upstracking.com

United Parcel Service of America, Inc. v. Intermos/Alex Storm

Case No. D2004-0211

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 Respondents are InterMos/Alex Storm, Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <upstracking.com> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 16, 2004 (electronic version) and March 22, 2004 (hard copy). On March 19, 2004, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On March 19, 2004, eNom, Inc. transmitted by email to the Center its verification response, confirming that the Respondents are listed as the registrant and administrative, technical and billing contact, and providing the contact details for said administrative, billing, and technical contact. The Center verified that 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 Respondents of the Complaint, and the proceedings commenced on March 23, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2004. The Respondents did not submit any response. Accordingly, the Center notified the Respondent's default on April 13, 2004.

The Center appointed Kiyoshi I. Tsuru as the sole panelist in this matter on April 26, 2004. 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

Complainant is the owner of the following trademarks, inter alia:

5. Parties' Contentions

A. Complainant

A.1. Identity or Confusing Similarity

Complainant has submitted the following arguments:

Founded in 1907, Complainant is the world's largest package distribution and courier company and is the most well-known and highly regarded company in this field.

Complainant first began using the trademark UPS as early as 1933. Complainant delivers more than 3 billion packages and documents each year in the US, and in more than 200 countries around the world.

Complainant's website "www.ups.com" has approximately 10.5 million page views by visitors each day, including over 6.5 million daily tracking requests.

Complainant has extensively promoted and advertised its delivery and tracking services offered and provided under the trademark UPS. Such advertising of the UPS trademarks has been, and continues to be, extensively used and widely circulated throughout the world, including in the United States and the Russian Federation.

The disputed domain name consists of the entire mark and trade name of Complainant, with the addition of the intuitive suffix "tracking"; this phrase is descriptive, non-distinctive, and generic; the addition of words or letters to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark.

The domain name <upstracking.com> is substantially similar to the Complainant's well-known mark UPS. The use of a descriptive suffix with the mark UPS does not minimize the similarity nor does it mitigate the likelihood of confusion with the Complainant's mark.

A.2 Respondent's lack of rights or legitimate interests in respect of the domain name

Complainant argues the following:

Respondents are using the disputed domain name to mislead and confuse the public. The website "www.upstracking.com" is not active. When Internet users enter "www.upstracking.com" into their browsers, they are immediately diverted to a webpage containing a pop-up advertisement that states "CONGRATULATIONS!!! YOU'VE WON VIRTUAL REALITY CASINO! CLICK on OK and Get up to +100$ Bonus on your first deposit." If the user selects "OK," he or she will be diverted to gambling websites. If he or she attempts to close these gambling webpages or selects "Cancel" on the first pop-up advertisement, the user is taken to the website "http://www.ussseek.com", an online directory with links to card games, casinos and gambling sites, inter alia.

Respondents' utilization of the disputed domain name in connection with pop-up advertisements and to divert consumers to online gambling websites is commercial activity. Respondents are using the disputed domain name as a tool to increase the amount of Internet traffic to alternative commercial websites. The use of a domain name or registered mark of another to divert users to different websites is not a bona fide offering of services.

Complainant owns trademark registrations on the mark UPS in more than 200 countries and is the registrant of the "UPS" domain name in almost every generic and top level country code domain name in the world, including <ups.com>. The use of the mark UPS by Respondents, particularly with the word "TRACKING" which is descriptive of services provided by UPS, is an infringement and dilutes the intellectual property rights of Complainant.

Neither Respondents nor their website have been commonly known by the disputed domain name or the trademark UPS. No webpage exists at the URL "http://www.upstracking.com". The disputed domain name links to several online gambling sites or an online directory entitled <usseek.com>.

Respondents' domain name is simply an effort to capitalize on the reputation and goodwill associated with Complainant's trademark UPS and to turn that recognition into additional business or "hits" for gambling websites.

Respondents' use of the disputed domain name is intended to deceive and to confuse for the sole purpose of commercial gain.

Respondents have used, and are using, the disputed domain name as a method to divert Internet users to its webpage for commercial benefit.

Respondents registered the disputed domain name long after the adoption, use, and trademark registration of the mark UPS by Complainant.

A.3 Bad faith registration and use

Respondents provided false contact information at the time of registration of the disputed domain name.

Respondents registered a famous trademark (UPS) as a domain name. Through the extensive use and registration of the trademark UPS, said mark has accrued good will of inestimable value.

Respondents are notorious cybersquatters (and cites other cases decided under the Policy, in which InterMos is the Respondent: Sterling Jewelers, Inc. v. InterMos and Cosmos1, WIPO Case No. D2002-0899, Zale Canada Co. v. Intermos, NAF Case No. FA0208000117381, Wachovia Corporation v. InterMos, NAF Case No. FA0111000102520, Bank of America Corporation v. Internos, NAF Case No. FA0006000095092). Respondents have a pattern of registering domain names, which include the famous trademarks of others.

Respondents are using Complainant's mark to drive more traffic to Respondents' gambling websites. The use of the UPS trade name without the authorization or consent of Complainant causes confusion and deceives the public and constitutes trademark infringement.

Respondents' only intention in registering the disputed domain name is to confuse and deceive the public into believing that the website is associated with Complainant's goods and services.

There is no evidence in the record showing that the disputed domain name is used for anything other than diverting users to other websites in order to achieve commercial gain.

B. Respondent

The Respondents did not reply to the Complainant's contentions.

6. Discussion and Findings

In accordance with the Policy, Paragraph 4(a), the Complainant must prove that:

"(i) the domain name in question 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 in respect of the domain name, and

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

In the administrative proceeding, the Complainant must prove that each three of these elements are present.

As Respondents have failed to submit a response to the Complaint, the Panel may choose to accept as true all of the allegations of the Complaint. Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487; Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

A. Identical or Confusingly Similar

Having analyzed the evidence submitted by the Complainant, the Panel finds that the disputed domain name <upstracking.com> is confusingly similar to Complainant's trademark UPS. The contested domain name fully incorporates the trademark UPS, which is a highly distinctive mark. The mere addition of a common term such as "TRACKING", which is a descriptive word clearly related to Complainant's business, does not change the overall impression of the designation as being a domain name connected to the Complainant and its trademark (see, for example,General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087;Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A v. Steven Shiekman, WIPO Case No. D2000-1375;The Coca-Cola Company v. Gamlebyen Invest AS, WIPO Case No. D2000-1677; PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja Kil, WIPO Case No. D2000-1409; and America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184).

The other difference between the contested domain name and the Complainants' trademark UPS, is the addition of the generic top-level domain (gTLDs) ".com" to the said domain name, which is completely without legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859, (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell,WIPO Case No. D2000-0300; J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035).

Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. (See, for example, the following decisions: The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010 (citing in turn Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp.,WIPO Case No. D2000-0464; The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113; World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

In light of the above, the Panel finds that the domain name <upstracking.com > is confusingly similar to the trademark UPS, in which Complainant has rights. The first requirement of the Policy has been met.

B. Rights or Legitimate Interests

The following are examples of circumstances where respondent may have rights or legitimate interests over a contested domain name:

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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." (Policy, Paragraph 4(c)).

The Respondents have not submitted any evidence showing that they have any rights or legitimate interests in the disputed domain names.

Respondents are using the disputed domain name in connection with pop-up advertisements that lead to gambling websites, or to a directory with links to card games, casinos or more gambling websites. The disputed domain name is confusingly similar to a highly distinctive, highly publicized and well-known trademark globally. This use cannot constitute a bona fide offering of goods or services.

Respondents have not submitted any evidence showing that they have been commonly known by the disputed domain name. In fact, InterMos is quite well known for registering domain names that incorporate the marks of others, particularly highly distinctive or well-known marks (see, for example, Sterling Jewelers, Inc. v. InterMos and Cosmos1, WIPO Case No. D2002-0899, Zale Canada Co. v. Intermos, NAF Case No. FA0208000117381, Wachovia Corporation v. InterMos, NAF Case No. FA0111000102520, Bank of America Corporation v. Internos, NAF Case No. FA0006000095092).

Respondents are making an illegitimate commercial use of the domain name, with intent for commercial gain to misleadingly divert consumers. Respondents use a domain name that is confusingly similar to Complainant's mark, without authorization or any other kind of right or legitimate interest, for commercial gain. Respondents are deviating users looking for Complainant, in order to try to obtain revenue from the hits, impressions or sales originated by diverted consumers, regarding gambling activities offered at the pop-up advertisements or online directory to which Respondents have linked the disputed domain name. Needless to say that these gambling advertisements, online directory and sites are completely unrelated to Complainant's well-known trademark and courier services. (See AltaVista Company v. Andrew Krotov WIPO Case No. D2000-1091).

The Panel thus finds that Respondents have no rights or legitimate interests in the disputed domain name. The second requirement set forth in the Policy has therefore been fulfilled.

C. Registered and Used in Bad Faith

According to Paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:

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

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location."

Respondents have provided false contact information. This may lead to a presumption of bad faith registration. (See Gruner + Jahr Printing & Publishing Co. v. Global Media Consulting,WIPO Case No. D2000-1395, Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO,WIPO Case No. D2000-0138.

Respondents entirely incorporate a well-known trademark in their domain name. Registration of a famous trademark in a domain name by a party other than the trademark owner, without authorization and absent legitimate rights or fair use exceptions, constitutes bad faith registration. (See Disney Enterprises, Inc. v. John Zuccarini, CupcakeCity and Cupcake Patrol, WIPO Case No. D2001-0489).

Respondents have engaged in a pattern of preventing the owner of the trademark from reflecting the mark in a corresponding domain name. Respondents have registered domain names like <kayjeweler.com>, <firstunionbank.com> or <wwwbankofamerica.com>(See Sterling Jewelers, Inc. v. InterMos and Cosmos1, WIPO Case No. D2002-0899, Wachovia Corporation v. InterMos, NAF Case No. FA0111000102520, Bank of America Corporation v. Internos, NAF Case No. FA0006000095092); <upstracking.com> is not the exception in this pattern of conduct. Such a conduct constitutes bad faith under Paragraph 4(b)(ii) of the Policy.

Complainant has proved that Respondents have intentionally attempted (and succeeded) to attract, apparently for commercial gain, Internet users to the advertisements, online directory and gambling websites offered by Respondents, by creating a likelihood of confusion with the Complainant's trademark (Policy, Paragraph 4(b)(iv)).Encyclopaedia Britannica Inc. v. Shedon.com, WIPO Case No. D2000-0753 suggests that using a domain name that is confusingly similar to another's trademark, to hyperlink to a gambling site constitutes bad faith. This Panel agrees. Internet users looking for Complainant are likely to be confused and mislead by Respondents' domain name <upstracking.com>, when searching the Internet for Complainants' delivery and tracking services. SeeNasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM (WIPO Case No. D2001-1492)(citing in turn Yahoo! Inc. v. Data Art Corp., (WIPO Case No. D2000-0587), Edmunds.com, Inc v. WWWEDMUNDS.com and DMUNDS.com (WIPO Case No, D2001-0937) and Pig Improvement Company, Inc. v. Platinum Net, Inc., (WIPO Case No. D2000-1594).

Complainant has thus established that the disputed domain name <upstracking.com > has been registered and is being used in bad faith. The third requirement of the Policy has therefore been fulfilled.

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 <upstracking.com> be transferred to the Complainant.

Kiyoshi I. Tsuru
Sole Panelist

Dated: May 14, 2004