WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
United Parcel Service of America Inc. v. Luanfei
Case No. D2010-0965
1. The Parties
The Complainant is United Parcel Service of America Inc. of Atlanta, Georgia, United States of America, represented by King & Spalding, United States of America.
The Respondent is Luanfei of Qingdao, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <qdups.com> (the “Disputed Domain Name) is registered with Xin Net Technology Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2010. On June 14, 2010, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the Disputed Domain Name. On June 17, 2010, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 17, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On the same day, the Complainant confirmed its request provided in the Complaint that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. 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 the Respondent of the Complaint, and the proceedings commenced on June 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2010.
The Center appointed Kar Liang Soh as the sole panelist in this matter on July 20, 2010. 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.
On August 4, 2010, the Panel issued Procedural Order No. 1 directing the parties to provide further comments and supporting documents in relation to certain parts of the Complaint. The Complainant submitted a Response to the Order on August 5, 2010. The Respondent did not respond to the order.
4. Factual Background
The Complainant is based in the United States and is among the world’s largest package delivery companies. The Complainant provides specialized transportation and logistics services throughout the world.
The Complainant has been using the trademark UPS in relation to its products and services since 1933. It has registered the trademark UPS in over 190 countries around the world. Trademark registrations incorporating the word UPS include:
Mark Jurisdiction Registration No. Registration Date
UPS Device United States 735,064 July 24, 1962
UPS United States 996,774 August 21, 1973
UPS.COM United States 2,483,193 August 28, 2001
UPS Device United States 2,867,999 July 27, 2004
UPS China 512770 February 20, 1990
UPS.COM China 1459972 October 14, 2000
UPS Device China 3501517 August 21, 2004
The Complainant also holds and uses the domain name <ups.com> from as early as 1992. The Complainant has spent millions of dollars advertising and promoting the trademark UPS and sold hundreds of millions of dollars worth of products and services under the trademark UPS throughout the world. The website resolved from the <ups.com> is an important part of the Complainant’s marketing program and is used to promote the Complainant’s trademark UPS in relation to its products and services worldwide. The website is one of the most frequently visited websites in the world and tens of millions of visitors every day.
The trademark UPS has been recognized as a well-known mark by previous panels (see United Parcel Service of America, Inc. v. Michael Robert, WIPO Case No. D2008-0339; United Parcel Service of America, Inc. v. upsgroundmap.com, WIPO Case No. D2008-1925; United Parcel Service of America, Inc. v. Xuelin Bei, WIPO Case No. D2009-0811).
The Disputed Domain Name was registered on March 11, 2010, many years after the registrations for the trademark UPS. There is very little information about the Respondent beyond what is found on the WhoIs record of the Disputed Domain Name and the website resolved from the Disputed Domain Name. In particular, the top-left corner of the homepage of the website identifies to a company 青岛UPS国际快递有限公司 beside a prominent representation of the UPS Device which resembles the Complainant’s United States registration 2,867,999 and China registration 3501517. The same company name is also configured to appear in the title of browsers used to view the website. The letter combination “ups” is also used throughout the textual elements of the website without the prefix “qd”. The Panel is unable to find any use of the letter combination “qdups” anywhere on the website (other than as the Disputed Domain Name). The trademarks of competitors of the Complainant are also featured prominently on the website.
The Complainant wrote a cease and desist letter to Limestone Networks, Inc, the Internet Service Provider of the website based in Dallas, United States, requiring that the Respondent’s website be disabled. The website was disabled but subsequently reactivated. The website was deactivated and reactivated again after follow-up communications were sent to Limestone Networks, Inc. No communication was ever received by the Complainant from the Respondent in reaction to the cease and desist letters and the deactivation of the website.
5. Parties’ Contentions
The Complainant contends that:
1) The Disputed Domain Name is confusingly similar to the Complainant’s trademark UPS. The prefix “qd” in the Disputed Domain Name is a descriptive and non-distinctive acronym for the city of Qingdao and confuses consumers that the Disputed Domain Name or the Respondent is connected or affiliated with the Complainant in the city of Qingdao when no such connection exists;
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant has no relationship, connection or affiliation with the Respondent or the Respondent’s website. The Respondent has not received any license or express authorization to use the Complainant’s trademark UPS. The Respondent is not known by the Disputed Domain Name. The Respondent is not conducting any legitimate business under the Disputed Domain Name.
3) The Disputed Domain Name was registered and is being used in bad faith. The trademark UPS is a well-known mark. The Respondent must have been aware of the trademark UPS when selecting the Disputed Domain Name. The use of the Disputed Domain Name together with the use of the trademark UPS on the website resolved therefrom are an attempt to profit off the goodwill and trademark of the Complainant. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark UPS.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The default language of the proceeding is Chinese. However, in view of the Complainant’s request for the language of the proceeding to be English, the Panel hereby determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding. In making this determination, the Panel has taken to consideration the following factors with a view to achieving fairness to the parties and procedural cost-efficiency and expedition:
(1) The Complaint is submitted in English. It would be time-consuming and cost-intensive to require the Complainant to provide a Chinese translation of the Complaint;
(2) All of the Center’s communications have been transmitted to the parties in English and Chinese;
(3) The Respondent having full knowledge of the proceeding and its import, and having been given ample opportunity to object, has chosen not to participate in the proceeding and/or contest the language of the proceeding; and
(4) Insisting that Chinese be the language of the proceeding in the circumstances will serve no discernible purpose or benefit.
Paragraph 4(a) of the Policy requires the following to be established in order for the Complainant to succeed in this proceeding:
(1) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) The Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the trademark UPS in view of the trademark registrations. The Disputed Domain Name incorporates the entirety of the Complainant’s trademark UPS, the only difference being the prefix “qd”.
At this point, it is appropriate to consider the principle enunciated by past panels that when comparing a trademark and a domain name for confusing similarity, the content of the website resolved from the domain name is irrelevant insofar as the content shows whether the respondent’s activities are similar or different to the business of the trademark owner is an irrelevant consideration (see Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698). The rationale is sound. A trademark for which registration is sought in relation to certain goods or services may not be refused registration for being confusingly similar to another trademark which it closely resembles if that other trademark relates to different goods or services. It is important to distinguish such comparison of trademarks for purposes of trademark registration from the comparison of a domain name and a trademark under the Policy. Confusing similarity under the first element of the Policy is a simple comparison between the relevant domain name and the trademark and should not be clouded by any comparison between the goods or services to which the trademark relates and the content of the website under the domain name.
However, it should be borne in mind that the principle does not forbid review of the content of the website resolved from a domain name when comparing the domain name with a trademark. In fact, the appropriate circumstances may make it crucial to do so. For instance, where the content of the website is able to reveal context and motivations for the selection of the domain name, the panel should review to the website.
The Panel is of the view that the present case is such an instance and finds it appropriate and convenient to record the following observations:
(1) The Panel agrees with the past panels in (United Parcel Service of America, Inc. v. Michael Robert, supra; United Parcel Service of America, Inc. v. upsgroundmap.com, supra; United Parcel Service of America, Inc. v. Xuelin Bei, supra) that the trademark UPS is well-known and commonly referred to as a sequence of letters “u-p-s”;
(2) On the face, the selection of the Disputed Domain Name by the Respondent appears innocuous. In the absence of a context, one may vacillate between referring to it as a sequence of letters “q-d-u-p-s” and pronouncing it as a word. However, once the context is revealed by the website resolved from the Disputed Domain Name, it is immediately apparent that the Disputed Domain Name is engineered and intended to be referred to as a sequence of letters “q-d-u-p-s”;
(3) The letters “qdups” do not exist within the content of the website. What features prominently is the combination 青岛UPS国际快递有限公司 next to the device version of the Complainant’s trademark UPS;
(4) The Complainant’s trademark UPS is also used throughout the content of the website. To any reasonable person, the association between the Complainant’s trademark UPS and the company青岛UPS国际快递有限公司 is unmistakable; and
(5) The name “青岛UPS国际快递有限公司” is literally translated in English to “Qingdao UPS International Express Delivery Limited Company”. The letters “qd” is obviously the acronym for “Qingdao”. A Google search on the string “qd qingdao" shows that “qd” is a very common acronym in domain names associated with companies in Qingdao, China, or having the word “qingdao” in their names.
Having appreciated the context for the selection of the Disputed Domain Name, the Panel is convinced that the letters “qd” is a prefix to the letters “ups” intended as an acronym and reference to the geographical location of Qingdao, China.
In any event, a domain name which incorporates a trademark in its entirety with the addition of generic and non-distinctive prefixes and/or suffixes is regarded by many past panels to be confusingly similar to the trademark. In particular, the addition of letter codes for geographical locations as prefixes and/or suffixes also does not generally serve to distinguish the domain name from the trademark (e.g., Vibram S.p.A. v. Peng Zhen, WIPO Case No. D2010-0952; Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing, WIPO Case No. D2010-0746; Birkenstock Orthopädie GmbH & Co. KG v. ugg outlets, WIPO Case No. D2010-0771).
The Disputed Domain Name incorporates the entirety of the Complainant’s trademark UPS. Furthermore, the Complainant’s trademark UPS relates to package delivery services, the Respondent’s website also offers package delivery services, and the content of the website resolved from the Disputed Domain Name confirms the intended purpose and meaning of the prefix “qd” is to associate the Respondent with the Complainant’s trademark UPS in relation to the city of Qingdao. In any event, the prefix “qd” is clearly descriptive, non-distinctive, and, on a direct comparison, encourages confusion between the Disputed Domain Name and the Complainant’s trademark UPS, and is confusingly similar as such.
The first limb of paragraph 4(a) is accordingly satisfied.
B. Rights or Legitimate Interests
The consensus view developed by past panels is that a complainant needs only show a prima facie case that a respondent does not have rights or legitimate interests in a disputed domain name. The respondent then has to rebut the prima facie case.
The Complainant has already shown that it owns the trademark UPS. The Complainant further confirmed that it has no relationship with the Respondent and the Respondent has not received any license or authorization to register or use the Disputed Domain Name. In the absence of any explanation, the generous use of the Complainant’s trademark UPS on the Respondent’s website in association with package delivery services cannot be disregarded as mere coincidence. The Respondent is also not commonly known by the Disputed Domain Name. The Respondent has clearly aware of and must have deliberately adopted the Complainant’s trademark UPS.
The failure to respond to the strong allegations in the Complaint regarding the Respondent and the apparent indifference exhibited by the Respondent towards the disruption to the website resolved from the Disputed Domain Name caused by the Respondent’s communication with Limestone Network, Inc, strongly suggests that the Respondent has no interest in the Disputed Domain Name.
In the circumstances, the Panel concludes prima facie that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Since no Response was filed, the prima facie conclusion is not rebutted and the second limb of paragraph 4(a) is established.
C. Registered and Used in Bad Faith
The Panel has already held the Complainant’s trademark UPS to be well-known. The Panel has also found above that the Respondent consciously and deliberately adopted the Complainant’s trademark UPS in the Disputed Domain Name and is using the Disputed Domain Name to associate the Respondent’s website and services with the Complainant’s trademark UPS. The Respondent’s website is clearly targeted at attracting Internet users, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of products on the website. The circumstances reflect the opportunistic bad faith registration and use described by past panels (e.g., Vibram S.p.A. v. Peng Zhen, supra; Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing, supra, etc.).
In the circumstances, the Panel determines that the third limb of paragraph 4(a) is also established.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <qdups.com> be transferred to the Complainant.
Kar Liang SohSole PanelistDated: August 18, 2010