Rail Europe, Inc. v. Domain Administrator
Claim Number: FA1002001306769
Complainant is Rail Europe, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Administrator (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <railurope.com>, registered with Directi Internet.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 5, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.
The National Arbitration Forum made several attempts to receive verification from Directi Internet that the <railurope.com> domain name is registered with Directi Internet and that Respondent is the current registrant of the names. The Forum also made several attempts to receive verification from Directi Internet that Respondent is bound by the Directi Internet registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). Directi Internet did not reply to the Forum's verification requests.
On March 9, 2010, the Forum reported to ICANN that Directi Internet was non-compliant with the Forum's verification requests. On March 9, 2010, the Forum notified ICANN and the parties that the case would proceed without verification due to Directi Internet’s failure to comply with the Forum's verification requests.
On March 11, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 31, 2010 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@railurope.com. Also on March 11, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 9, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <railurope.com> domain name is confusingly similar to Complainant’s RAIL EUROPE mark.
2. Respondent does not have any rights or legitimate interests in the <railurope.com> domain name.
3. Respondent registered and used the <railurope.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Rail Europe, Inc., is the largest North American distributor of European rail products, offering rail passes in many European countries as well as city and hotel passes in European locations. Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its RAIL EUROPE mark (e.g. Reg. No. 2,519,565 issued on December 18, 2001).
Respondent registered the <railurope.com> domain name on June 16, 2002. Respondent’s disputed domain name does not resolve to an active website.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
The Panel finds that Complainant’s trademark registrations
with the USPTO are sufficient evidence that Complainant possesses rights in the
RAIL EUROPE mark pursuant to Policy ¶ 4(a)(i).
Further, the Panel finds that the trademark registration need not be in
the country where Respondent resides under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743
(Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established
rights in the MICROSOFT mark through registration of the mark with the
USPTO.”); see also Metro.
Life Ins. Co. v. Bonds, FA 873143
(Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately
demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see
also Koninklijke KPN N.V. v.
Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does
not require that the mark be registered in the country in which the respondent
operates; therefore it is sufficient that the complainant can demonstrate a
mark in some jurisdiction).
Respondent’s <railurope.com> domain name contains
a misspelled version of Complainant’s RAIL EUROPE mark by deleting the letter
“e” in the word “Europe.” Respondent’s disputed domain name also deletes the
space between the “rail” and “
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant is required to make a prima facie case in support of these allegations. After the Complainant has produced a prima facie case the burden shifts to the Respondent to show it has rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that the Complainant has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain name. The Panel will, however, examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).
Complainant states that it has not granted Respondent permission to use its mark and that Respondent is not currently known as the disputed domain name. The WHOIS information does not indicate, and Respondent has failed to offer evidence, that it is commonly known by the <railurope.com> domain name. Therefore, Panel finds that Respondent lacks rights and legitimate interests in the <railurope.com> domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s disputed domain name does not resolve to an active website. Complainant notes that the failure to make an active use of the disputed domain name is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel finds that Respondent’s failure to make an active use of the <railurope.com> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant further asserts that Respondent’s disputed domain name containing a common misspelling of its RAIL EUROPE mark is further evidence of Respondent’s lack of rights and legitimate interests in the domain name. The Panel finds that Respondent’s engagement in typosquatting is evidence that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommadaties.com> domain names were intentional misspellings of Complainant’s LTD COMMODITIES mark and this “’typosqatting’ is evidence that Respondent lacks right or legitimate interests in the disputed domain names”). Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Previous UDRP panels have decided that the factors in Policy ¶ 4(b) are examples, and not limitations on the circumstances of bad faith registration and use. The Panel finds that it may look to the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Respondent’s failure to make an active use of the <railurope.com> domain name is
evidence of bad faith registration and use.
The Panel finds that without affirmative evidence indicating
preparations for use by Respondent, that Respondent’s failure to make an active
use of the disputed domain name is evidence of bad faith registration and use
under Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum
June 26, 2006) (holding that the non-use of a disputed domain name for several
years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000)
(concluding that the respondent’s [failure to make an active use] of the domain
name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Respondent is engaged in typosquatting through its registration and use of the disputed domain name. This method of use has been found to constitute evidence in itself that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <railurope.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 22, 2010
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