CSXT Intellectual Properties Corporation v. Buy this domain on Dan.com / DOMAIN ADMINISTRATOR
Claim Number: FA2209002011661
Complainant is CSXT Intellectual Properties Corporation (“Complainant”), represented by Amanda L. DeFord of McGuireWoods LLP, Virginia. Respondent is Buy this domain on Dan.com / DOMAIN ADMINISTRATOR (“Respondent”), California.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <csxgreenway.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 Forum electronically on September 12, 2022; Forum received payment on September 12, 2022.
On September 13, 2022, Dynadot, LLC confirmed by e-mail to Forum that the <csxgreenway.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the names. 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 September 13, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 2022 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@csxgreenway.com. Also on September 13, 2022, 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 October 10, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is one of the leading freight transportation suppliers in the United States.
Complainant has rights in the CSX mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <csxgreenway.com> domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the CSX mark in its entirety and adds the term “greenway” and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <csxgreenway.com> domain name. Respondent is not commonly known by the at-issue domain name and Complainant has not authorized or licensed Respondent any rights in the CSX mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the at-issue domain name resolves to a page offering the domain name for sale.
Respondent registered and uses the <csxgreenway.com> domain name in bad faith. Respondent offers the disputed domain name for sale. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CSX mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in CSX.
Respondent is not affiliated with Complainant and is not authorized to use the CSX mark in any capacity.
The at‑issue domain name was registered after Complainant acquired trademark rights in CSX.
Respondent uses the at-issue domain name to offer the domain name for sale.
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 demonstrates rights in its CSX mark under Policy ¶ 4(a)(i) through Complainant’s registration of such mark with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <csxgreenway.com> domain name contains Complainant’s CSX trademark followed by the term “greenway,” followed by the “.com” top-level domain. The Panel notes that Complainant might rely on a claim of rights in its pending CRX GREENWAY USPTO trademark application, but here the Panel focuses on the CRX mark. The differences between Complainant’s CSX trademark and the at-issue domain name does nothing to distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <csxgreenway.com> domain name is confusingly similar to Complainant’s CSX trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
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). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
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. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Buy this domain on Dan.com” and the record before the Panel contains no evidence otherwise showing that Respondent is commonly known by <csxgreenway.com> or by CSX. The Panel therefore concludes that Respondent is not commonly known by the <csxgreenway.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).
Respondent’s <csxgreenway.com> domain name directs internet traffic to a webpage offering said domain name for sale for an amount far in excess of its reasonable cost to Respondent. Respondent’s use of the at-issue domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use of the domain name under Policy ¶ 4(c)(iii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <csxgreenway.com> domain name was registered and used in bad faith. As discussed below without limitation, circumstances are present which allow the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As discussed above, Respondent registered and used its <csxgreenway.com> domain name to address a webpage generally offering the domain name for sale. There, the domain name is offered to the general public for $995 USD. Such amount is well in excess of Respondent’s reasonable out-of-pocket costs associated with the domain name. Respondent’s offers to sell <csxgreenway.com> for an amount exceeding its out-of-pocket cost for such domain name shows Respondent’s bad faith per Policy ¶ 4(b)(i). See loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1786281 (Forum June 8, 2018) (“Complainant shows that Respondent offers the disputed domain name for sale for $950, no doubt above its out-of-pocket costs. The Panel finds that this constitutes bad faith under Policy ¶4(b)(i).”); see also, Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith).
Moreover, Respondent registered the at-issue domain names knowing that Complainant had trademark rights in CSX. Respondent’s prior knowledge is revealed by the notoriety of Complainant’s confusingly similar mark and by Respondent’s registration of <csxgreenway.com> close in time to Complainant’s filing its USPTO application for registration regarding CSX GREENWAY. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the domain name in bad faith 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <csxgreenway.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 10, 2022
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