Generic Top Level Domain Name (gTLD) Decisions

The Complainant is United States Postal Service, Washington, DC, USA ("Complainant") represented by B. Brett Heavner, of Finnegan, Henderson, Farabow, Garrett & Dunner LLP. The Respondent is Postoffice.com, Inc., San Jose, CA, USA ("Respondent") represented by G. Gervaise Davis III, of Davis & Schroeder.

The domain name at issue is "postoffice.com", registered with Gandi.

The undersigned certify that they have acted independently and impartially and to the best of their knowledge, have no known conflicts in serving as panelists in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on December 21, 2000; the Forum received a hard copy of the Complaint on December 26, 2000.

On December 27, 2000, Gandi confirmed by e-mail to the Forum that the domain name "postoffice.com" is registered with Gandi and that the Respondent is the current registrant of the name. Gandi has verified that Respondent is bound by the Gandi registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On December 29, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 18, 2001 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@postoffice.com by e-mail. Respondent requested an extension of time to respond. The Forum granted an extension to the Respondent until February 7, 2001.

A timely response was received and determined to be complete on February 7, 2001.

On February 14, 2001, Complainant submitted an additional submission, which was after the deadline for submissions, and the required fee was late. The Panel considered all submissions in reaching its decision in this case.

On February 21, 2001, pursuant to Respondent’s request to have the dispute decided by a Three Member Panel, the Forum appointed Daniel B. Banks, Jr., Frederick Mostert and Honorable Carolyn M. Johnson, (Ret.) as Panelists.

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

Complainant, The Postal Service, is an independent establishment of the Executive Branch of the United States Government with its principal place of business in Washington, D.C. The trademarks or service marks upon which the Complaint is based are the Postal Service's POST OFFICE and UNITED STATES POST OFFICE marks.

The use of the mark and trade name POST OFFICE to refer to the place of official federal postal business dates back to the founding of the United States. 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 was adopted, the Act of September 22, 1789, temporarily established the Post Office, and in the Act of February 20, 1792, Congress made detailed provisions for the Post Office.

The Postal Service functioned as an executive agency under the name POST OFFICE DEPARTMENT from 1872 to 1970. In 1909, Congress granted the Postal Service the exclusive right to use the trade name POST OFFICE and, enacted a statute that made use of POST OFFICE by others a criminal offense. See 18 U.S.C. Section 1729.

Today, there are over 38,000 places of official Postal Service business located throughout the United States, all identified by the mark POST OFFICE and bearing signage using the POST OFFICE and UNITED STATES POST OFFICE marks. Seven million customers visit these facilities every day. The Postal Service owns a number of POST OFFICE-formative domain names, all forwarding Internet users to the Postal Service's main web-site at usps.com. These domain names include postoffice.org, mypostoffice.com, mypostoffice.net and mypostoffice.org.

The Postal Service has used the word mark UNITED STATES POST OFFICE continuously since 1937 in connections with mail services, including sorting, handling, receiving and delivering packages and letters; retail store services featuring stamps, philatelic products, stationery and other mailing materials, novelty items, and rental of mail boxes.

The Postal Service owns U.S. trademark registrations for UNITED STATES POST OFFICE (block letters), UNITED STATES POST OFFICE and Eagle Logo, UNITED STATES POST OFFICE EXPRESS (block letters), and UNITED STATES POST OFFICE EXPRESS and Eagle Logo. The U.S. Patent and Trademark Office (PTO) registered these marks, without disclaimers, based on a showing of acquired distinctiveness of the mark UNITED STATES POST OFFICE under Section 2(f) of the Lanham Act. This means that the PTO has determined that, due to longstanding use and promotion, the public has come to associate the UNITED STATES POST OFFICE mark exclusively with the Postal Service, and that the term POST OFFICE is a protectable mark.

Respondent Postoffice.com, Inc., upon information and belief, is a Delaware corporation with its principal place of business in San Jose, California. The disputed domain name, postoffice.com was originally registered by Infoserv Connections and Complainant became aware of this registration in 1998. At that time, Complainant contacted Infoserv to inform it of the Postal Service's trademark rights in the mark POST OFFICE as well as the criminal prohibition on use of the mark POST OFFICE. At that time, the domain name did not lead to an active web-site.

After becoming aware of the disputed domain name registration, Complainant communicated with Infoserv in an attempt to persuade it to not use the domain name and to transfer it to the Postal Service. Ultimately, discussions between the Postal Service and Infoserv ended because Infoserv sought millions of dollars for the transfer of the domain name. Complainant elected to monitor the domain name to determine whether Infoserv actually used the domain name.

On or about June 28, 1999, Infoserv transferred the domain name to Respondent. The Postal Service was not notified of this transfer and the domain name remained inactive. In January 2000, the Complainant became aware that the domain name connected to a web-site consisting of a single page bearing the words "postoffice.com/ The Digital Mail Company// For information on becoming a private beta tester, send email to privatebeta@postoffice.com." In April 2000, the web-site associated with the domain name postoffice.com bore the statement "Coming Soon…Mail for the next Millennium." Services were still not being offered on the web-site at that time.

On July 5, 2000, The Postal Service sent a cease and desist letter to Respondent informing it of the Postal Service's trademark rights in the mark POST OFFICE, as well as the criminal prohibition on use of the mark POST OFFICE. Although Respondent refused to comply with the cease and desist letter, the web-site did not offer any services through the summer of 2000.

In the fall of 2000, Complainant became aware that the domain name was connecting to an operational web-site. The home page features the name POSTOFFICE.COM in large, stylized blue and red lettering at the top of the screen. Respondent is using this site to promote and offer services that are directly competitive with the services offered by the Complainant. This site also features links to Postal Service web-sites which Respondent "frames with its own mark and URL.

Respondent competes with Complainant by offering a type of secure e-mail service that allows users to securely transfer documents via e-mail and receive e-mail sorted by category and by sender. Complainant's POST eCS service provides secure transfer of electronic documents via e-mail. Also, Respondent offers a Digital Mail service which is an on-line equivalent to the mailbox outside one’s home. This allows consumers to receive "postal mail" on line. This service is promoted as an alternative to the Postal Service's traditional mail delivery.

Respondent's web-site also features a page entitled "Postal Center". Users choosing this option are brought to a second page that offers many of the services typically found in Complainant's United States Post Office locations. The first option available on "Postal Center" is entitled "U.S. Stamps" and links directly to www.stampsonline.com, the Postal Service's online stamp retailing site. This practice makes it appear that the services are provided by Respondent or that Respondent's web-site is affiliated with or sponsored by the Postal Service.

Under the heading "United States Postal Service Links", Respondent offers the options of "Locate a Post Office", "Zip Code Lookup", "Address Change", "Postage Rate Calculator", and "U.S. Postal Calendar." All of these services are actually provided by the Postal Service through its web-site at usps.com.

The domain name postoffice.com is identical to the Postal Service's POST OFFICE mark and confusingly similar to the UNTIED STATES POST OFFICE mark. Common law marks, like the Complainant's POST OFFICE mark are entitled to protection under the UDRP.

Respondent has no legitimate interest in the domain name in that its use of POSTOFFICE.COM as its business name violates the provisions of criminal statute 18 U.S.C. section 1729, by keeping an office or place of business bearing the sign, name or title of POST OFFICE without authority from the Postal Service. Also, the Respondent's web-site trades on the goodwill of the Postal Service's marks and diverts Internet consumers searching for the Postal Service.

Respondent registered and is using the domain name in bad faith under Paragraph 4(a)(iii) of the UDRP because Respondent was familiar with the mark prior to registering the domain name and therefore its unauthorized use for competitive services suggests opportunistic bad faith given the widespread use and fame of these names.

Respondent's registration and use of the domain name also meets the bad faith element under Paragraph 4(b)(iii) of the UDRP in that it's use disrupts the business of a competitor. Under Paragraph 4(b)(iv), Respondent is acting in bad faith by using the domain name to attract, for commercial gain, Internet users to its web-site or other on-line locations by creating a likelihood of confusion with the Postal Service's marks as to the source, sponsorship, affiliation, or endorsement of Respondent's web-site. And, although the Respondent uses a disclaimer, it is not effective because by the time a consumer reaches the disclaimer, Respondent has already achieved its goal of diverting Internet users to its web-site.

The domain name, postoffice.com, was registered in 1994, by Infoserv Connections (Infoserv), which was owned by Mr. Marcelo Siero. Because of an outstanding agreement with the Respondent, Mr. Siero claims to be the real party in interest in this case. According to his affidavit, Mr. Siero, along with a partner, formed the company Infoserv in 1991 as a new venture which involved selling access to e-mail and USENET News to the public by leveraging the use of a new emerging growing technology called the Internet. By 1993, Mr. Siero was the sole owner of Inforserv.

By 1994, competition among providers of e-mail and Usenet was increasing dramatically because competitive e-mail packages were hitting the market from companies like Microsoft and Qualcomm (Eudora). About that time, Mr. Siero came up with the idea of registering and using the domain name postoffice.com so that Infoserv would provide its customers with better e-mail addresses, thus providing it with a marketing edge over its competitors, which at the time was Netcom, AOL, and ISP's. Upon finding the generic word postoffice.com was available, it was registered by Infoserv.

"Postoffice," was and is a good generic word that described the electronic function that was being provided by Infoserv and was in keeping with the concept of using a generic word that was in widespread use on the Internet to imply the delivery of e-mail. There were no registered trademarks of the word "PostOffice".

In May 1998, Mr. Siero received an unsolicited phone call from Complainant's attorney advising that the law was being broken by owning the domain name postoffice.com. An offer of $300 was made to rid Mr. Siero of his problem. When asked to put the offer and conversation in writing, Mr. Siero received a letter which raised the offer to $500 and repeated the threats of possible criminal prosecution.

After indicating that he did not wish to sell the domain name, Complainant offered, in a letter dated December 15, 1998, the sum of $100,000 for postoffice.com. Because he was not interested in selling the domain name, Mr. Siero's attorney responded indicating that they would prefer to work with Complainant and not sell the name. Further discussions were not productive and Complainant stated that it would not pursue the matter legally for the time being.

In 1999, Mr. Siero and a friend reached an agreement to incorporate a new business around the postoffice.com domain to be called Postoffice.com, Inc. The goal of Postoffice.com, Inc. was and is to create major innovation to help an International customer base that will help the consumer in the areas of e-mail, security, anti-spamming and e-commerce.

The new corporation Postoffice.com, Inc. was formed and in March of 1999, Mr. Siero transferred the name postoffice.com to the new corporation. That web-site commenced to do business on the Internet in early 2000 and was moderately successful. Thereafter, it became clear that the concepts in mind would take substantially more capital and more time to develop commercially than had been anticipated. In early December 2000, it was agreed that the domain name would be transferred back to Mr. Siero along with the concepts and software and the web-site. Because of ICANN rules, that transfer has not been possible even though it is still currently being used for e-mail services for customers.

The domain name is designed to help world citizens find and use relevant information on international postal and commercial e-mail services from all countries. It is a lawful well-established business.

The Complainant has no registered trademark on the two words "post office" and there is no evidence that Complainant has ever used the words "post office" as a trademark separate and apart from the distinguishing geographical limitation of "United States Post Office". The words "post office" do not distinguish the USPS services from any other national or commercial postal service, without the added words "United States".

The earliest dictionary entries relating to the use of the words "post office" date back to 1652, which precedes the founding of the United States of America and the Complainant. The descriptive and generic nature of the term "post office" is further evidenced by the fact that a random review of three Internet search engines disclose that a Google.com web search contains 389,000 references to the word combination "post office," AltaVista.com has 909,602 such references, and Lycos.com produces 971,217 hits. The vast majority of these are on web-sites from other foreign postal services, and many commercial enterprises providing e-mail, stamps, postal services, electronic Post Office computer programs, or simply information about the various postal and e-mail systems of the world. A quick search of Whois Internet databases indicate that there are over 740 domain names registered which either begin with or end with the words "post office."

ICANN rules and proceedings are limited to a remedy against abusive domain name registrations, and not to prevent alleged infringements or confusion. In order to prevail, ICANN rules require that the Complainant demonstrate that Respondent has no legitimate interest in the subject domain name and Rule 4(c)(i) provides an absolute defense where the Respondent has been operating a business under the name or working on establishing such a business, in good faith, prior to receipt of the ICANN complaint.

Respondent has met the requirements of Rule 4(c)(i) by showing that in 1991, Infoserv was registered for a purpose similar to the present purpose of Postoffice.com, Inc. and was providing e-mail services using the disputed domain name.

With respect to the allegations of bad faith, there must be both bad faith registration and bad faith use. The fact that there is a U.S Criminal Statute being invoked by Complainant does not apply because the Internet is not located just in the United States. It exists anywhere that anyone in the world has access to it, so that to apply a United States Criminal Statute to International activities is clearly beyond the authority of the U.S. Government, especially where the domain name is registered with a foreign domain registrar, as this domain is. And, this Panel is not a criminal court and has no jurisdiction to consider alleged criminal conduct.

With respect to the allegation that Respondent sought "millions of dollars" for the domain name, this statement is untrue. Complainant made an offer to purchase the domain name for $100,000, which was rejected with the comment that he was not interested in selling the name which clearly had a potential business value in the millions. This comment is not evidence of an attempt to sell.

With regard to the Complainant's allegation that Respondent competes with it in offering e-mail services over the Internet, Respondent's predecessor, Mr. Siero was involved in providing such services 5 to 8 years before Complainant decided to do so. And, virtually every one in the world that uses e-mail and the Post Office Protocol or the commercially available Post Office software also competes with the USPS. The mere fact that someone competes with another is not abusive registration or use. In this case, it is a fact of life that millions of international web-sites provide some of the same services as Complainant has recently decided to provide to U.S. citizens and businesses.

The alleged confusion due to the use of similar colors and linking is inapposite in an ICANN proceeding. That complaint belongs in a Federal Court Lanham Act infringement case if those facts are true and they are actionable. There is little or no law to support the theory that linking to and framing a site for the purpose of assisting the user to do business with the framed party is illegal or improper. All that Respondent's site does is allow the reader to determine the official U.S. and other international postage rates.

Complainant has failed to prove ownership of the mark "post office" or any substantial confusing similarity; any lack of legitimate right of Respondent to use the domain name; and, any acts showing bad faith registration or bad faith use.

1 - The domain name "postoffice.com" is identical to the common law mark of the Complainant.

2 - The Complainant has failed to show that the Respondent has no right or legitimate interest in respect of the domain name. The Respondent has demonstrated its right or legitimate interest in respect of the domain name.

3 - The Complainant has failed to show that the Respondent has registered and used the domain name in bad faith.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the 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.

It should be noted that URDP does not cover every possible violation of trademark rights. See Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Nat. Arb. Forum July 20, 2000) (stating that the Policy is intended to resolve only a narrow class of cases of "abusive registrations" and does not extend to cases where a registered domain name is subject to legitimate disputes which are relegated to the courts).

It should also be noted that ordering the transfer of a domain name is an extraordinary remedy that ought to be exercised only in clear cases. In addition, the UDRP is a limited administrative procedure designed only to prohibit clear cases of abusive registration. Where, as here, evidence is presented to suggest that complicated trade mark and other legal issues (such as laches, estoppel, etc) are at stake, the proper forum is in a court of law.

It is important to recognize that even if "Post Office" means a governmental institution to many people, it does not follow that, in every context, the term "Post Office" will convey that meaning. In fact, the Internet, as an international communications medium, is replete with old world terms such as "email", "you have mail", "post office protocol" which obviously do not refer to a "governmental institution". It is not appropriate for a UDRP to assume the public thinks a certain way in the absence of sufficient evidence to support such a position.

Moreover, we do not find, in the context of these proceedings, that the Complainant has met its evidentiary burden on the "balance of the probabilities". See Funskool (India) Ltd v. funschool.com Corp. D2000-0796, (WIPO Nov. 30, 2000) which stated that "Unlike in a criminal case where the tribunal of fact has to be satisfied of the case of the prosecution beyond such doubt as could be described as reasonable (not merely fanciful), the standard in the civil case is to consider whether, on balance, the plaintiff's or defendant's case is more probable". In this proceeding, which is in the nature of a civil proceeding, the civil standard of proof should apply in respect of issues 4(a)(ii) "no rights or legitimate interests" and 4(a)(iii) "bad faith".

Complainant contends that the domain name in question is identical to its common law trademark POST OFFICE and confusingly similar to its registered trademark UNITED STATES POST OFFICE. Policy ¶ 4(a)(i). See United States Postal Service v. Consumer Info. Org., FA 95757 (Nat. Arb. Forum Nov. 27, 2000) (finding Complainant has common law rights in the term POST OFFICE). See also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding common law rights in the mark BIBBERO as the Complainant, Bibbero Systems, Inc (Complainant owns a trademark for its full company name) had developed brand name recognition with the BIBBERO term by which the Complainant is commonly known); Hammond Suddards Edge v. Westwood Guardian Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the domain name, "hammondsuddards.net," is essentially identical to the Complainant's mark, Hammond Suddards Edge, where the name "Hammond Suddards" identifies the Complainant independently of the word "Edge").

Further, Complainant contends that Congress granted the Complainant exclusive right to use the POST OFFICE mark in 18 U.S.C. § 1729.

The complainant has provided evidence of its common law mark rights in the term "Post Office." The UDRP does not discriminate between registered and unregistered marks. The domain registered by the respondent, postoffice.com is identical to this mark. However, that fact alone is not sufficient for this Panel to find in favor of the Complainant.

The Respondent contends that he is using the domain name in connection with his international Internet business that helps Internet users find international postal and commercial email services. Respondent contends that this is a bona fide offering of goods and services under Policy ¶ 4(c)(i). See 3Z Productions v. Globaldomain, FA 94659 (Nat. Arb. Forum June 9, 2000) (finding a legitimate interest in a domain name is shown by website development); Newport News v. VCV Internet, AF 0238 (eResolution July 18, 2000) (finding that the Respondent has rights and legitimate interests in the domain name newportnews.com where Respondent is using the domain name in connection with a bona fide use of disseminating general information about the city of Newport News); Port of Helsinki v. Paragon Int’l Projects Ltd., D2001-0002 (WIPO Feb. 12, 2001) (finding rights and legitimate interests in the domain name, portofhelsinki.com, where the Respondent was using the domain name to provide information about services available in different ports around the world).

It is the finding of this Panel that the Respondent has demonstrated its right and legitimate interest in the disputed domain name as evidenced by its early registration and use of the name for legitimate business purposes. Before any notice of the dispute in this case, the Respondent had made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services. The Respondent is making a fair legitimate use of the domain name offering an international service to Internet users with a disclaimer of any connection to Complainant. In fact, the Respondent's web-site directs users to Complainant's web-site for the purchase of goods and services offered by Complainant.

Respondent makes the following contentions:

See Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb 2, 2001) (finding no bad faith registration or use of the domain name <racegirl.com> where no evidence was presented that Respondent intended to divert business from the Complainant or for any other purpose prohibited by UDRP Rules).

The evidence in this case is not sufficient for this Panel to find a bad faith registration and use of the disputed domain name. Specifically, there is no evidence under Paragraph 4(b)(i) that the Respondent registered or acquired the name primarily for the purpose of selling, renting, or otherwise transferring the domain registration to the Complainant or to a competitor of Complainant for valuable consideration in excess of documented out-of-pocket costs; 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; or that Respondent registered the domain name primarily for the purpose of disrupting the business of Complainant. Furthermore, the evidence does not support a finding that Respondent's use of the disputed domain name creates a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web-site. In fact, Respondent's use of the domain name clearly advises users that it is not affiliated with Complainant and provides a direct connection to Complainant's web-site.

It is the decision of this Panel that the Complainant's request that the domain name "postoffice.com" be transferred to Complainant is denied.