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’”.…
