WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
United Parcel Service of America Inc. v. Gary Selesko, M&B Relocation and Referral, LLC
Case No. D2013-1555
1. The Parties
Complainant is United Parcel Service of America Inc. of Atlanta, Georgia, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States.
Respondent is Gary Selesko, M&B Relocation and Referral, LLC, of Ann Arbor, Michigan, United States of America, self-represented.
2. The Domain Name and Registrar
The disputed domain name <driveups.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2013. On September 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 2013, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on September 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2013. The Response was filed with the Center on September 12, 2013.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on October 17, 2013. 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 operates a worldwide package delivery company providing specialized transportation and logistics services. Complainant owns multiple United States trademarks and service marks for UPS and combinations of UPS and terms related to Complainant’s business. Complainant also owns multiple registrations for the UPS mark in various jurisdictions worldwide. Complaint operates a website at “www.ups.com” and owns multiple additional domain names incorporating the UPS mark.
Respondent acquired the disputed domain name <driveups.com> on February 5, 2013. Respondent has not created a website for the domain name but has instead used the default setting provided by his web-host. In so doing, the <driveups.com> domain name has hosted a pay-per-click website from which Respondent has derived minimal profit. Respondent contacted Complainant on February 13, 2013 and August 23, 2013 offering to sell the disputed domain name.
5. Parties’ Contentions
Complainant asserts that the disputed domain name is confusingly similar to Complainant’s famous UPS mark. Specifically, Complainant asserts that the disputed domain name is nearly identical to the UPS mark and incorporates the UPS mark in its entirety. Complainant further argues that use of Complainant’s UPS mark with the descriptive word “drive” does not dispel the likelihood of confusion, and actually exacerbates the likelihood of confusion for Internet users seeking information related to UPS’s delivery drivers or career opportunities as drivers for UPS.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name and instead, in light of the fame of Complainant’s mark, is acting with opportunistic bad faith. Complainant points to the extensive use by Complainant of its UPS mark years prior to Respondent’s acquisition and use of the disputed domain name. Complainant asserts that Respondent has no relationship with UPS and has no license, permission, or other authority to use the UPS mark. Complainant notes that a simple Internet search reveals the existence of UPS’s delivery company and related trademark use. Complainant asserts that Respondent has made no preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Rather, Complainant points to Respondent’s attempts to sell the disputed domain name to Complainant as evidence of Respondent’s intent to profit from selling the domain to UPS and not for any bona fide purpose.
Complainant asserts that Respondent acquired and used the disputed domain in bad faith. Complainant asserts that bad faith acquisition of a domain name is sufficient to satisfy the requirement of bad faith registration. Complainant also notes Respondent’s two attempts to sell the disputed domain name to Complainant for an amount in excess of out-of-pocket expense related to registration of the domain name. Complainant further argues that the fame of its marks and the likelihood of a mistaken connection or association with UPS support a finding of bad faith on the part of Respondent. Complainant further asserts that Respondent has allowed a click-through revenue portal to be placed at the disputed domain name that provides links to third-party websites concerning products and services competing with UPS. Complainant further notes as evidence of Respondent’s bad faith that Respondent has registered and owns numerous domain names that incorporate other well-known trademarks.
Respondent requests that the Panel deny the remedies requested and enter a finding of Reverse Domain Name Hijacking against Complainant.
Respondent asserts that the disputed domain name is not identical or confusingly similar to Complainant’s UPS marks. Respondent requests a finding of Reverse Domain Name Hijacking by reproducing a large quotation from a WIPO decision involving UPS and a domain name including the phrase “pickups online.” Respondent notes that “drive-up” is in the dictionary and that “drive-ups ‘were nostalgic places of yesteryear.’” (Response, p. 5.) Respondent asserts that Complainant has never used “driveups” as a trademark and further that because “driveups” is a generic term, it cannot gain trademark rights. Respondent further argues that Complainant attempts to conflate the issue before this Panel with the irrelevant facts of Complainant’s registration of numerous domain names containing the word “drive.” Respondent further notes that Complainant has not registered the, <drive-ups.com> domain name, which remains available. Respondent asserts that “driveups” conflicts with UPS’s trademark policy. Respondent also notes specifically the response from a UPS brand manager that “[u]nless there’d be a driver promotion or something related to NASCAR, I can’t think of any use for it.” Thus, Respondent argues, “how proprietary or confusingly similar can this domain name be when the Brand Manager for United Parcel Service ‘can’t think of any use for it’”. (Response, p. 7.) Respondent asserts that Complainant has failed to satisfy paragraph 4(a)(i) of the Policy.
Respondent asserts that he has a legitimate interest in the disputed domain name. Respondent posits he “purchases domains at various auctions and subsequently attempts to find secondary buyers for these newly acquired domains.” (Response, p. 8.) Respondent disagrees with the proposition that offering domain names for sale is against the Policy.
Respondent asserts that he did not register or use the disputed domain name in bad faith. Respondent notes that paragraph 4(a)(iii) is conjunctive and thus requires both bad faith registration and bad faith use; Respondent then argues that the domain name was registered in good faith. Specifically, Respondent asserts that he purchased the disputed domain name because he “immediately thought of the drive-up he frequents.” Respondent further states that he “believed and still believes that ‘driveups.com’ would be a great domain name for use as an online catalog for ‘drive-ups’: a national directory of these nostalgic places of yesteryear.” (Response, p. 10.) Respondent further asserts that Complainant’s in-house counsel created the appearance of bad faith related to this domain name.
Respondent asserts that Complainant has willfully and maliciously engaged in Reverse Domain Name Hijacking, asserting that this Complaint in this dispute is “insupportable” and has no foundation whatsoever.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed, Complainant must prove each of the following:
(i) The disputed domain names are 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 disputed domain name; and
(iii) The disputed domain names were registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds the disputed domain name confusingly similar to Complainant’s UPS marks. Specifically, the Panel notes Respondents’ incorporation of Complainant’s mark in its entirety. NBC Universal Inc. v. XC2, Gary Lam, WIPO Case No. D2008-0962 (“incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered trademark.”) Further, the Panel notes that the addition of the word “drive” to Complainant’s mark does not reduce confusion, but instead adds more confusion as to whether the disputed domain name relates to careers as a driver for UPS. AT&T Corp. v. Asia Ventures, Inc. WIPO No. D2005-1012 (“a domain name which is made up of a registered trademark and another term, especially one that relates to the business in which the registered trademark is sued, is confusingly similar for the purposes of paragraph 4(a)(i) of the Policy.”)
Respondent’s most compelling argument—that “drive-ups” has meaning beyond Complainant’s UPS mark—nonetheless falls short. Noting a potential good faith use for a domain name does not make the domain name any less confusing; rather, a good faith use could perhaps be able to overcome any initial interest confusion. United Parcel Service of America, Inc. v. Wesley Bryant, WIPO Case No. DAU2009-0012 (“The issue of confusing similarity must always be determined on the particular facts of the individual case.”) In this instance, the domain name is confusingly similar to Complainant’s UPS mark because it has the potential to mislead unsuspecting users.
Respondent’s remaining arguments regarding confusion are unpersuasive.
The Panel concludes that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in that the disputed domain name is confusingly similar to Complainant’s UPS mark.
B. Rights or Legitimate Interests
The Panel finds that Respondent does not have any rights or legitimate interest in the use of the domain name. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (holding that lack of rights or legitimate interest could be found where (1) respondent is not a licensee of complainant; (2) complainant’s rights in its related trademarks precede respondent’s registration of the disputed domain name; and (3) respondent is not commonly known by the domain name in question.) Complainant has asserted that Respondent is not a licensee and has no other permission or authority to use the UPS mark; Respondent has not disputed this fact. Complainant’s rights to the UPS mark precede registration of the disputed domain name; Respondent does not contest this fact. Complainant asserts that Respondent is not commonly known by the domain in question; Respondent does not dispute that assertion.
Respondent’s attempts to sell the disputed domain name to Complainant evidence Respondent’s intent to profit from selling the domain to UPS and not for any bona fide purpose. While Respondent is correct that offering for sale a domain name is not per se improper, the facts of this dispute are different both from Rising Star AG v. Moniker Privacy Services/ Domain Administrator, WIPO Case No. D2012-1246, where Complainant failed to set forth its prima facie case, and Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105, where Complainant first offered to buy the domain name. Respondent states regarding his “legitimate interest” in the domain name that “Respondent purchases domains at various auctions and subsequently attempts to find secondary buyers for these newly acquired domains.” (Response, p. 8.) It bears noting that selling a domain name incorporating UPS’s trademark back to UPS is not a legitimate use. Such activity attempts to sell UPS something that it already owns (i.e., rights in its trademark.) Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 (“Use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods and services.”) Further, in light of the inclusion of Complainant’s mark in the disputed domain name and Complainant’s obvious proprietary interest in its UPS mark, the Panel disagrees with Respondent’s presumptions when he states that “[s]elling a non-proprietary ‘idea’ to a third-party, for potential future marketing, is not against policy.” (See, e.g., Response, p. 13.)
The Panel concludes that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and used the disputed domain name in bad faith. Respondent’s assertions of good faith registration whilst thinking of an A&W drive-up in Dexter Michigan are belied by Respondent’s actions. Specifically, Respondent offered to sell the disputed domain name in excess of the costs of registration. CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243 (“Under the Policy, an offer to sell the domain name for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name is not only evidence of, but conclusively establishes that, the domain name has been acquired and is being used in bad faith.”) Further, Respondent has stated that it is his practice to acquire domain names and sell them to “secondary buyers.” (Response, p. 8.) Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 (“Ownership of numerous domain names that corresponds to the names or marks of well-known business entities suggests intent to profit from the activity of others.”) Complainant has provided multiple examples of domain names owned by Respondent that include the names and marks of businesses with no apparent connection to Respondent. (See Complainant Annex Y.)
Further, Respondent’s argument that <driveups.com> does not necessarily have anything to do with UPS—but could instead relate to “drive-ups” as a slice of Americana from “yesteryear”—is belied by the fact that Respondent contacted UPS and offered to sell the domain name to UPS within one month of acquiring the domain name. Nothing in the record indicates that Respondent made any efforts to use the disputed domain name in any way related to “drive-ups.” Further, in his email to UPS, Respondent capitalized the letters UPS and did not hyphenate the word as “drive-ups.” (Complainant Annex W and Respondent Annex B.) Thus, the panel finds Respondents “drive-ups” argument to be an after-the-fact attempt to create a plausible use for registering the domain and offering it to UPS.
Respondent’s remaining arguments regarding bad faith are unpersuasive. Specifically, the Panel notes that Respondent’s accusations of wrongdoing on the part of Complainant’s employees are ill-founded and based upon exaggeration. Further, Respondent’s conclusory allegation of Reverse Domain Name Hijacking lacks any substance.
The Panel concludes that Complainant has established that Respondent registered and used the disputed domain in bad faith and has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For 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 <driveups.com> be transferred to the Complainant.
Kimberly Chen Nobles
Date: October 25, 2013