DECISION

NetCreations, Inc. v. Rob Martinson d/b/a Postmasterdirectmail.com

Claim Number: FA0208000118398

PARTIES

Complainant is NetCreations, Inc., New York, NY (“Complainant”) represented by Eric Prager, of Darby & Darby, PC.  Respondent is Rob Martinson d/b/a Postmasterdirectmail.com, Atlanta, GA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <postmasterdirectmail.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 16, 2002; the Forum received a hard copy of the Complaint on August 20, 2002.

On August 20, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <postmasterdirectmail.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name.  Go Daddy Software, Inc. verified that Respondent is bound by the Go Daddy Software, 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 August 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 25, 2002, 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@postmasterdirectmail.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 16, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations in this proceeding:

The <postmasterdirectmail.com> domain name is confusingly similar to Complainant’s POSTMASTERDIRECT mark.  Respondent has no rights or legitimate interests in the <postmasterdirectmail.com> domain name.  Respondent registered and used the <postmasterdirectmail.com> domain name in bad faith.

B. Respondent failed to submit a Response.

FINDINGS

Complainant holds a registered trademark with the United States Patent and Trademark Office (“USPTO”) for the POSTMASTERDIRECT mark (Reg. No. 2,469,058).  In addition, Complainant has the POSTMASTER and POSTMASTERDIRECT.COM marks registered with the USPTO (Reg. Nos. 1,993,686 and 2,469,058). 

Complainant initiated its business of offering “100% Opt-in® email direct marketing services” in 1996, the same year in which Complainant first started using the POSTMASTERDIRECT mark in commerce.  One year later, in 1997, Complainant registered the <postmasterdirect.com> domain name and developed a website to expand its advertising services.  Complainant now extensively operates as a full service direct email marketing company. 

Complainant developed the largest database of “opt-in” email addresses, which has grown to approximately 40 million addresses.  Complainant also developed a process called “double opt-in” whereby Complainant ensures that participants on its POSTMASTERDIRECT lists receive offers from participating marketers.  Complainant’s commitment to privacy in the marketing business has gained Complainant a high level of respect and acknowledgment throughout the e-commerce industry.

Respondent registered the <postmasterdirectmail.com> domain name May 14, 2002.  Respondent has not developed a website with content associated with the domain name.  Respondent, however, uses the domain name as a cover when sending unsolicited mass emails.  Complainant’s investigation uncovered that Respondent operates in the same

e-commerce marketing business that Complainant is engaged in and that Respondent’s email marketing campaigns are sent through unsolicited mass emails, otherwise known as “spam” emails.  Complainant prides itself on being an “opt-in” advertising database and Complainant works hard to ensure that it sends only solicited emails. 

Respondent’s unsolicited email advertisements end with the following statement:  “You are receiving this email from PostmasterDirectmail in response to your request for more information while registering for email.  If you would prefer not to receive marketing messages from us, please send an email to unsubscribe@postmasterdirectmail.com.”  This statement is false because the email address returns emails as “undeliverable.”  Therefore, no way exists for the recipients to unsubscribe from Respondent’s “spam” emails.

DISCUSSION

Paragraph 15(a) of 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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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.

Identical to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the POSTMASTERDIRECT mark through registration with the USPTO and by continuous use in commerce since 1996.

The domain name registered by Respondent, <postmasterdirectmail.com>, wholly incorporates Complainant’s POSTMASTERDIRECT mark with the addition of the word “mail.”  Since Complainant extensively uses its mark in association with its “opt-in” email marketing services, the addition of the business related word “mail” to the mark only has the potential to cause confusion.  Therefore, Respondent’s <postmasterdirectmail.com> domain name is not distinguishable from Complainant’s POSTMASTERDIRECT mark and the domain name is confusingly similar to the mark under Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Complainant alleged that Respondent has no rights or legitimate interests in the domain name and no authority from Complainant to use its mark.  Allegations and proof with the Complaint effectively shift the burden of proof to Respondent to articulate valid rights or legitimate interests in the domain name.  Respondent failed to do so. Respondent did not answer the Complaint and the Panel is permitted to find that Respondent has no such rights or legitimate interests in the domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Furthermore, since Respondent did not come forward with a Response in this proceeding, Complainant’s allegations are accepted as true and all reasonable inferences may be drawn in favor of Complainant.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Respondent does not actively use the <postmasterdirectmail.com> domain name as a website.  Respondent uses the domain name in the context of “spam” mass emailings.  Respondent falsely claims that unsolicited emails may be avoided by sending an email to <unsubscribe@postmasterdirectmail.com>, which is an address that returns emails as “undeliverable.”  Respondent’s misleading use of the domain name does not represent a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it does not constitute a legitimate fair use pursuant to Policy ¶ 4(c)(iii).  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”).

Respondent has shown no business affiliation with Complainant and Complainant has stated that Respondent is not authorized to use Complainant’s POSTMASTERDIRECT mark for any reason.  Moreover, Complainant urges that Respondent is not commonly known by the <postmasterdirectmail.com> domain name and Respondent has not come forward to challenge those contentions.  Therefore, Respondent has no rights or legitimate interests in the <postmasterdirectmail.com> domain name under Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <postmasterdirectmail.com> domain name; thus, Policy ¶ 4(a)(iii) has been satisfied. 

Registration and Use in Bad Faith

Respondent operates in the e-commerce marketing industry along with Complainant, but Respondent does not seek to send out marketing emails to subscribers only.  Respondent sends out emails based on random selection, which is referred to as “spam” emails.  Respondent uses the <postmasterdirectmail.com> domain name in its “spam” emails, which tends to blur the line between Complainant and Respondent.  Complainant works hard at servicing “opt-in” customers only.  Therefore, Respondent’s use of the domain name in its “spam” emails disrupts Complainant’s business, and is considered bad faith registration and use under Policy ¶ 4(b)(iii).  See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7,2000) (defining “competitor” as "…one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area).

In addition, Respondent presumably engages in this conduct for financial benefit from sending out the “spam” emails.  Since Respondent’s services are substantially similar to Complainant’s and Respondent incorporates the <postmasterdirectmail.com> domain name in its “spam” emails, there exists a high likelihood of consumer confusion as to Complainant’s affiliation with Respondent’s emails.  Hence, Respondent’s behavior represents bad faith registration and use under Policy ¶ 4(b)(iv).  See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, with intent to attract users to a direct competitor of Complainant); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.

Accordingly, it is Ordered that the domain name <postmasterdirectmail.com> be transferred from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: October 30, 2002.

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