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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pitney Bowes Inc. v. Mike Ostanik

Case No. D2000-1611

 

1. The Parties

1.1 Complainant is Pitney Bowes Inc., a corporation organized under the laws of the State of Delaware, U.S.A. ("Complainant"). Complainant is represented by Fross Zelnick Lehrman & Zissu, P.C. Respondent is Mike Ostanik, located at 6242 Ferris Square, San Diego, California 92121, U.S.A. Mr. Ostanik is the Vice-President of American Mailing Equipment.

 

2. The Domain Name and Registrar

2.1 The domain name which is the subject of this proceeding is "pitneybowe.com". The domain name is registered with Network Solutions, Inc., Herndon, Virginia, USA.

 

3. Procedural History

3.1 Complaint (e-mail version/hard copy) received on November 20, 2000/November 23, 2000.

3.2 Receipt of Complaint was acknowledged on November 24, 2000.

3.3 Registrar’s Verification to Request for Verification was submitted on November 30, 2000.

3.4 Formal Requirements Compliance Checklist was submitted on December 1, 2000.

3.5 Notification of Complaint and Commencement of Administrative Proceeding was submitted on December 1, 2000.

3.6 Notification of Respondent Default was submitted on December 21, 2000.

3.7 E-mail Communication with Respondent’s Technical Contact was submitted on December 26 to 27, 2000.

 

4. Factual Background

4.1 Pitney Bowes was established in 1920 by the merger of the Universal Stamp Machine Company and the American Postage Meter Company. For nearly eighty (80) years, Pitney Bowes has been the recognized leader in the field of mail processing.

4.2 When Pitney Bowes first began doing business in 1920, it was, primarily, a "mail and meter" company, providing goods and services that allowed companies to enhance the ease and efficiency of their mail processing. Since then, while maintaining its position as the world leader in mail processing, Pitney Bowes has become a worldwide leader in providing fax and copier systems, as well as in business outsourcing, digital document management, and financial services. Although its origins are in the United States, Pitney Bowes conducts business in 118 countries around the world through both dealer and direct sales operations. Pitney Bowes has a variety of companies and divisions. Pitney Bowes’ mailing division provides customers with advanced mailing solutions including address list management, envelope addressing, folding, inserting, weighing, postal and private carrier rating, postage metering and accounting solutions. Pitney Bowes provides the hardware and software that processes physical mail as well as electronic services and products to securely handle email, shipping, message routing and Internet postage metering. Some of the other divisions of Pitney Bowes are Pitney Bowes Management Services, Pitney Bowes Office Systems, Pitney Bowes Office Direct, PitneyWorks.com, Pitney Bowes Software Solutions, Pitney Bowes Financial Services, and Pitney Bowes Production Mail.

4.3 Among the products provided under the PITNEY BOWES mark are the Paragon® II Mail Processor, the Galaxy® Digital Mailing Machine, the PostPerfect® Postage Meter and the PersonalPost™ Postage Meter, to name just a few. These products cover a broad spectrum of customer needs with respect to mail processing, depending on the requirements of the customer. The products are capable of serving customers who have needs for high volume systems, such as large mailroom environments as well as customers that are in a small office environment. With a customer base of over two million, Pitney Bowes offers a wide variety of goods and services designed to meet its customers’ needs. In the 1999 calendar year, Complainant provided in excess of $4 billion worth of goods and services to its customers under the PITNEY BOWES mark.

4.4 Pitney Bowes is the leading provider of postage metering systems in, among other countries, the United States, Canada, the United Kingdom, Sweden, Denmark, Greece, Norway, Japan, Mexico and Australia. Since the United States, Canada and the United Kingdom together generate over 45% of the world’s mail volume, Pitney Bowes is effectively the leading provider of mail and messaging management in the world. This position is further secured by the fact that Pitney Bowes is one of the top three providers of postage metering systems in most every industrialized nation worldwide.

4.5 In 1995, Pitney Bowes acquired the domain name pitneybowes.com. Pitney Bowes has had a website available at the URL www.pitneybowes.com since at least June, 1995. As of October 2000, it is estimated that on average there are approximately 6,000 daily visitors to the website.

4.6 Pitney Bowes advertises its goods and services under the PITNEY BOWES mark on television, radio and in various industry publications such as: Mailing & Shipping Technology and Mail: The Journal Of Communication Distribution. Furthermore, for at least the last ten consecutive years, Pitney Bowes has promoted its goods and services all under the PITNEY BOWES mark at the following industry trade shows: Xplor, National Postal Forum, Postal EXPO, MAILCOM and CeBIT-Hanover Fair.

4.7 Pitney Bowes owns three registrations for the PITNEY BOWES mark in the United States showing use of the mark since as early as 1921. The registrations are incontestable under the U.S. Trademark Act, 15 U.S.C. §1065, and, as such, are conclusive evidence of Complainant’s exclusive rights to the mark.

4.8 In addition, Pitney Bowes owns registrations for the PITNEY BOWES mark in 99 other countries worldwide. All of the applications for registration were filed prior to May 25, 1999, the date that Respondent obtained the domain name pitneybowe.com.

 

5. Parties’ Contentions

A. Complainant

5.1 On May 25, 1999 Mike Ostanik who, upon information and belief, is the Vice-President and Secretary of American Mailing Equipment, registered the domain name pitneybowe.com. As of that date, Complainant had been using the PITNEY BOWES mark for more than 75 years, had obtained three incontestable trademark registrations for its mark in the U.S., had registered the mark in 99 other countries, and had registered and was using the domain name pitneybowes.com.

5.2 There has never been any relationship between Pitney Bowes and either American Mailing Equipment or Mike Ostanik the Respondent. Neither the Respondent nor his company have ever been an authorized dealer, retailer or reseller of genuine Pitney Bowes’ products and neither have ever been authorized to use the PITNEY BOWES mark.

5.3 Respondent is using the domain name pitneybowe.com to connect to American Mailing Equipment's website. American Mailing Equipment provides goods and services that are directly competitive to those provided by Pitney Bowes.

5.4 On September 18, 2000, Pitney Bowes sent a demand letter to American Mailing Equipment. The demand letter requested the Respondent cease using pitneybowe.com and convey ownership of the domain name to Pitney Bowes. On October 16, 2000, Pitney Bowes received a response from the Respondent. Respondent attempts to justify the use and registration of pitneybowe.com on the grounds that the company resells Pitney Bowes equipment. It is evident from the letter and from Respondent’s website that Pitney Bowes is one of many brands that are sold by Respondent's company through the pitneybowe.com website. Furthermore, American Mailing Equipment’s letterhead as well as its website indicate that the company is an authorized dealer of Neopost, a French company that Pitney Bowes competes with internationally.

5.5 In order to prevail under the Policy, Complainant must show that it has rights in the PITNEY BOWES mark; that pitneybowe.com is identical or confusingly similar to Complainant’s PITNEY BOWES mark; that Respondent has no rights or legitimate interest in pitneybowe.com; and that pitneybowe.com was registered and used in bad faith. As shown below, it is undeniable that Complainant has met its burden.

5.6 There can be no dispute but that Complainant has strong rights in the PITNEY BOWES mark. The existence of its incontestable, valid and subsisting trademark registrations for the mark in the United States Patent and Trademark Office is sufficient to establish Complainant’s rights. See Bennett Coleman & Co., Ltd. v. Steven S. Lalwani, WIPO Case D2000-0014-0015. Moreover, the extensive use made by Complainant of its mark and trade name throughout the world, make it clear that Complainant has sufficient rights in its PITNEY BOWES mark so that it can invoke the Policy.

5.7 Respondent's domain name pitneybowes.com is essentially identical to Complainant's registered PITNEY BOWES mark. The fact that Respondent left off the final "s" is no doubt due to the fact that pitneybowes.com was already registered to Complainant. Respondent obviously selected a domain name that would be as close as possible to Complainant’s famous PITNEY BOWES mark. Certainly any Internet search performed to find Pitney Bowes will prominently list Respondent’s URL in its search results. As such, Complainant has satisfied the element of the Policy that requires Respondent’s domain name to be identical or confusingly similar to Complainant's mark. The Channel Tunnel Group Ltd. v. John Powell, WIPO D2000-0038.

5.8 Numerous facts exist here to show that Respondent can demonstrate no legitimate rights to use pitneybowe.com. First, the registration was obtained after Complainant had obtained three federal trademark registrations for its PITNEY BOWES mark in the U.S., after, Complainant had registered PITNEY BOWES worldwide, after Complainant had been extensively using its mark, and after Complainant had obtained the domain name pitneybowes.com. This suggests a lack of any rights by Respondent. See Fiber-Shield Industries, Inc. v. Fiber Shield LTD, NAF 1000092054.

5.9 Respondent cannot claim or show any rights to pitneybowe.com that are superior to Complainant’s rights in the PITNEY BOWES mark, nor can Respondent, a direct competitor of Pitney Bowes, demonstrate that it was unaware of the PITNEY BOWES mark at the time it registered pitneybowe.com. Indeed, it is precisely because of the fame and recognition of the PITNEY BOWES mark that Respondent took pitneybowe.com as a domain name.

5.10 Third, there exists no relationship between Complainant and Respondent that would give rise to any license, permission or authorization by which Respondent could use pitneybowe.com. Under the circumstances, Respondent cannot show any rights in the pitneybowe.com domain name. See e.g., Serta, Inc. v. Maximum Investment Corporation, WIPO D2000-0123. See also Guerlain S.A. v. H I Investments, WIPO D2000-0494 (no rights found where Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for a domain name incorporating its trademark).

5.11 Respondent also cannot show any legitimate interest in using Complainant's PITNEY BOWES trademark as a domain name. While Respondent purports to resell original Pitney Bowes’ equipment on its website, as well as goods of other competitors of Complainant, this neither gives Respondent any rights in the PITNEY BOWES mark or the domain name pitneybowe.com nor does it make Respondent's use of pitneybowe.com legitimate. As explained by the panel in Chanel, Inc. v. Estco Technology Group, WIPO D2000-0413, legitimate use of a domain name under the policy must be non-infringing use. Where, as here, Respondent is using a famous mark as a domain name it constitutes non-legitimate infringing use since it has the effect of attracting the public to Respondent's website by trading on the trademark owner’s goodwill. See also Motorola, Inc. v. NewGate Internet, Inc., WIPO D2000-0079 ("the right to resell products does not create the right to use a mark more extensively then required to advertise and sell the product. The use of a mark as a domain name clearly goes further than what is required merely to resell products.")

5.12 The federal courts concur with this analysis. Thus, in Paccar, Inc. v. Telescan Technologies, LLC, 2000 U.S. Dist. LEXIS 12857 (E.D. Mich. 2000), the Court found that the defendant’s use of domain names that consisted of plaintiff’s trademarks constituted trademark infringement and therefore was not legitimate or justifiable. In that case, the domain names consisted of plaintiff’s trucking marks such as Peterbilt and Kenworth. The domain names were connected to websites providing truck locator services. The defendant argued that it was using the marks simply to describe what was on its websites, an argument similar to the one Respondent makes here. The District Court rejected this argument finding that the use of the plaintiff’s trademarks in or as domain names was not a legitimate use. The court held that by using the plaintiff’s trademarks in a domain name, it "sends a message to Internet users that the web site is associated with, or sponsored by the company owning the trademarks . . ..".

5.13 Given that Respondent (a) has never been an authorized sales representative of Pitney Bowes; (b) has never been licensed to use the PITNEY BOWES mark; (c) has never received any approval, expressed or implied, to use the mark in or as part of a domain name; (d) has never received any approval, expressed or implied, to resell Pitney Bowes equipment on its website; and (e) is using Complainant’s trademark as a domain name to bring people to a website that offers goods and services not authorized by Pitney Bowes and competitive to those of Pitney Bowes, Respondent’s use of the domain name cannot be legitimate.

5.14 Complainant also has satisfied the final element of the policy that the Respondent registered and used the domain name in bad faith. First, the fact that Respondent has taken essentially Complaint's mark as its domain name is evidence of bad faith. Chernow Communication, Inc. v. Jonathan Kimball, WIPO D2000-0119. Second, the fact that Respondent registered a misspelling of Complainant’s mark (by deleting the final "s") only further supports a finding of bad faith since the misspelling is designed to create confusion with Complainant. Reuters Limited v. Global Net 2000, Inc., WIPO D2000-0441. See also Encyclopaedia Britannica, Inc. v. John Zuccarini, WIPO D2000-0330 (registration of a misspelling of a mark allows the Respondent to take "advantage of consumers’ known disposition to misspell domain names . . ."); InfoSpace.com, Inc. v. Blanck, WIPO D2000-0069 (registration of domain name that takes advantage of typographical errors constitutes bad faith).

5.15 Internet users are likely to believe that the URL pitneybowe.com is connected to a website associated with or sponsored by Complainant. By using Complainant’s mark as its domain name, Respondent is attempting to create an association with Complainant and to usurp Complainant’s goodwill in violation of the U.S. federal law of trademark infringement and unfair competition, 15 U.S.C., § 1052, et. seq. Because the ultimate effect of any use of pitneybowe.com will be to cause confusion with Pitney Bowes, the use and registration of the domain name must be considered to be in bad faith. See Embratel v. McCarthy, WIPO D2000-0164; Forte (UK) Ltd. v. Ceschel, WIPO D2000-0283.

5.16 Under the Policy, evidence of registration and use in bad faith includes registering the domain name primarily for purposes of interrupting the business of a competitor (Policy ¶ 4(b)(iii)) and using the domain name to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion. See Policy ¶ 4(b)(iv). Here, the Respondent’s domain name copies and trades on Complainant’s famous PITNEY BOWES mark. The effect is that consumers looking for Complainant are misdirected to Respondent's website and that Respondent obtains a commercial advantage from using Complainant’s trademark. Having attracted consumers to its website by causing confusion with Complainant, Respondent can then try to offer Internet users goods and services that compete with Complainant’s. As such, Respondent is siphoning off the goodwill in the PITNEY BOWES name for its own commercial benefit. This constitutes bad faith. Chanel, Inc. v. Estco Technology Group, WIPO D2000-0413 (deliberate use of Complainant’s mark as a domain name will mislead public); Zwack Unicom Rt. V. Erica J. Duna, WIPO D2000-0037 (bad faith use where Complainant's mark used in domain name that connects to website of Complainant's competitor) .

5.17 Bad faith can be found from the fact that Respondent is located in the U.S. where Complainant has three incontestable registrations for the PITNEY BOWES mark. Clearly, Respondent knew of the fame of the PITNEY BOWES mark when it registered pitneybowe.com. Indeed, the only reason to register it was to take advantage of that recognition and to attract Complainant’s customers. Under U.S. trademark law, Respondent is deemed to have been on constructive, if not actual, notice of Complainant's rights in its mark before it obtained the pitneybowe.com domain name. Given this awareness, it is evident that the registration and use of the domain name was in bad faith. See Cellular One Group v. Paul Bryan, WIPO D2000-0028; Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO D2000-0119.

5.18 There can be no dispute that PITNEY BOWES is an immediately recognizable and famous mark that exclusively identifies Complainant. Nor could there be any dispute that the URL pitneybowe.com would be associated in consumers’ minds with Complainant. Given that Respondent has never been authorized by Complainant to use the PITNEY BOWES mark, the very fact that Respondent has registered pitneybowe.com establishes bad faith use and registration. See e.g. Pharmacia & Upjohn Company v. Moreonline, WIPO D2000-0134; Heel Quick, Inc. v. Michael Goldman, et al, NAF 92527 (registration of domain name comprised of Complainant’s mark found to be in bad faith since it can mislead the public into thinking registrant owns the name).

5.19 The fact that Respondent may be offering for sale PITNEY BOWES equipment does not provide it with any justification for the registration of the domain name pitneybowe.com. Case after case has recognized that there is a distinction between using a company's trademark on a web page and using that trademark as a domain name. Thus, for example, in Chanel, Inc. v. Estco Technology Group, WIPO D2000-00413, the panelist found that use of a famous mark as a domain name is in bad faith since it is likely to cause confusion. Similarly in Motorola, Inc. v. Newgate Internet Inc., WIPO D2000-0079, the panel distinguished between the right to resell products and the right to use a trademark as a domain name, noting that the latter would be in bad faith since it would create confusion. Recently, in Gorstew Limited & Unique Vacations, Inc. v. Twinsburg Travel, NAF-95424, the panel found that even where the respondent was a travel agent authorized by the complainant to sell Beaches Resorts, the travel agent was not entitled to register as a domain name beachesresorts.com. The registration of this domain name was found to constitute registration and use in bad faith since it would lead internet users to believe that the respondent's web site is the official home page of Beaches Resorts. Similarly, in Canon Kabushiki Kaisha v. Price-Less Ink Jet Cartridge Company, WIPO D2000-0878, the panel found that the registration of the domain name canoninkjets.com in connection with a web site that promoted the sale of replacement ink cartridges for ink jet printers, including Canon printers, violated the policy and constituted bad faith use and registration since the respondent knew of the complainant's trademark before registering the domain name and the domain name was being used in an attempt to attract, for commercial gain, internet users to the respondent's web site. The same results should obtain here.

B. Respondent

5.20 Respondent is in default and has not filed a Response.

 

6. Discussion and Findings

6.1 Complainant must prove each of the following three elements set forth in the Uniform Domain Name Dispute Resolution Policy Paragraph 4(a), namely (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. The Panel will now look at each one of the elements to determine if Complainant has met its burden of proof.

6.2 The Panel has reviewed the evidence submitted by the Complainant concerning ownership of the trademark PITNEY BOWES and is satisfied that the Complainant has proven trademark rights in such term. Furthermore, the Panel finds that the domain name <pitneybowe.com> is confusingly similar to the trademark in which the Complainant has rights.

6.3 The record does not show any legitimate non-commercial use or fair use by Respondent. The Panel hereby finds that Respondent has not shown any legitimate rights in the domain name.

6.4 Finally, the Panel needs to examine the issue of bad faith. The Panel has reviewed the authority cited in Paragraphs 5.14 - 5.19 above and finds it persuasive. Moreover, the record does not include rebuttal arguments or evidence by Respondent. Accordingly, the Panel finds that Complainant has met its burden of proof as to Policy 4(a)(iii) in that the domain name was registered and is being used in bad faith.

 

7. Decision

7.1 The Panel decides that the domain name <pitneybowe.com> is identical or confusingly similar to the trademarks of Complainant, that Respondent has no rights or legitimate interests in such domain name, and that the domain name in issue has been registered and is being used in bad faith.

7.2 The Panel hereby orders that the registration of the domain name <pitneybowe.com> be transferred to Complainant.

 

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Clark W. Lackert
Sole Panelist

Date: January 24, 2001