WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Postman Inc. (formerly Postdot Technologies, Inc.) v. Levon Terteryan

Case No. D2018-2014

1. The Parties

Complainant is Postman Inc. of San Francisco, California, United States of America, represented by LegalForce R.A.P.C., United States of America.

Respondent is Levon Terteryan of Austin, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <postmancollections.com> (the “Domain Name”) is registered with Regtime Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2018. On September 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 6, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On September 7, 2018 the Center sent an email to the Parties in English and Russian in regard to the language of the proceedings. The Complainant filed an amended Complaint on September 12, 2018 and requested English to be the language of the proceedings. The Respondent sent informal email communications to the Center on September 15, 2018, September 23, 2018 and September 28, 2018.

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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2018. Respondent did not submit any response. Accordingly, the Center informed the Parties about the commencement of panel appointment process on October 19, 2018. The Center appointed Robert A. Badgley as the sole panelist in this matter on October 24, 2018. 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 sells “computer and cloud-computing software for developing, designing, visualizing, implementing, testing, adapting, monitoring and managing Application Programming Interfaces [API] and computer software development tools.” Complainant has used the marks POSTMAN and POSTMAN COLLECTIONS for these goods and services since 2012. In 2018, Complainant filed applications to register these marks with the United States Patent and Trademark Office.

Annexed to the Complaint are various examples of unsolicited press coverage concerning Complainant’s POSTMAN and POSTMAN COLLECTIONS goods and services. According to Complainant, it has more than 5 million users or developers for its products and services, including more than 100,000 companies that use Complainant’s POSTMAN software.

The Domain Name was registered on November 23, 2017. The Domain Name resolves to a website featuring the banner: “Biggest Library of Ready-made API Collections for Postman”. Below this banner, the site states: “Find hundreds of API collections that you can import to your Postman app with 1 click”. Respondent’s website also bears a hyperlink to another website allegedly operated by Respondent, at which latter site Respondent offers for sale various products and services which, according to Complainant, are in direct competition with Complainant’s POSTMAN goods and services.

On December 7, 2017, two weeks after registering the Domain Name, Respondent approached Complainant with a proposal for a “referral partnership” with Complainant. On December 20, 2017, Complainant advised Respondent that it was concerned about Respondent featuring Complainant’s intellectual property on Respondent’s website. That day, Respondent told Complainant that he had launched the website accessible via the Domain Name. Complainant objected to the website that day, and asked that certain content and logos be removed from the site. According to Complainant, Respondent promised to remove the offending content, but has never done so. On December 23, 2017, Respondent again proposed a “referral partnership” to Complainant whereby Respondent would receive a 20% referral commission.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The language of the Registration Agreement for the disputed domain names is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.

In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all the relevant circumstances.

The Complainant has submitted in its Complaint that the language of the proceedings be English. The Respondent stated in its communication in English dated September 23, 2018 that “the registrar is based in Russia and the Russian law has to be used as applicable law”.

The Panel finds there is sufficient evidence to suggest that the Respondent is conversant in English, as the webpage at the Domain Name and the communications from the Respondent are in English. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.

In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the 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) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the marks POSTMAN and POSTMAN COLLECTIONS through demonstrated use and evidence of consumer recognition in the record. The Domain Name is identical to the POSTMAN COLLECTIONS mark.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward in this proceeding to articulate or defend his bona fides vis-à-vis the Domain Name. It appears from the undisputed record in this case that Respondent unilaterally and opportunistically registered the Domain Name to siphon traffic destined for Complainant’s online business and capitalize on the renown of Complainant’s marks. Put another way, Respondent is essentially seeking to erect a toll booth on a road he does not own.

Complainant has established Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has 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 that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that 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; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online 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 Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel incorporates here its discussion above in the “rights or legitimate interests” section as a basis for finding bad faith, specifically, within the meaning of the above-quoted Policy paragraph 4(b)(iv). It is obvious that Respondent had Complainant’s marks in mind when registering the Domain Name, and sought either an unsolicited but lucrative business partnership with Complainant, or the diversion of Internet traffic to Respondent’s other commercial website.

Complainant has established Policy paragraph 4(a)(iii).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <postmancollections.com> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: October 31, 2018