Generic Top Level Domain Name (gTLD) Decisions

The Complainant is United States Postal Service, Washington D.C., USA ("Complainant") represented by Bruce Samuels, Lewis and Roca. The Respondent is Russ Smith Consumer Information Organization, Washington D.C., USA ("Respondent").

The domain names at issue are post-office.net, registered with Network Solutions and prioritymail.com, priority-mail.com, post-office.org, registered with Tucows.

The undersigned, as chair of the panel, and on behalf of the panel, certifies that the panel has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panel in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on October 3, 2000; The Forum also received a hard copy of the Complaint.

On October 6, 2000 Network Solutions confirmed by e-mail to The Forum that the domain name post-office.net is registered with Network Solutions and that the Respondent is bound by the Network Solutions registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP. On October 10, 2000 Tucows confirmed by e-mail to The Forum that the domain names prioritymail.com, priority-mail.com, post-office.org are registered with Tucows and that the Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On October 10, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 30, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@prioritymail.com, priority-mail.com, post-office.net, post-office.org by e-mail.

On November 9, 2000, pursuant to Respondent’s request to have the dispute decided by a Three Member panel, the Forum appointed Honorable Carolyn Marks Johnson (Ret.), Diane Cabell, and Daniel B. Banks, Jr. as Panelists.

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

A. Complainant:

Complainant is the U.S. Postal Service, an independent establishment of the Executive Branch of the United States Government. In 1781, Article IX of the Articles of Confederation gave Congress "The sole and exclusive right and power…establishing and regulating post offices from one State to another". Shortly after the Constitution of the United States was adopted, the Act of September 22, 1789 (1 Stat. 70), temporarily established the Post Office, and in the Act of February 20, 1792, Congress made detailed provision for the Post Office.

In 1909, Congress granted the Complainant, U.S. Postal Service, the exclusive right to use the name POST OFFICE and declared that, "Whoever, without authority from The Postal Service, sets up or professes to keep any office or place of business bearing the sign, name, or title of post office, shall be fined under this title." 18 U.S.C. Sec.1729. Respondent has confirmed that he was aware of this statute on August 19, 1999.

There are over 38,000 places of official Postal Service businesses located throughout the United States, all known as POST OFFICE. Seven million customers visit these facilities every day.

The Postal Service owns the federally registered service mark PRIORITY MAIL and, since 1968, the Postal Service has offered an expedited delivery under this service mark. The Postal Service has spent millions of dollars promoting this mark and as a result, this mark has become well known. In 1999, the Postal Service delivered almost 1.2 billion pieces of mail bearing this mark, generating over $4.5 billion in revenue.

The Postal Service owns the federally registered service marks, PRIORITY MAIL UNITED STATES POSTAL SERVICE; GLOBAL PRIORITY MAIL; AND, GLOBAL PRIORITY MAIL UNITED STATES POSTAL SERVICE. In addition, the Postal Service is in the process of obtaining federal registrations for PRIORITY MAIL GLOBAL GUARANTEED; USA PRIORITY MAIL; PRIORITY MAIL GLOBAL STANDARD; PRIORITY MAIL BOX; PRIORITY MAIL GLOBAL; PRIORITY MAIL GLOBAL EXPRESS; PRIORITY MAIL SAME DAY; PRIORITY MAIL TWO DAY; AND, PRIORITY MAIL NEXT DAY.

The Postal Service has gained widespread public recognition of both its POST OFFICE and PRIORITY MAIL marks and the services offered under those marks. These marks have become a distinctive designation of the source of its products and services and have become uniquely associated with the Postal Service.

On September 9, 1999, Respondent registered the domain names PRIORITYMAIL.COM and PRIORITY-MAIL.COM. On September 17, 1999, Respondent registered the domain name POST-OFFICE.NET. On September 19, 1999, Respondent registered the domain name POST-OFFICE.ORG. In addition to these names, Respondent and its owner, Russ Brown, have registered over 700 domain names, including names of well-known institutions and famous people.

Complainant contends that the domain names in question are identical and/or confusingly similar to the Complainant's service marks POST OFFICE and PRIORITY MAIL in which the Complainant has rights; that the Respondent has no right or legitimate interest in the domain names in question; and, that Respondent registered and used the names in bad faith.

Respondent had not made any demonstrable preparations to use the domain names until after contact from the Complainant. In the summer of 1999, the Postal Service contacted Respondent about the domain names in question. At that time, there were no web sites at those domains. After being contacted, Respondent launched a web site at those domains.

Complainant also contends that Respondent is using the domain names to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location. Complainant says that Respondent takes pride in diverting internet traffic to his web sites as demonstrated by a November 11, 1999, Wall Street Journal article wherein Complainant's owner, Russ Smith, boasted about receiving e-mails intended for his "arch-foe" telemarketers by registering similar domain names to the telemarketing associations. "Its revenge" he says.

B. Respondent

Respondent is an Internet business operating since June 1996. Russ Smith is the Director and authorized representative of Respondent. It publishes a number of web sites that currently receives approximately 20,000 to 75,000 visitors per day. These web sites include a variety of consumer information resources providing information about telemarketing laws, privacy, Internet issues, tourist information and some holiday-related sites. These sites include Consumer.net, Privacy.net, Help.ord, Telemarketinglaws.com, Anti-Virus.com, Network-Tools.com, ChristmasTrees.com, and others. Consumer.net has made significant cash outlay to obtain consumer-related domain names such as Privacy.net and FOI.com (to provide information about the Freedom of Information Act) and has recently obtained Science.net to provide educational material.

Respondent agrees that Complainant has trademark rights in "PRIORITY MAIL", but contends that Complainant has failed to prove that it has trademark or service mark rights in "POST OFFICE". Respondent also contends that Complainant has failed to prove "PRIORITY MAIL" and "POST OFFICE" is famous and/or that it has exclusive rights to use "POST OFFICE".

Respondent states that it has rights and legitimate interests in respect of the domain names in question in that, before any notice to Respondent of the dispute, Respondent used or made demonstrable preparations to use the domains in connection with a bona fide offering of goods or services. Respondent argues that its purpose in registering "PriorityMail.com" is to provide consumer information about USPS and comparable services such as Airborne, AirNet, FedEx, DHL, TNT, UPS, and USPS. Respondent admits that the PriorityMail.com web site was set up after it was contacted several times by Complainant. Those contacts included a number of e-mail and telephone requests that Respondent sell the domain and that a price be set. Also, Respondent says that an attorney representing Complainant called on the phone and threatened legal action.

Respondent says that it did not register or use the Domain names in bad faith. Specifically, Respondent says that there is no evidence to support a finding of bad faith under UDRP 4(b)(i) (registration primarily for the purpose of selling to the owner or competitor for consideration in excess of out-of-pocket costs) because the domain names were never for sale.

Respondent states that the evidence does not support a finding of bad faith under UDRP 4(b)(ii) (preventing the owner of a trademark or service mark from reflecting the mark in a corresponding domain name) because the Complainant operates their main web site at USPS.com and a Priority Mail information site at USPSPriorityMail.com.

Respondent says that the evidence does not support a finding of bad faith under UDRP 4(b)(iii) (registering to disrupt the business of a competitor) because Complainant and Respondent are not competitors.

With regard to bad faith under UDRP 4(b)(iv) (attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion), Respondent contends that the use of a very prominent disclaimer which directs users directly to the desired site without any confusion is sufficient.

Respondent also seeks a determination of reverse domain name hijacking on the grounds that Complainant has overstated its rights in several areas including its rights in the term "Post Office"; that it initiated this complaint after unsuccessfully attempting to entice Respondent into setting a price for the domain names; and, that the Complainant is aware of the lack of merit of this Complaint.

The complainant has established to the satisfaction of this panel that the domain names "prioritymail.com," "priority-mail.com," "post-office.net" and "post-office.org" are identical and/or confusingly similar to its trademarks; that the defendant has no rights or legitimate interest in the domain names; and, that they were registered and used in bad faith.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent 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 domain name; and

(3) the domain name has been registered and is being used in bad faith.

The complainant has provided evidence of registered trademark rights in "Priority Mail" and unregistered, common law mark rights in the term "Post Office." The UDRP does not discriminate between registered and unregistered marks. See MatchNet PLC. V. MAC Trading, D2000-0205 (WIPO May 11, 2000) (citing The British Broadcasting Corp. v. Jaime Renteria, D2000-0050 (WIPO Mar. 23, 2000)) (noting that the UDRP "does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names" and applying the UDRP to "unregistered trademarks and service marks"). The domains registered by the respondent, prioritymail.com, priority-mail.com, post-office.net and post-office.org are identical and/or confusingly similar to these marks.

Under Section 4(c) of the Policy, there are three suggested grounds for establishing respondent’s rights or legitimate interest in the domain name. They are (i) before any notice to you 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 (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 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.

We do not find any of them present in this case.

Bad Faith

Section 4(b) of the UDRP requires the complainant to prove that the domain has been registered and is being used in bad faith. Sufficient evidence has been presented to establish this claim.

Under 4(b)(iv), bad faith can be shown if the domain holder has "intentionally attempted to attract, for commercial gain, Internet users to [your] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [your] web site or location or of a product or service on your web site or location.

Respondent has requested a determination of reverse domain name hijacking. We do not find evidence that the complainant is abusing the UDRP process and therefore deny this request.

It is the unanimous decision of the panel that the domain names POST-OFFICE.NET, registered with Network Solutions and PRIORITYMAIL.COM, PRIORITY-MAIL.COM and POST-OFFICE.ORG, registered with Tucows be transferred to Complainant.