduras.
The disputed domain name <upsgroundmap.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2008 electronically and on December 22, 2008 by hardcopy. On December 18, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 18, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on December 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 13, 2009.
The Center appointed Torsten Bettinger as the sole panelist in this matter on January 27, 2009. 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.
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 in connection with its products and services for many years prior to the registration of the disputed domain name on July 8, 2008.
Complainant owns a number of trademark registrations protecting the mark UPS in numerous countries worldwide, inter alia,
- US trademark No. 966,774 UPS with priority of August 21, 1973;
- US trademark No. 3,054,957 UPS GROUNDTRAC with priority of January 31, 2006;
- Honduran trademark No. 5188 UPS with priority of March 16, 1999;
- Honduran trademark No. 5288 UPS with priority of May 7, 1999;
- Honduran trademark No. 5180 UPS with priority of March 8, 1999; and
- Honduran trademark No. 810 UPS with priority of May 23, 1989. The trademarks mainly cover Complainant's transportation services.
Respondent directs the disputed domain name to a webpage that substantially copies the content of Complainant's website at “http://www.ups.com/maps”.
Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, Complainant argues that the disputed domain name is confusingly similar to its UPS marks as it includes the UPS mark and that Respondent's inclusion of the trademark UPS in the domain name creates a strong likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent's domain name and Complainant's website. Furthermore, Complainant contends that the mere addition of the words “ground” and “map” does not alter the fact that the domain name is confusingly similar to the mark UPS.
In reference to the element in paragraph 4(a)(ii) of the Policy, Complainant contends that none of the situations described in paragraph 4(c) of the Policy can be established in this case. Complainant states that
- Respondent has no rights or legitimate interests in the name UPS;
- there is no evidence for Respondent's use or preparations to use the disputed domain name in connection with a bona fide offering of goods or services;
- Respondent's use of the disputed domain name to point to Complainant's website constitutes commercial activity but does not constitute a legitimate use;
- Respondent is not commonly known by the disputed domain name; and
- Respondent's use of the domain name is neither noncommercial nor fair.
In reference to the element in paragraph 4(a)(iii) of the Policy, Complainant asserts that
- the trademark UPS is exceptionally famous and Respondent must have been aware of it when selecting the disputed domain name;
- the disputed domain name redirects Internet users to Complainant's own website in an attempt to garner Complainant's attention to purchase the domain name for Respondent's financial gain by disrupting Complainant's business; and
- the disputed domain name was registered to confuse and deceive the public into believing that the domain name is associated with the goods and services available from Complainant's website so as to divert potential consumers to Respondent's activity in an attempt to defraud members of the public.
Respondent did not reply to Complainant's contentions.
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah‚ WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327; BWT Brands, Inc. and British American Tobacco (Brands), Inc. v. NABR, WIPO Case No. D2001-1480; and Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).
The disputed domain name wholly incorporates Complainant's distinctive and well-known trademark UPS, which is used in connection with transportation services. The fact that the words “ground” and “map” are added to Complainant's trademark does not eliminate the confusing similarity between Complainant's trademark and the disputed domain name, as “ground map” is a descriptive component of the disputed domain name which refers the “ground map” which is available at Complainant's website. In numerous cases, it has been held that a domain name that wholly incorporates a complainant's registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words to such marks (see Sony Kabushiki Kaisha also trading as Sony Corporation and Sony Computer Entertainment Inc. v. Salvatore Vetro, WIPO Case No. D2001-0575).
It is also well established that the specific top level of a domain name such as “.com”, “.org”, or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).
The Panel thus finds that the disputed domain name is confusingly similar to the trademark in which Complainant has exclusive rights and that Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy requires Complainant to prove that Respondent has no rights or legitimate interests in the disputed domain name. However, it is consensus view among UDRP panelists that if a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack rights or legitimate interests in the domain name.
Complainant asserted, inter alia, that Respondent has neither a license nor any other permission to use Complainant's trademark UPS. The Panel thus finds that Complainant has made a prima facie case showing that Respondent has no rights or legitimate interests in the disputed domain name which wholly incorporates Complainant's distinctive and well-known trademark UPS.
Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
Respondent directs a domain name which incorporates Complainant's trademark UPS in its entirety to a webpage that substantially copies the content of Complainant's website at “http://www.ups.com/maps” which contains information on United States Ground Maps and provides United States maps illustrating the number of transit days for delivery via UPS ground services. Such use of the disputed domain name leads the public to the false assumption that the domain name is used by Complainant to provide what would appear to be direct access to Complainant's website at “http://www.ups.com/maps” but does not establish Respondent's right or legitimate interest in the disputed domain name.
Under these circumstances, the Panel takes the view that Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.
The Panel is also convinced that Respondent registered and used the disputed domain name in bad faith.
Complainant's distinctive trademark UPS is widely known. Respondent is directing a domain name which incorporates Complainant's trademark in its entirety to a webpage that substantially copies the content of Complainant's website at “http://www.ups.com/maps” which contains information on United States Ground Maps illustrating Complainant's UPS ground services. It is therefore inconceivable that Respondent registered the domain name unaware of Complainant's rights in its UPS marks.
Respondent has no connection with Complainant and has not provided any evidence that he has the intention of using the domain names in connection with the bona fide offering of goods or services and, indeed, any such use would clearly be in bad faith given the Complainant's rights. As any use of the domain name except to refer to the Complainant's site would cause confusion, the Panel is convinced that Respondent's motives in effecting and maintaining this registration is to create Internet traffic with the disputed domain name and, ultimately, to use the domain name to siphon profits from the domain name which is clearly associated with the Complainant's mark. Such use of the domain name is evidence of bad faith registration and use pursuant to the Policy.
Moreover, Respondent's default in this proceeding reinforces an inference of bad faith. If Respondent had arguments that it acquired the domain name in good faith, and had good faith bases for using the domain name, it should have asserted them.
Accordingly, the Panel concludes that Respondent registered and uses the disputed domain name in bad faith and that the requirement of paragraph 4(a)(iii) of the Policy has been met.
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 <upsgroundmap.com> be transferred to Complainant.
Dated: February 11, 2009