Upspharmacy.com, Ups-pharmacy.com

The timeline behind upspharmacy.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION United Parcel Service of America, Inc. v. Tankie Tanka Romenus / Carmelia Pacheco Claim Number: FA2502002139228 PARTIES Complainant is United Parcel Service of America, Inc. ("Complainant"), represented by Alexandra A. Holt of Greenberg Traurig, LLP, Georgia, USA. Respondent is Tankie Tanka Romenus / Carmelia Pacheco ("Respondent"), Florida, USA. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <upspharmacy.com> and <ups-pharmacy.com>, registered with NICENIC INTERNATIONAL GROUP CO., LIMITED and Tucows Domains Inc. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. Charles A. Kuechenmeister, Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to Forum electronically on February 7, 2025; Forum received payment on February 7, 2025. On February 7, 2025, NICENIC INTERNATIONAL GROUP CO., LIMITED and Tucows Domains Inc. confirmed by e-mail to Forum that the <upspharmacy.com> and <ups-pharmacy.com> domain names are registered with NICENIC INTERNATIONAL GROUP CO., LIMITED and Tucows Domains Inc. and that Respondent is the current registrant of the names. NICENIC INTERNATIONAL GROUP CO., LIMITED and Tucows Domains Inc. have verified that Respondent is bound by the NICENIC INTERNATIONAL GROUP CO., LIMITED and Tucows Domains Inc. registration agreements and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On February 17, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of March 10, 2025 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@upspharmacy.com and postmaster@ups-pharmacy.com. Also on February 17, 2025, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts. Having received no Response from Respondent, Forum transmitted to the parties a Notification of Respondent Default. On March 11, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a Response or any other submittals from Respondent. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PRELIMINARY ISSUE: Multiple Respondents and Domain Names The Complaint names two persons as Respondents and relates to two domain names. Paragraph 3(c) of the Rules provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder." Complainant alleges that both domain names are operated by the same person or entity using different aliases. The WHOIS information furnished to Forum by the registrars lists each named Respondent as the registrant of one of the two domain names, but it also shows the same email address for both persons. The domain names were registered within a couple of months of each other (WHOIS printouts submitted as Amended Complaint Annexes 4 and 5). While the <upspharmacy.com> domain name was active, the websites resolving from both domain names were substantially identical, offering on-line medications and displaying Complainant's UPS shield and the logos of other delivery services (screenshots of websites included in Complaint). Both websites featured the same general layout and appearance, with identical color schemes and fonts. Id. These factors indicate common ownership and control. The Panel finds that both domain names are registered to the same person or entity or are under common control and will proceed as to all of them. References in this Decision to Respondent, even though in the singular, refer to the registrant of both domain names. PARTIES' CONTENTIONS A. Complainant Complainant is a well-known parcel delivery service. It has rights in the UPS mark based upon its registration of that mark with the United States Patent and Trademark Office (USPTO). Respondent's domain names are identical or confusingly similar to the UPS mark as they fully incorporate the mark, merely adding the descriptive term "pharmacy," a hyphen in one case, and a generic top level domain (gTLD). Respondent has no rights or legitimate interests in the domain names. It is not using the domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead was previously using both domain names for illegal purposes, distributing controlled substances without the requirement of a prescription, it continues to use one of the domain names for that purpose and is making no active use of the other, Complainant has not authorized Respondent to use its mark, and Respondent has not been commonly known by the domain names. Respondent registered and uses the domain names in bad faith. It was previously using both domain names for illegal purposes, distributing controlled substances without the requirement of a prescription, it continues to use one of the domain names for that purpose and is making no active use of the other, and it registered the domain names with actual knowledge of Complainant and its mark. B. Respondent Respondent did not submit a Response in this proceeding. FINDINGS Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name: (1) 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 (2) the respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. In view of Respondent's failure to submit a Response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint"), WIPO Overview 3.0, at ¶ 4.3 ("In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent's default—a complainant has failed to prove its case."). The WIPO Overview is not a definitive statement of applicable law which governs any particular issue, but it does express a consensus among a significant number of UDRP panelists as to how particular issues typically are and should be resolved. This Panelist accepts that consensus on this and other issues addressed later in this Decision. The Panel finds as follows with respect to the matters at issue in this proceeding: Identical and/or Confusingly Similar The UPS mark was registered to Complainant with the USPTO (TSDR printout submitted as Complaint Annex 10). Complainant's registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, "Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy."). Respondent's domain names are identical or confusingly similar to the UPS mark. They fully incorporate the UPS mark, merely adding the descriptive term "pharmacy," a hyphen in one case, and the ".com" gTLD. These changes do not distinguish the domain names from Complainant's mark for the purposes of Policy ¶ 4(a)(i). Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs."), ULIONA LIMITED v. Ettouil Oualid / Apk4play, FA 1983297 (Forum May 15, 2022) ("Respondent's domain name is confusingly similar to Complainant's SAVEFROM mark. It incorporates the entire mark, merely inserting a hyphen between the words "save" and "from," and adding the ".net" gTLD. These changes do not distinguish the Domain Name from Complainant's mark for the purposes of Policy ¶ 4(a)(i)."). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name." Notwithstanding the changes described above, Complainant's mark is clearly recognizable within the domain names. For the reasons set forth above, the Panel finds that the domain names are identical or confusingly similar to the UPS mark, in which Complainant has substantial and demonstrated rights. Rights or Legitimate Interests If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests"). If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1. Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii): (i) before any notice to the respondent of the dispute, the respondent has used or has made 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent 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. Complainant asserts that Respondent has no rights or legitimate interests in the domain names because (i) it is not using the domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead was previously using both domain names for illegal purposes, distributing controlled substances without the requirement of a prescription, it continues to use one of the domain names for that purpose and is making no active use of the other, Complainant has not authorized Respondent to use its mark, and Respondent has not been commonly known by the domain names. These allegations are addressed as follows: Complaint Annex 19 contains screenshots of the website resolving from the <ups-pharmacy.com> domain name as of the filing of the Complaint. It offers numerous prescription medications, including oxycodone. There is no evidence that the site sponsor requires a prescription for this or any of the other controlled substances offered for sale on this website. The website features the "UPS Pharmacy" name at the top of the first page of the site. It does not represent that it is sponsored by Complainant but there is nothing on Respondent's site to inform the visitor that it is not associated with Complainant. By using Complainant's mark in both the entity name and the domain name and an image of Complainant's registered shield logo, the website unquestionably implies some kind of association with Complainant. Complainant's services include the delivery and storage of pharmaceutical products, as demonstrated by the photos and text information submitted as Complaint Annex 15 ("Our healthcare operations have approximately 17 million square feet of GMP- and GDP- compliant healthcare distribution space to serve the complex demands of pharmaceutical, medical device, and laboratory diagnostic industries in more than 36 countries"). Respondent is passing off as some kind of authorized affiliate of Complainant. The fact that Respondent offers its products by mail order, which relates to Complainant's parcel delivery business, enhances the implied affiliation. Passing off as a complainant or authorized representative of a complainant and unlawfully offering to sell controlled substances without the requirement for a prescription does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or as a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) ("Respondent uses the [disputed] domain name to divert Internet users to Respondent's website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)."), A9.com, Inc. v. Jammy Right et al., FA 2075151 (Forum Jan. 5, 2024) ("Using a domain name to offer an illegal service such as the supply of prescription medications without a prescription is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii)."). Complainant notes that the <upspharmacy.com> domain name is presently inactive and argues that this also is evidence of a lack of rights or legitimate interests. This domain name is currently inactive (screenshot submitted as complaint Annex 18) but if, as alleged by Complainant, the domain name was changed to inactive status as of February 14, 2025, less than a month has elapsed since then and this is not sufficient time for a respondent to develop a new active website. Respondent cannot reasonably be charged at present with the passive holding of this domain name. Complainant alleges that it has not licensed or authorized Respondent to use its mark. Complainant has specific competence to make this allegation and it is not disputed. In the absence of evidence that a respondent is authorized to use a complainant's mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register Domain Name featuring the complainant's mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) ("Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name."). The WHOIS information provided to Forum by the registrar lists the persons named as Respondents as the registrants of the domain names. None of these names bears any resemblance to the domain names. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed Domain Name when the identifying information provided by WHOIS was unrelated to the Domain Name or respondent's use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the domain names for the purposes of Policy ¶ 4(c)(ii). On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the domain names. Registration and Use in Bad Faith Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has 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; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site 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 web site or location or of a product of service on the respondent 's web site or location. The evidence of Respondent's conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, by passing off as an authorized affiliate of Complainant and advertising its own products for sale, Respondent is using the confusingly similar domain name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of his web site. The evidence does not disclose whether Respondent is actually selling the products advertised on its websites or fraudulently representing that it does, collecting money from the customer but not delivering the goods. Regardless of which scenario is present here, Respondent's conduct fits squarely within the circumstances described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use. Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv)."). As discussed above, Respondent is using the domain names to pass off as an affiliate of Complainant. Policy ¶ 4(b) recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passing off as a complainant, in and of itself, is evidence of bad faith. Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant."). Next, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the domain names in March and May 2024 (WHOIS printouts submitted as Amended Complaint Annexes 4 and 5 show creation dates). Complainant began using its UPS mark at least as early as the 1933 first use date shown on the TSDR printout submitted as Complaint Annex 10, and the mark is famous as a source indicator for Complainant's parcel delivery services throughout the world, with 2023 revenues of $78 billion, 22.3 million packages and documents delivered, a service area of more than 200 countries and territories, etc. (Corporate Facts About Complainant submitted as Complaint Annex 15). More tellingly, Respondent had to have had actual knowledge of Complainant in order to advertise its products using Complainant's mark and logo. There is no question that Respondent knew of Complainant and its mark when it registered the domain names. Given the non-exclusive nature of Policy ¶ 4(b), acquiring a confusingly similar domain name with actual knowledge of a complainant's rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). For the reasons above set forth above, the Panel finds that Respondent registered and is using the domain names in bad faith within the meaning of Policy ¶ 4(a)(iii). DECISION Complainant having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <upspharmacy.com> and <ups-pharmacy.com> domain names be TRANSFERRED from Respondent to Complainant Charles A. Kuechenmeister, Panelist March 13, 2025 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.