WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Postnet International v. Manjo Morias
Case No. D2021-3880
1. The Parties
The Complainant is Postnet International, United States of America (“United States”), represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is Manjo Morias, Cameroon.
2. The Domain Name and Registrar
The disputed domain name <postnet.live> 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 November 19, 2021. On November 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 22, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 24, 2021.
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” 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 the Respondent of the Complaint, and the proceedings commenced on November 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2012.
Due to an apparent issue with the notification of the Complaint, the Center granted the Respondent a five-day period through December 26, 2021 and notified the Respondent through the Registrar’s “Contact Us” forms. The Respondent did not indicate that it wishes to participate to the proceeding within the time limit.
The Center appointed Knud Wallberg as the sole panelist in this matter on January 3, 2022. 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
The Complainant is a franchised chain of more than 650 independently owned and operated marketing service providers with full-service print shops, known for providing customized print, marketing and shipping solutions to the 28 million small businesses in the United States and millions more around the world. The Complainant holds registrations of the trademark POSTNET in a large number of countries around the world including United States registration 1,801,313 applied for on August 22, 1991 and registered on October 26, 1993, for services in classes 35, 36, 38, 39 and 42. The Complainant also owns several domain names that contain the POSTNET mark, including <postnet.com>
The disputed domain name was registered on August 22, 2021. It previously resolved to an active website that purported to offer services that were similar to the services that are offered by the Complainant. The disputed domain name currently resolves to a website that contains an error message saying “Your access to this site has been limited”.
5. Parties’ Contentions
The Complainant asserts that the disputed domain name is identical to the Complainant’s POSTNET mark, since it contains this mark in its entirety.
The Complainant further asserts that the Respondent is not an authorized dealer, agent, distributor, wholesaler or retailer of the Complainant’s services, nor is the Complainant in possession of, or are aware of the existence of any evidence tending to demonstrate that the Respondent is commonly known by the disputed domain name, as individual, business, or other organization.
The Complainant finally asserts that the disputed domain name was registered and is being used in bad faith. Given the fanciful nature of the POSTNET mark and its widespread use it is inconceivable that the Respondent was not well aware of the Complainant’s trademark rights at the time of the registration of the disputed domain name. The disputed domain name initially redirected to a website dedicated to services very similar to those offered by the Complainant. The fact that the disputed domain name currently redirects to a prima facie error page, does not mean that the disputed domain name is not used in bad faith since also the passive holding or non-use of a domain name identical to a trademark can support a finding of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <postnet.live> is identical to the Complainant’s registered trademark POSTNET. The generic Top-Level Domain (“gTLD”), “.live” is a standard registration requirement and as such is disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not produced, and there is no evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings.
Consequently, the Panel finds that the condition in paragraph 4(a)(ii) of the Policy is also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case, including the evidence on record of the use and reputation of the Complainant’s trademark POSTNET, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name, which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
The disputed domain name previously redirected to a website that purported to offers services which were identical or similar to the services that is offered by the Complainant. The Panel therefore finds that the disputed domain name has been used in bad faith to intentionally attempt “to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website”. The fact that the website appears to be unavailable at present does not alter this finding.
The Respondent’s failure to participate in these proceedings and the use of what appears to be incomplete contact details are further indicia of the Respondent’s bad faith.
Noting that the disputed domain name incorporates the Complainant’s distinctive and reputed trademark POSTNET and the gTLD “.live”, that no Response has been filed, that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, that the Respondent’s registration prevents the Complainant from reflecting its POSTNET mark in a corresponding domain name under the “.live” gTLD, and considering all the facts and evidence of the case, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <postnet.live> be transferred to the Complainant.
Date: January 17, 2022