Progress Rail Services Corporation v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA1911001871168
Complainant is Progress Rail Services Corporation (“Complainant”), represented by Stephanie H Bald of Kelly IP, LLP, District of Columbia, United States. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <progressrailtalos.com>, registered with Dynadot, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 13, 2019; the Forum received payment on November 13, 2019.
On November 15, 2019, Dynadot, LLC confirmed by e-mail to the Forum that the <progressrailtalos.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 November 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 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@progressrailtalos.com. Also on November 18, 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 December 15, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Progress Rail Services Corporation, is one of the largest integrated and diversified providers of rolling stock and infrastructure solutions and technologies for global rail customers.
Complainant claims rights in the PROGRESS RAIL mark through its registration with the European Union Intellectual Property Office (EUIPO).
Complainant claims rights common law rights in the TALOS and PROGRESSIVE RAIL TALOS marks.
Complainant filed a trademark application to the USPTO for PROGRESS RAIL TALOS on or about September 20, 2019.
Respondent’s <progressrailtalos.com> domain name is confusingly similar to Complainant’s PROGRESS RAIL mark. Respondent incorporates the mark in its entirety and adds the generic term “talos” in addition to the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <progressrailtalos.com> domain name. Respondent is not licensed or authorized to use Complainant’s PROGRESS RAIL mark and is not commonly known by the at-issue domain name. Additionally, Respondent doesn’t use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent is attempting to sell the disputed domain name for an amount in excess of out-of-pocket expenses.
Respondent registered and uses the <progressrailtalos.com> domain name in bad faith as Respondent is attempting to sell the domain name for an amount in excess of out-of-pocket expenses. Respondent had actual knowledge of Complainant’s rights in the PROGRESS RAIL mark due to Complainant’s longstanding and prior use of the mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in its PROGRESS RAIL trademark through registration of such mark with a national registrar.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its PROGRESS RAIL trademark.
Respondent attempts to sell the at-issue domain name for an amount in excess of out-of-pocket expenses.
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”).
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a EUIPO trademark registration for its PROGRESS RAIL mark. Complainant’s USPTO registration is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Emerson Electric Co. v. xiaoqiang su / su xiaoqiang / xiaoqiangsu, FA 1756928 (Registration with a governmental trademark agency, such as the SAIC, the EUIPO or the USPTO, is sufficient to prove Policy ¶4(a)(i) rights in a mark even if Respondent is located in another country”). The Panel notes Complainant’s claim of common law rights in the TALOS mark, however a determination, one way or the other, of such rights does not impact the Panel’s ultimate findings regarding Complainant’s rights in a mark since Complainant rights in PROGRESS RAIL are sufficient to show rights in a mark.
Respondent’s <progressrailtalos.com> domain name contains Complainant’s PROGRESS RAIL trademark less its space, followed by the term “talos,” all followed by the top-level domain name “.com.” The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the <progressrailtalos.com> domain name from the PROGRESS RAIL trademark for the purposes of Policy ¶ 4(a)(i). In fact, as mentioned concerning Complainant’s rights in a mark Complainant claims it has common law trademark rights the term “talos.” Complainant also recently filed a trademark application for PROGRESS RAIL TALOS. At a minimum the term “talos” is related to and suggestive of Complainant’s software and hardware system for railroad train automation. The inclusion of “talos” in the at-issue domain name thus only adds to any confusion between the domain name and Complainant’s PROGRESS RAIL trademark. Therefore, the Panel concludes that Respondent’s <progressrailtalos.com> domain name is confusingly similar to Complainant’s PROGRESS RAIL trademark. 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)).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
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 for <progressrailtalos.com> reveals that the domain name’s registrant is “Super Privacy Service LTD c/o Dynadot” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <progressrailtalos.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <progressrailtalos.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant shows that Respondent offers the domain name for sale for an amount in excess of Respondent’s out-of-pocket costs related to such domain name. Currently, Respondent offers to sell the at-issue domain name for $1,000.00. Respondent’s use of the of the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”).
Given the forgoing, Complainant satisfies its initial burden and shows that Respondent lacks rights or legitimate interests in the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and legitimate interests, Respondent attempts to sell the at-issue domain name for an amount in excess of Respondent’s out-of-pocket cost concerning such domain name. Respondent’s attempt to sell the at-issue domain name indicates Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”).
Next, Complainant recently (September 20, 2019) filed a USPTO trademark application for PROGRESS RAIL TALOS. TALOS and PROGRESS RAIL TALOS refer to Complainant’s software concerning autonomous operation of rail vehicles. Respondent registered its at-issue <progressrailtalos.com> domain name within days of Complainant’s filing at the precise time when Complainant promoted its PROGRESS RAIL TALOS mark and products via social media. Respondent’s contemporaneous filing of its domain name with Complainant’s trademark filing and the ensuing publicity regarding PROGRESS RAIL TAOS is indicative of opportunistic bad faith. While it is not necessary for the Panel’s ultimate finding of bad faith given its finding on Policy ¶ 4(b)(i), Respondent’s behavior point out Respondent’s intent to exploit the preceived inchoate trademark value of Complainant’s USPTO application for PROGRESS RAIL TALOS. Respondent’s opportunistic bad faith further demonstrates Respondent’s bad faith registration and use of the <progressrailtalos.com> domain name. See generally, Mississippi Lottery Corp. v. Jonathan Carr, FA 1625332 (Forum July 15, 2019).
Final, Respondent had actual knowledge of Complainant’s rights in the PROGRESS RAIL mark when it registered <progressrailtalos.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s obvious reference to Complainant by including the term “talos” in Respondent’s confusingly similar domain name. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name in itself shows bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <progressrailtalos.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 16, 2019
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