WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION United Parcel Service of America, Inc. v. UPS Auto Transport Case No. D2010-0929 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 UPS Auto Transport of Miami, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2010. On June 8, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On June 9, 2010, GoD, Inc. 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 June 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 1, 2010.
The Center appointed William R. Towns as the sole panelist in this matter on July 9, 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. 4. Factual Background
The Complainant is a leading global provider of delivery services for packages, documents and other personal property, utilizing ground, air and other specialized modes of transportation. The Complainant has continuously used the UPS mark in connection with its products and services since as early as 1933, and owns multiple registrations for the UPS mark in the United States and in over 190 other countries around the world. Several UDRP panels have found that the Complainant's UPS mark is so widely known in connection with the transportation of goods to be considered a well-known or “famous” mark in the trademark sense.1
According to the concerned registrar's WhoIs database, the Respondent is the holder of the disputed domain name . The disputed domain name was registered on August 29, 2009, and resolves to a website on which the Respondent purports to operate an automobile delivery company in Miami, Florida. The Respondent's website prominently displays the Complainant's UPS mark within a shield logo that closely resembles the Complainant's registered UPS word and design mark.
Between November 19, 2009 and March 22, 2010, the Complainant by mail, email and courier sought to deliver five (5) cease and desist letters to the Respondent. This included one letter hand delivered to the person identified in the WhoIs information for the disputed domain name as the Respondent's administrative and technical contact, who denied any affiliation with the Respondent. The Complainant has received no reply to any of its notice letters. 5. Parties' Contentions A. Complainant
The Complainant maintains that the disputed domain name is confusingly similar to the Complainant's UPS mark, which the Complainant asserts is an extraordinarily well-known and famous mark. The Complainant argues that the disputed domain name incorporates the UPS mark in its entirety, and that the addition of the “autotransport” suffix does not dispel but if anything adds to the confusing similarity, since the Complainant is a leading provider of transportation and delivery services.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant avers that the Respondent has not been licensed or otherwise authorized to use the Complainant's mark, and that the Respondent is not commonly known by the disputed domain name. Further, the Complainant maintains that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and is not using the disputed domain name in connection with a bona fide offering of goods and services.
To the contrary, the Complainant contends that the Respondent has deliberately misappropriated the Complainant's UPS mark for use as a domain name in order to profit from and exploit the goodwill developed in the Complainant's mark. According to the Complainant, the Respondent is using the disputed domain name intentionally to attract Internet visitors to the Respondent's website by creating a likelihood of confusion as to the Complainant's mark and the Respondent's website or the services or products offered thereon. The Complainant further asserts that the Respondent provided false, misleading or incomplete contact information when registering the disputed domain name. For these reasons, the Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the Complainant has established rights in the UPS mark through extensive registration and long, continuous and substantially exclusive use in connection with the transportation of goods. The Complainant's mark is distinctive and without question has become well-known in the trademark sense.
The Panel further finds that the disputed domain name is confusingly similar to the Complainant's mark. Regarding the question of identity, the inquiry under the first element of the Policy is largely framed in terms of whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662.
In this instance, the disputed domain name incorporates the Complainant's UPS mark in its entirety. “UPS” clearly is the distinctive or dominant portion of the disputed domain name, and the confusing similarity between the disputed domain name and the Complainant's well-known mark is not diminished by the addition of generic or descriptive suffix “autotransport”, which potentially could be further associated by consumers with the Complainant's transportation services. See National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc.,WIPO Case No. D2007-1524.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of proof to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The Respondent has registered a domain name which incorporates in its entirety the Complainant's mark. The Respondent is using the disputed domain name to direct Internet users to a commercial website on which the Respondent offers automobile and other transport services. There is no indication that the Respondent has been commonly known by the disputed domain name, and the Complainant denies authorizing the Respondent to use the Complainant's mark in connection with domain names or in any other manner.
Pursuant to paragraph 4(c) of the Policy, the respondent may establish rights to or legitimate interests in the domain name by, inter alia, demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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 Respondent has not submitted a formal Response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
To the contrary, the Panel concludes that the Respondent most likely registered the disputed domain name in order to trade on the initial interest confusion between the disputed domain name and the Complainant's well-known mark, intending to attract Internet users to the Respondent's website. This does not constitute use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain,WIPO Case No. D2007-1380. The Respondent has not been authorized to use the Complaint's mark, and is there no evidence that the Respondent has been commonly known by the disputed domain name. Nor in view of the foregoing can it be said that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel finds it more likely than not that the Respondent's primary motive in relation to the registration and use of the disputed domain name was to capitalize on or otherwise take advantage of the Complainant's trademark rights. The Panel further is of the view that the Respondent registered and has used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship or affiliation. See E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
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 be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: July 23, 2010
1 See United Parcel Service of America, Inc. v. Michael Robert,WIPO Case No. D2008-0339; United Parcel Service of America, Inc. v. ,WIPO Case No. D2008-1925.
Full & Egal Universal Law Academy