Progress Rail Services Corporation v. John Woods
Claim Number: FA1906001849692
Complainant is Progress Rail Services Corporation (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, Washington, DC, USA. Respondent is John Woods (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <progressreil.com>, registered with NameCheap, Inc..
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 25, 2019; the Forum received payment on June 25, 2019.
On June 26, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <progressreil.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement 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 June 27, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 2019 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@progressreil.com. Also on June 27, 2019, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On July 22, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the largest integrated and diversified providers of rolling stock and infrastructure solutions and technologies for global rail customers. Complainant has rights in the PROGRESS RAIL SERVICES mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,047,996, registered Jan. 24, 2006). Complainant has rights in the PROGRESS RAIL mark through its registration of the mark with the European Union Intellectual Property Office (“EUIPO”) (e.g. Reg. No. 007555691, registered Aug. 6, 2009). Respondent’s <progressreil.com> domain name is identical or confusingly similar to Complainant’s mark as it wholly incorporates Complainant’s PROGRESS RAIL mark but changes the letter “a” to the letter “e,” adds the generic term “services,” and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <progressreil.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass itself off as an employee of Respondent in an attempt to commit fraud. Respondent also displays sponsored advertisements on the resolving webpage. Respondent also engages in typosquatting.
Respondent registered and uses the <progressreil.com> domain name in bad faith. Respondent uses the disputed domain name to pass itself off as an employee of Complainant’s business in an attempt to commit fraud. Respondent engages in typoquatting. Finally, Respondent had knowledge of Complainant’s rights in the mark at the time of registration based on the fame of Complainant’s mark and Respondent’s use of the mark to pass itself off as Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <progressreil.com> domain name.
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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules 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; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
Complainant asserts rights in the PROGRESS RAIL SERVICES and PROGRESS RAIL marks based on registration with the USPTO and EUIPO, respectively. Registration of a mark with the multiple trademark agencies around the world sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Complainant provides copies of its registration with the USPTO (e.g. Reg. No. 3,047,996, registered Jan. 24, 2006) and the EUIPO (e.g. Reg. No. 007555691, registered Aug. 6, 2009). The Panel finds that Complainant has established rights in the PROGRESS RAIL SERVICES and PROGRESS RAIL marks for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <progressreil.com> domain name is identical or confusingly similar to Complainant’s mark as the <progressreil.com> domain name wholly incorporates Complainant’s PROGRESS RAIL mark but changes the letter “a” to the letter “e,” adds the generic term “services,” and adds the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (“Changing a single letter (especially when it is the final letter) is a minor enough change to support a finding of confusing similarity under Policy ¶ 4(a)(i).”). The Panel finds that the <progressreil.com> domain name is confusingly similar to the PROGRESS RAIL mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”). The Panel finds that Complainant has made a prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <progressreil.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the PROGRESS RAIL mark or register domain names using Complainant’s mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “John Woods,” and there is no other evidence to suggest that Respondent was authorized to use the PROGRESS RAIL mark. The Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends Respondent fails to use the <progressreil.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to pass off as an employee of Respondent in an attempt to commit fraud. Use of a disputed domain name to pass off as a complainant through emails may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”). Complainant provides screenshots of emails from an email associated with the disputed domain name which purportedly solicit payment from one of Complainant’s customers. The Panel finds Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant also asserts that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <progressreil.com> domain name as Respondent displays sponsored advertisements on the resolving webpage. Using a disputed domain name to display hyperlinks and advertisements may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Complainant provides a screenshot of the resolving webpage of the disputed domain name which Complainant argues displays sponsored advertisements. The exhibit provided by Complainant displays a disclaimer message regarding sponsored listings on the resolving webpage, but Complainant does not provide screenshots of the purported advertisements. The Panel finds Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues Respondent lacks rights or legitimate interest in the <progressreil.com> domain name as Respondent engages in typosquatting. Typosquatting can be evidence of a lack of rights or legitimate interest in a disputed domain name per Policy ¶ 4(a)(ii). See Webster Financial Corporation and Webster Bank, National Assocation v. Pham Dinh Nhut, FA1502001605819 (Forum Apr. 17, 2015) (“Respondent’s acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).”) Complainant argues that Respondent changes the letter “a” to the letter “e” in Complainant’s PROGRESS RAIL mark in the disputed domain name which constitutes typosquatting. The Panel agrees and finds that Respondent lack of rights or legitimate interest in the disputed domain name per Policy ¶ 4(a)(ii).
Complainant has proved this element.
Complainant argues Respondent registered and uses the <progressreil.com> domain name in bad faith as Respondent uses the disputed domain name to pass itself off as an employee of Complainant’s business in an attempt to commit fraud. Using a disputed domain name to pass off as an employee of a complainant via email can demonstrate bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). Complainant provides screenshots of emails from an email associated with the disputed domain name which purportedly solicit payment from one of Complainant’s customers. The Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b) (iii) and (iv).
Complainant alleges Respondent registered the <progressreil.com> domain name in bad faith as Respondent had knowledge of Complainant’s rights in the mark at the time of registration based on the fame of Complainant’s mark and Respondent’s use of the mark to pass itself off as Complainant. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). The Panel may recall Complainant provides screenshots of emails from an email associated with the disputed domain name which purportedly solicit payment from one of Complainant’s customers. The Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <progressreil.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: July 29, 2019
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