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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
United States Postal Service v Reflex Publishing, Inc.
Claim Number: FA0102000096761
PARTIES
The Complainant is United States Postal Service, Washington, DC, USA ("Complainant") represented by David M Kelly, of Finnegan, Henderson, Farabow, Garrrett & Dunner LLP. The Respondent is Reflex Publishing, Brandon, FL, USA ("Respondent") represented by Marcus D. Dunn.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <post-office.com>, registered with Tucows, Inc.
PANEL
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as a panelist in this proceeding.
R. Glen Ayers, Honorable Carolyn Marks Johnson and Paul M. DeCicco, served as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 23, 2001; the Forum received a hard copy of the Complaint on February 23, 2001.
On February 26, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <post-office.com> is registered with Tucows, Inc. and that the Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 February 28, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 20, 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@post-office.com by e-mail.
A timely response was received and determined to be complete on March 20, 2001.
A timely additional submission from Complainant was received and determined to be complete on March 27, 2001.
A timely additional submission from Respondent was received on March 27, 2001. The fee was not received on time.
On March 30, 2001, pursuant to Complainant’s request to have the dispute decided by a three member Panel, the Forum appointed R. Glen Ayers, Honorable Carolyn Marks Johnson and Paul M. DeCicco served as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant, United States Postal Service ("USPS") asserts, since the Articles of Confederation in 1781, only the central government (now the USPS) had the right or power to establish and regulate "post offices". USPS also asserts that the establishment of any other, Non-USPS "post office" is illegal under Title 18, at 18 U.S.C. §1729. That statute makes it illegal to set up a "office or place of business bearing the same name or title of post office...."
USPS owns the following trademark registrations: POST OFFICE, UNITED STATES POST OFFICE AND EAGLE LOGO, UNITED STATES POST OFFICE EXPRESS, and UNITED STATES POST OFFICE EXPRESS AND EAGLE LOGO. It also owns domain names which forward Internet users to the main web site. The main web site is "usps.com." The domain names include one word "postoffice.org", "post-office.net", "post-office.org", "mypostoffice.com", "mypostoffice.net", and "mypostoffice.org."
USPS Office asserts that the domain name "post-office.com"is identical to a common law trademark held by the U.S. Postal Service, "post office." In the alternative, it asserts that the name is confusingly similar. Of course, USPS objects to Respondent’s domain registration, "post-office.com."
USPS also alleges that Respondent has no rights in the name and that the domain names was registered in bad faith.
First, USPS says the name was registered in bad faith because Respondent knew or should have known of Complainant’s trademark at the time of registration and that this is evidence of bad faith. Then, USPS says that Respondent acted in bad faith because the Respondent profits from use of the domain name in the following way: When a person using the Internet types in post-office.com, that event take the Internet user to Respondent’s web site where Respondent post banner ads and access links. In particular, USPS asserts, although it offers no evidence, that an Internet user winding up at Respondent’s domain site would then use one of the links to one of the major search engines. Respondent would receive a fee from that usage.
B. Respondent
The Respondent’s response emphasizes its considered belief that the term "post office", with or without a hyphen, is so generic that it cannot be considered to be a trademark in common law.
Respondent also asserts that it has legitimate rights to use the name post office, just as it would have the right to register any given term.
Respondent goes on to deny that had any intent to register the name "post-office.com" in violation of any of the rights of the United States Postal Service and denies emphatically that it has behaved in any way in bad faith.
Respondent stresses that he has not attempted to sell the name to the USPS and that it has made to attempt to pass itself off as the USPS.
C. Additional Submissions
Complainant filed an additional submission in reply, and once again asserted that it has protected rights of the term "Post Office." USPS argues that the U.S. Patent and Trademark Office has informally rejected other "Post Office formative marks due to concerns over confusion with and/or false association with the postal service." The USPS also argues that the U.S. Patent and Trademark Office has continued to register marks on behalf of USPS containing the term "Post Office,"
that the Patent and Trademark office has not made USPS disclaim "post office", and argues that this means that the Patent and Trademark Office does not find the term "Post Office" to be generic.
Contravening the Respondent’s argument as to its rights in generic words, USPS argues - - at least in the United States - - that the term "post office" has one meaning - - a meaning controlled by the USPS. In the alternative, USPS’ response argues that the name is confusing and that Respondent has not offered any evidence of rights in the name.
As to the bad faith registration, the USPS goes back through the argument that Respondent’s registration enables it to make a profit by receiving fees for the use of links to Internet search services. The links, of course, are posted at Respondent’s web page.
Respondent timely filed a supplemental statement. However, Respondent did not attach the fee required. Respondent did subsequently pay the fee. The panel has determined to consider the Respondent’s supplemental statement, considering the violation of the rules to be minor.
In the supplemental statement, Respondent asserts that its business plan was intended to be a vanity e-mail service. Respondent goes on to assert that it has not gone far with the business plan because it does not, at the present time, have the employees to do so.
Finally, in the supplemental response, Respondent denies that it intends to offer any of the services normally offered by the USPS at its web site or anywhere else.
FINDINGS
The Panel has argued the issues extensively. Each has reviewed the two prior determinations involving the USPS. First, United States Postal Service v. Consumer Information Organization, FA 95757 (Nat. Arb. Forum Nov. 27, 2000) held that the USPS had common law trademark rights to the term "post office" and went on to hold that "post-office.net" and "post-office.org" were either identical to that common law mark or were at lest identical and/or confusingly similar to those marks.
In the second USPS opinion, United States Postal Service v. Postoffice.com, Inc., FA 96313 (Nat. Arb. Forum Mar. 19, 2001), the panel also held that "postoffice" even when used as one word, was identical to the common law mark, "post office" held by USPS.
Two of the Panelists, R. Glen Ayers and Carolyn Marks Johnson, agree with earlier decisions and find that the USPS has a common law mark in the two words, "post office." Therefore, those two panelist find that the Complainant has made its initial burden of proof in showing that it holds a common law trademark in that the domain name "post-office.com" is confusingly similar to or identical to the common law mark.
Of course, common law marks receive the same protection under the Rules for Uniform Domain Dispute Resolution as do registered trademarks. See MatchNet TLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000).
Mr. DeCicco disagrees with this finding. Mr. DeCicco does not see that the USPS has presented sufficient evidence of common law rights in the mark "Post Office", which may on its face seems to be generic, or that such rights would extend world-wide.
As to rights and legitimate interest, Judge Johnson would point out the obvious: Because the term "post office" is widely understood to refer to USPS and its operations, it is very difficult to understand how Respondent could claim any legitimate right or interest in the use of the name. For example, Respondent is not generally known by the term "post office", and has made no use, commercial or otherwise, of the domain name. See e.g. Broadcom Corp. v. Intellifone Corp, FA 96356 (Nat. Arb. Forum Feb. 5, 2001). Further, Respondents have submitted no evidence of a legitimate business plan or use for the domain name, even in their supplemental response. In other words, to Judge Johnson, Respondents have submitted no "plausible explanation" for its claim of a right to use the domain name. See IG Index PLC v Index Trade, D2000-1124 (WIPO Oct. 16, 2000).
Registration and use "in bad faith" requires some reference to the definition of "bad faith"
as that term is used at paragraph 4 (a) (iii) of the Policy. Paragraph 4(b) gives a non-exclusive list of examples of "bad faith", which include:
As to registration and use in bad faith, Mr. DeCicco would argue that Respondent could not have acted in bad faith because Respondent certainly shares his view that "post office" is generic or that there is no common law mark held by the USPS. This belief that the words are generic leads to a conclusion that Respondent could not have acted in bad faith in registering the words. Further, Mr. DeCicco asserts that: (1) There is no evidence of any attempt to sell or otherwise market the name; and (2) the alleged commercialization, that is the providing of links to search engines which in turn would enable a user of the Internet to go from Respondent’s web site to a search engine and from the search engine ultimately to USPS is not the sort of commercial use in bad faith that is typically found in such cases.
Mr. Ayers also has difficulty seeing the bad faith element in this case. There is little or no evidence offered of any bad faith use. Even if the use described by USPS is occurring, there is no evidence of that use.
To summarize the findings, Mr. Ayers and Judge Johnson find that the USPS holds a common law trademark, "post office", and that the domain name "post-office.com" is identical to or certainly confusingly similar to the common law mark. Although Mr. DeCicco agrees that the at-issue mark and the domain name sound identical and appear identical, does not believe that the USPS has presented sufficient evidence of the existence of a common law trademark, "post office", and thus he does not see that the issue of confusing similarity is ever reached.
The panelists believe that the Complainant has shown that Respondent has no rights or legitimate interest in the name. Respondent’s use of the name has been so limited and its business plan has been so truncated that it is very difficult to find for Respondent on this ground. Respondents’ pleadings give very little assistance in this regard.
Finally, while Judge Johnson, consistent with her earlier dissent in United States Postal Service v. Postoffice.com, Inc. would find that there is evidence of bad faith simply in the registration. Mr. Ayers and Mr. DeCicco cannot find adequate evidence of bad faith.
DISCUSSION
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:
Identical and/or Confusingly Similar
The Complainant has proved the evidence is common law mark rights in the term "post office" to the satisfaction of Judge Johnson and Mr. Ayers. The UDRP does not discriminate between registered and unregistered marks and the domain name registered by Respondent is identical to or confusingly similar to the mark. See United States Postal Service v. Postoffice.com, Inc., FA 96313 (Nat. Arb. Forum Mar. 19, 2001).
Rights or Legitimate Interests
Although Respondent claims to have rights to use a generic name, the simple fact is, that even given Respondent's pleadings to the contrary, Respondent is not generally known by the term "post office" and has made no or very little commercial or non-commercial use of the domain name.
In Respondent's pleadings, Respondent has asserted that it has some intent to set up "vanity" e-mail addresses. However, at the present time. Respondent's domain name is little more than a jump station for persons unsuccessfully seeking the services of the USPS. All of the panelists agrees that Complainant has met its burden of proof and Respondent has failed to rebut as to this element.
Registration and Use in Bad Faith
Mr. DeCicco, of course, believes that the USPS’s rights in the descriptive/generic term "post office" are dubious and as such the simple act of registering the term as a domain name cannot be evidence of bad faith. Judge Johnson takes the opposite approach, and believes that the act of registration is in and of itself an act of bad faith. Mr. Ayers, on this point, must agree in part with Mr. DeCicco. Although Mr. Ayers believes that the term "post office" is subject to the rights of a common law mark holder, the USPS, it is difficult to see how Respondent could be said to be acting in bad faith when two reasonable, experienced persons, Judge Johnson and Mr. DeCicco, disagree on this very point. Therefore, Mr. Ayers does not believe that the registration, in and of itself, was an act of bad faith.
As to the other "bad faith" allegations made by USPS, none of the Panelists find that the conduct of Respondent is sufficient to be said to have been in bad faith.
DECISION
Because two of the Panelists have found that the conduct of Respondent was not in "bad faith" as that term is used as ICANN Policy §4(a)(3) the relief requested is denied and the domain name will not be transferred.
R. Glen Ayers, Jr., Esq.
Paul Michael DeCicco, Esq.
Dated: April 30, 2001
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URL: http://www.worldlii.org/int/other/GENDND/2001/812.html