United Parcel Service of America Inc. just won a UDRP on the the Domain Name Driveups.com

UPS asserted that Respondent has no rights or legitimate interests in the disputed domain name and instead, in light of the fame of Complainant’s mark, is acting with opportunistic bad faith. Complainant points to the extensive use by Complainant of its UPS mark years prior to Respondent’s acquisition and use of the disputed domain name.

Complainant asserts that Respondent has no relationship with UPS and has no license, permission, or other authority to use the UPS mark.

Complainant notes that a simple Internet search reveals the existence of UPS’s delivery company and related trademark use.

Complainant asserts that Respondent has made no preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Rather, Complainant points to Respondent’s attempts to sell the disputed domain name to Complainant as evidence of Respondent’s intent to profit from selling the domain to UPS and not for any bona fide purpose.

Complainant asserts that Respondent acquired and used the disputed domain in bad faith.

Complainant asserts that bad faith acquisition of a domain name is sufficient to satisfy the requirement of bad faith registration.

Complainant also notes Respondent’s two attempts to sell the disputed domain name to Complainant for an amount in excess of out-of-pocket expense related to registration of the domain name.

Respondent asserts that the disputed domain name is not identical or confusingly similar to Complainant’s UPS marks. Respondent requests a finding of Reverse Domain Name Hijacking by reproducing a large quotation from a WIPO decision involving UPS and a domain name including the phrase “pickups online.”

Respondent notes that “drive-up” is in the dictionary and that “drive-ups ‘were nostalgic places of yesteryear.’”

Respondent asserts that Complainant has never used “driveups” as a trademark and further that because “driveups” is a generic term, it cannot gain trademark rights.

Respondent further argues that Complainant attempts to conflate the issue before this Panel with the irrelevant facts of Complainant’s registration of numerous domain names containing the word “drive.” Respondent further notes that Complainant has not registered the, <drive-ups.com> domain name, which remains available.

Respondent asserts that “driveups” conflicts with UPS’s trademark policy.

Respondent also notes specifically the response from a UPS brand manager that “[u]nless there’d be a driver promotion or something related to NASCAR, I can’t think of any use for it.” Thus, Respondent argues, “how proprietary or confusingly similar can this domain name be when the Brand Manager for United Parcel Service ‘can’t think of any use for it’”. (Response, p. 7.) Respondent asserts that Complainant has failed to satisfy paragraph 4(a)(i) of the Policy.

Respondent asserts that he has a legitimate interest in the disputed domain name. Respondent posits he “purchases domains at various auctions and subsequently attempts to find secondary buyers for these newly acquired domains.” (Response, p. 8.) Respondent disagrees with the proposition that offering domain names for sale is against the Policy.

Respondent asserts that he did not register or use the disputed domain name in bad faith.

Respondent notes that paragraph 4(a)(iii) is conjunctive and thus requires both bad faith registration and bad faith use; Respondent then argues that the domain name was registered in good faith. Specifically, Respondent asserts that he purchased the disputed domain name because he “immediately thought of the drive-up he frequents.” Respondent further states that he “believed and still believes that ‘driveups.com’ would be a great domain name for use as an online catalog for ‘drive-ups’: a national directory of these nostalgic places of yesteryear.”

Respondent further asserts that Complainant’s in-house counsel created the appearance of bad faith related to this domain name.

Respondent asserts that Complainant has willfully and maliciously engaged in Reverse Domain Name Hijacking, asserting that this Complaint in this dispute is “insupportable” and has no foundation whatsoever.

Here is the findings by the one member panel:

“The Panel finds that Respondent does not have any rights or legitimate interest in the use of the domain name.

Complainant has asserted that Respondent is not a licensee and has no other permission or authority to use the UPS mark; Respondent has not disputed this fact.

Complainant’s rights to the UPS mark precede registration of the disputed domain name; Respondent does not contest this fact.

Complainant asserts that Respondent is not commonly known by the domain in question; Respondent does not dispute that assertion.

Complainant also notes Respondent’s two attempts to sell the disputed domain name to Complainant for an amount in excess of out-of-pocket expense related to registration of the domain name.

Respondent’s attempts to sell the disputed domain name to Complainant evidence Respondent’s intent to profit from selling the domain to UPS and not for any bona fide purpose.

While Respondent is correct that offering for sale a domain name is not per se improper, the facts of this dispute are different both from Rising Star AG v. Moniker Privacy Services/ Domain Administrator, WIPO Case No. D2012-1246, where Complainant failed to set forth its prima facie case, and Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105, where Complainant first offered to buy the domain name.

Respondent states regarding his “legitimate interest” in the domain name that “Respondent purchases domains at various auctions and subsequently attempts to find secondary buyers for these newly acquired domains.”

It bears noting that selling a domain name incorporating UPS’s trademark back to UPS is not a legitimate use. Such activity attempts to sell UPS something that it already owns (i.e., rights in its trademark.)

Further, in light of the inclusion of Complainant’s mark in the disputed domain name and Complainant’s obvious proprietary interest in its UPS mark, the Panel disagrees with Respondent’s presumptions when he states that “[s]elling a non-proprietary ‘idea’ to a third-party, for potential future marketing, is not against policy.”

The Panel finds that Respondent registered and used the disputed domain name in bad faith.

Respondent’s assertions of good faith registration whilst thinking of an A&W drive-up in Dexter Michigan are belied by Respondent’s actions.

Specifically, Respondent offered to sell the disputed domain name in excess of the costs of registration.

Further, Respondent has stated that it is his practice to acquire domain names and sell them to “secondary buyers.”

Further, Respondent’s argument that <driveups.com> does not necessarily have anything to do with UPS—but could instead relate to “drive-ups” as a slice of Americana from “yesteryear”—is belied by the fact that Respondent contacted UPS and offered to sell the domain name to UPS within one month of acquiring the domain name.

Nothing in the record indicates that Respondent made any efforts to use the disputed domain name in any way related to “drive-ups.”

Further, in his email to UPS, Respondent capitalized the letters UPS and did not hyphenate the word as “drive-ups.”

Thus, the panel finds Respondents “drive-ups” argument to be an after-the-fact attempt to create a plausible use for registering the domain and offering it to UPS.

Respondent’s remaining arguments regarding bad faith are unpersuasive.

Specifically, the Panel notes that Respondent’s accusations of wrongdoing on the part of Complainant’s employees are ill-founded and based upon exaggeration.

Further, Respondent’s conclusory allegation of Reverse Domain Name Hijacking lacks any substance.