BNSF Railway Company v. Doug Leffert
Claim Number: FA0701000896650
Complainant is BNSF Railway Company (“Complainant”), represented by Deborah
L. Lively, of Thompson & Knight, LLP, 1700
Pacific Ave., Suite 3300, Dallas, TX 75201, USA. Respondent is Doug Leffert (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bnsfrailways.com>, registered with Go Daddy Software, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 23, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 24, 2007.
On January 24, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <bnsfrailways.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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").
On January 26, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 15, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@bnsfrailways.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 19, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." 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 <bnsfrailways.com> domain name is confusingly similar to Complainant’s BNSF RAILWAY mark.
2. Respondent does not have any rights or legitimate interests in the <bnsfrailways.com> domain name.
3. Respondent registered and used the <bnsfrailways.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, BNSF Railway
Company, is a provider of railroad transportation services. Complainant first used the BNSF RAILWAY mark
in commerce in January 2005. Complainant
filed for a trademark registration with the United States Patent and Trademark
Office (“USPTO”) for the BNSF RAILWAY mark on January 11, 2005, and the USPTO
issued the registration on January 10, 2006 (Reg. No. 3,039,781).
Respondent, Doug Leffert, registered the <bnsfrailways.com> domain name on April 5, 2005. Respondent is using the disputed domain name to redirect Internet users to a website advertising the railroad transportation services of one of Complainant’s competitors.
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.
Under Policy ¶ 4(a)(i), Complainant’s rights in the BNSF RAILWAY mark date back to the filing date with the USPTO. Complainant filed a trademark registration with the USPTO prior to Respondent’s registration of the <bnsfrailways.com> domain name. Therefore, the Panel finds that Complainant has established rights in the BNSF RAILWAY mark pursuant to Policy ¶ 4(a)(i). See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (“As Complainant's filing date for its valid registration of the NAF NATIONAL ABORTION FEDERATION mark on the Principal Register of the U.S. Patent and Trademark Office predates Respondent's registration of the disputed domain name by over a year, this registration is additional evidence of Complainant's rights in the mark.”).
Respondent’s <bnsfrailways.com> domain name contains Complainant’s BNSF RAILWAY mark in its entirety and adds an “s” at the end. The addition of an “s” to the end of Complainant’s mark does not avoid a finding of confusing similarity under Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <bnsfrailways.com> domain name is confusingly similar to Complainant’s BNSF RAILWAY mark pursuant to Policy ¶ 4(a)(i). See Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <bnsfrailways.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because of Respondent’s failure to respond to the Complaint, the panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO, Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant has alleged that Respondent is not commonly known by the <bnsfrailways.com> domain name. The WHOIS information identifies Respondent as “Doug Leffert,” and the Panel can find no other evidence in the record suggesting that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <bnsfrailways.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Respondent is using the <bnsfrailways.com>
domain name to redirect Internet users to a website advertising the railroad
transportation services of one of Complainant’s competitors. Respondent presumably receives click-through
referral fees for each redirected Internet user. Therefore, Respondent is using Complainant’s
BNSF RAILWAY mark for its own commercial benefit, and such use of the <bnsfrailways.com> domain name does
not constitute either a bona fide
offering of goods and services under Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See
Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that
the respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site); see also Gardens Alive,
Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding
that the respondent used a domain name for commercial benefit by diverting
Internet users to a website that sold goods and services similar to those
offered by the complainant and thus, was not using the name in connection with
a bona fide offering of goods or services nor a legitimate noncommercial
or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <bnsfrailways.com> domain name to redirect Internet users to a website advertising the railroad transportation services of one of Complainant’s competitors. This use of the disputed domain name is likely to disrupt Complainant’s business by diverting business away from Complainant. Therefore, the Panel finds that Respondent’s registration and use of the <bnsfrailways.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s use of the <bnsfrailways.com> domain name, which is confusingly similar to Complainant’s BNSF RAILWAY mark, is likely to cause confusion among customers searching for information on Complainant’s railroad services. Specifically, customers could become confused as to the affiliation, endorsement, or sponsorship of the railroad transportation services advertised on Respondent’s website. Respondent presumably profits from this confusion by receiving click-through referral fees for each redirected Internet user. The Panel finds that such registration and use of the <bnsfrailways.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
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 <bnsfrailways.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 27, 2007
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