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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

United Parcel Service of America Inc. v. Advanced Express.com

Case No. D2007-0080

 

1. The Parties

The Complainant is United Parcel Service of America Inc., Atlanta, Georgia, United States of America, represented by King & Spalding, United States of America.

The Respondent is Advanced Express.com, El Segundo, California United States of America.

2. The Domain Name and Registrar

The disputed domain name <overnitedelivery.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2007. On January 23, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On January 24, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 8, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 8, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 28, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 2, 2007.

The Center appointed William R. Towns as the sole panelist in this matter on March 14, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant is a widely - known shipping and delivery company. On August 5, 2005, the Complainant acquired Overnite Transportation Company, a leading provider of less-than-truckload (LTL) transportation. Overnite had obtained several service mark registrations for OVERNITE in the United States of America, which are valid and subsisting, and which were assigned to the Complainant in connection with this acquisition.¹ The first of these marks was registered in 1972, and the most recent was registered in 2002. The first use of the OVERNITE mark in commerce occurred in 1935.

The Respondent registered the disputed domain name, <overnitedelivery.com>, on May 4, 2005. The Respondent is a shipping and delivery company, and offers, among other services, same day delivery of packages and documents, and one day service with advertised delivery times earlier than those of Federal Express and the Complainant. The Respondent uses the disputed domain name to redirect Internet users to its commercial website at “advancedexpress.com”.

5. Parties’ Contentions

A. Complainant

The Complainant maintains that it acquired all rights, title, and interest in and to the OVERNITE mark when it purchased Overnite Transportation Company in 2005. According to the Complainant, the OVERNITE mark is well-known and famous, based on factors such as the quality of the services provided under the mark, the widespread and systematic use of the mark, and substantial revenues generated from the use of the mark.

The Complainant contends that the disputed domain name is confusingly similar to its mark. The Complainant further asserts that the Respondent has no rights or legitimate interests in the mark because the Respondent has not used the domain name in connection with a bona fide offering of goods or services, but instead is using the domain name to divert the Complainant’s customers to Respondent’s commercial website. According to the Complainant, the Respondent has not been commonly known by the domain name and has never conducted business under the domain name.

Finally, the Complainant asserts that the Respondent registered and is using the domain name in bad faith, given that the Respondent’s purpose in registering the domain name was to profit from the goodwill associated with the OVERNITE mark and to create confusion as to the Complainant’s sponsorship, affiliation or approval of the Respondent’s website or the services offered thereon. In addition, the Complainant argues that the registration of a famous mark is prima facie evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three non-exhaustive means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a number of panels have concluded that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <overnitedelivery.com> is confusingly similar to Complainant’s OVERNITE mark for purposes of paragraph 4(a)(i) of the Policy. The Complainant has established rights in the OVERNITE mark, and the disputed domain name incorporates the Complainant’s mark in its entirety. See AOL Time Warner, Inc. v. John Zuccarini, WIPO Case No. D2002-0827. At a minimum, the Complainant’s mark is entitled to a presumption of validity by virtue of its registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Further, the addition of the common term “delivery” does not dispel such confusing similarity, given that the Complainant and the Respondent are competitors in the package and document delivery business.

C. Rights or Legitimate Interests

The record reflects that the Respondent registered and is using a domain name incorporating the Complainant’s mark without the Complainant’s authorization or consent. There is no indication that the Respondent has been commonly known by the domain name. The Respondent uses the disputed domain name to redirect Internet users to its “advancedexpress.com” website, where the Respondent offers package and document delivery services that compete directly with those of the Complainant.

The Panel concludes that the Complainant had made a prima facie showing under paragraph 4(a)(ii), requiring the Respondent to come forward with evidence under paragraph 4(c) of the Policy to demonstrate rights to or legitimate interests in the disputed domain name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name was in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not submitted a formal response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.² Nevertheless, the ultimate burden of proof on the legitimacy issue remains with the Complainant. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Panel has carefully considered the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the safe harbors of paragraph 4(c) of the Policy. Nothing in the record indicates that the Respondent has been commonly known by the disputed domain name, or that the Respondent has made any noncommercial or fair use of the domain name. While the record does reflect the Respondent’s use of the disputed domain name prior to notice of this dispute to redirect Internet users to the Respondent’s “advancedexpress.com” website, such does not constitute the use of the domain in connection with a bona fide offering of goods or within the meaning of paragraph 4(c)(i).

In determining whether an offering of goods or services is bona fide under paragraph 4(c)(i), the dispositive question is often whether the use of the disputed domain name in connection with the offering otherwise constitutes bad faith registration or use of the domain name under paragraph 4(a)(iii). See, e.g., First American Funds, Inc. v. Ult.Search, Inc, WIPO Case No. D2000-1840 (for offering under paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith under paragraph 4(a)(iii)). For the reasons discussed below regarding the issue of bad faith under paragraph 4(a)(iii), the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name, having registered the domain name primarily in an attempt to profit from and exploit the goodwill developed in the Complainant’s mark by diverting Internet users to the Respondent’s website.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating 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, provided that the respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

The Panel concludes that the Respondent registered and is using the disputed domain name in bad faith. Based on the record, the Panel finds that the Respondent was aware of the Complainant and the Complainant’s rights in the OVERNITE mark, which had been used in commerce since 1935. The Respondent and the Complainant compete in the package and document delivery business, and the Panel finds that the Respondent’s likely primary motive for registering the mark was an intent to profit from and exploit the goodwill developed in the Complainant’s mark, by using the domain name to divert Internet users to the Respondent’s commercial website, creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or the services offered thereon. Accordingly, the Panel finds that the Complainant has met its burden of establishing bad faith registration and use under paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <overnitedelivery.com>, be transferred to the Complainant.

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William R. Towns
Sole Panelist

Dated: March 28, 2007

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¹ OVERNITE (registration date December 4, 1990; OVERNITE and design (registration date December 4, 1990); OVERNITE TRANSPORTATION CO. and design (registration date April 25, 1972); and ADVANTAGE OVERNITE (registration date November 26, 2002) (collectively referred to as “the OVERNITE marks”). The USPTO electronic database indicates that these registrations were assigned from Overnite to the Complainant on August 5, 2005, in connection with the Complainant’s acquisition of Overnite.

² Some panels have held that a respondent’s lack of response can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent’s failure to reply. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.