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Generic Top Level Domain Name (gTLD) Decisions |
US Bancorp Licensing, Inc. v. United
Parcel Service of America, Inc.
Claim Number: FA0111000102616
PARTIES
The
Complainant is U.S. Bancorp Licensing,
Inc., Minneapolis, MN (“Complainant”) represented by Michael L. Gannon, of Fish
& Richardson P.C., P.A.. The
Respondent is United Parcel Service of
America, Inc., Mahwah, NJ (“Respondent”) represented by Keith E. Sharkin, of King & Spalding.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <powertrack.com> and <powertrack.org>,
registered with Network Solutions, Inc.
PANEL
The
undersigned certifies that they have acted independently and impartially and to
the best of their knowledge, have no known conflict
in serving as Panelists in
this proceeding.
John
J. Upchurch, G. Gervaise Davis, III and M. Scott Donahey as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on November 28, 2001; the Forum received
a hard copy of the
Complaint on November 30, 2001.
On
November 29, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum
that the domain names <powertrack.com> and <powertrack.org>
are registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. 5.0 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
November 30, 2001, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of December 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@powertrack.com, postmaster@powertrack.org
by e-mail.
A
timely Response was received and determined to be complete on December 20, 2001.
Complainant
filed its Additional Written Statement of Complaint on December 26, 2001. Respondent filed its Additional Written
Statement on December 31, 2001.
On January 4, 2002, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the Forum appointed John J.
Upchurch, G. Gervaise Davis, III and M. Scott Donahey, as Panelists.
On
January 25, 2002 the Panel entered its Order For Additional Submissions and
Extending Time for Rendering Decision.
On
February 12, 2002 Complainant filed its Additional Submissions under Rule 12 of
the UDRP. On February 27, 2002
Respondent filed its Additional Submission.
On March 4, 2002 Complainant filed its Reply Brief.
RELIEF SOUGHT
The
Complainant requests that the domain names be transferred from the Respondent
to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Respondent’s
<powertrack.com> and <powertrack.org> domain names
are confusingly similar to Complainant’s POWERTRACK and POWERTRACK and Design
trademarks.
Respondent
does not have rights or legitimate interests in <powertrack.com>
and <powertrack.org>.
Respondent
registered and used the <powertrack.com> and <powertrack.org>
domain names in bad faith.
B.
Respondent
There
is no confusing similarity between Complainant’s trademarks and the disputed
domain names.
Respondent
does have rights or legitimate interests in <powertrack.com> and <powertrack.org>.
Respondent
did not register the <powertrack.com> and <powertrack.org>
domain names in bad faith.
FINDINGS
We find for the Complainant. The subject domain names, <powertrack.com>
and <powertrack.org> are identical in every material respect to
the trademarks set forth in the Complaint and in which Complainant has
rights.
Respondent has failed to demonstrate any
rights or legitimate interests in the subject domain names which it registered
but is not
using.
We find that the domain names at issue
were registered for the primary purpose of disrupting the business of
Complainant, a competitor,
and were accordingly registered in 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:
(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.
Identical and/or Confusingly Similar
Respondent's <powertrack.com>
and <powertrack.org> domain names are identical to Complainant's
mark because they incorporate the entirety of Complainant's mark and merely add
“.com”
and “.org”, respectively. The
addition of a top-level domain indicator such as “.com” or “.org” does not
sufficiently distinguish the domain name in order to
create a distinct mark
capable of overcoming a claim of identical or confusing similarity. See Snow Fun, Inc. v. O'Connor, FA 96578
(Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name
<termquote.com> is identical to Complainant’s TERMQUOTE
mark); see
also Amherst v. IFC Corp., FA 96768 (Nat. Arb. Forum Apr. 3, 2001)
(finding that Respondent’s domain name <customcommerce.com> is identical
to Complainant’s
CUSTOM COMMERCE trademark registration).
Rights or Legitimate Interests
Respondent
argues a number of points and facts for the proposition that it registered the
domain names in question in good faith and
for future use, and that it
therefore has rights or legitimate interests in them. The Panel finds these arguments untenable, especially given the
negotiations between the parties, the timing of the registration,
and the
delaying tactics of Respondent in relationship to Complainant’s several
requests that they be signed over to Complainant
because they were identical to
Complainant’s trademarks. Furthermore,
these arguments of Respondent are all the more untenable when considering the
fact that Respondent is even now not using
the domain name for any bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) and that Respondent
has never made use of the disputed domain names
since they were first registered by Respondent in September 1999. It has been held that passively holding a
domain name for over a year without constructing a website is not a bona fide
use, because
mere registration of a domain name is not enough to create
legitimate rights and interests. See
Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding
that no rights or legitimate interest can be found when Respondent fails to use
disputed domain names in any way); see also American Home Prod. Corp. v.
Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or
legitimate interests in the domain name <solgarvitamins.com> where
Respondent
merely passively held the domain name). In the view of this Panel,
passive non-use of a domain name alone
might not be sufficient to find a lack of rights, but the combination of facts
here convinces us that Respondent has no legitimate
claim to the domains at
issue and never did.
Further,
Respondent is not known as <powertrack.com> or <powertrack.org>
and has not otherwise demonstrated any rights or legitimate interests in the
disputed domain names pursuant to Policy ¶ 4(c)(ii). See 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); see also CBS
Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000)
(finding that Respondent has failed to demonstrate any rights or legitimate
interests in the <twilight-zone.net>
domain name since Complainant had
been using the TWILIGHT ZONE mark since 1959).
Registration and Use in Bad Faith
Complainant
and Respondent are direct competitors in the fields of supply chain management,
e-commerce, and financial services.
This is true now, as it was in September of 1999 when Respondent
registered the subject domain names, as is apparent from an examination
of the
declarations of Complainant’s witnesses and Respondent’s 1999 form 10-K. We reject the notion that the parties are
not competitors; parties do not have to be competitors in all lines of business
to be competitors
for purposes of the UDRP evidentiary tests.
Respondent
registered the POWERTRACK domain names during the course of negotiating a
“PowerTrack Carrier Agreement” with Complainant. During the approximately three years of negotiations the parties
were in regular contact with one another, during which time Complainant
provided
Respondent with a variety of promotional literature, marketing materials, and
draft agreements, each piece of which bore
the POWERTRACK® mark. Given the extent of communications between
the parties prior to Respondent’s registration of the POWERTRACK domain names,
it is not
credible to conclude that Respondent was not fully aware of
Complainant’s POWERTRACK service mark.
The timing and relationship of Respondent’s registration of the
POWERTRACK domain names to the parties’ negotiations plainly demonstrate
Respondent’s intent to “disrupt the business of a competitor.” See UDRP § 4(b)(iii)
Accordingly,
we find that Respondent registered the disputed domain names with the intent to
disrupt Complainant's business and prevent
Complainant from reflecting its
trademark in a corresponding domain name.
This behavior is evidence of bad faith pursuant to Policy ¶
4(b)(ii). See EthnicGrocer.com,
Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7,
2000) (finding that the minor degree of variation from the Complainant's marks
suggests that
the Respondent, the Complainant’s competitor, registered the
names primarily for the purpose of disrupting the Complainant's business);
see
also Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802
(WIPO Sept. 9, 2000) (finding that “Registration of a domain name (by
Respondent that incorporates another’s trademark)
goes further than merely
correctly using in an advertisement the trade mark of another in connection
with that other’s goods or services;
it prevents the trade mark owner from reflecting
that mark in a corresponding domain name”).
DECISION
Having established all three elements
required under the ICANN policy, the Panel concludes that the requested relief
should be granted.
Accordingly, it is ordered that the
domain names <powertrack.com> and <powertrack.org> be
transferred from Respondent to the Complainant.
Dated:
March 13, 2002
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