Progress Rail Services Corporation v. Adams Franky LLC
Claim Number: FA2304002038683
Complainant is Progress Rail Services Corporation (“Complainant”), represented by AJ Schumacher of Kelly IP, LLP, District of Columbia, USA. Respondent is Adams Franky LLC (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <progressraii.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on April 4, 2023; Forum received payment on April 4, 2023.
On April 4, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <progressraii.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 April 5, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 2023 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@progressraii.com. Also on April 5, 2023, 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 April 28, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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 states that it is one of the largest integrated and diversified providers of rolling stock and infrastructure solutions and technologies for global rail customers, with nearly 200 facilities in 16 countries. Under the EMD brand of its subsidiary Progress Rail Locomotive (formerly known as Electro-Motive Diesel), Complainant offers diesel-electric locomotives and aftermarket parts for all commercial railroads, including freight, intercity passenger, commuter, switching-industrial, and mining applications. Complainant is also a global provider of EMD engines for marine propulsion, offshore and land-based oil well drilling rigs and stationary power generation. Under its PROGRESS RAIL marks, Complainant produces and offers numerous products, such as freight, passenger, and road-switching locomotives and a full line of trackwork, components, and fasteners for heavy haul and transit railways, among other products. Complainant offers a wide array of services, including locomotive leasing, contract maintenance, locomotive remanufacturing, engine overhauls, freight car services, rail sales, rail removals, and designing wayside and highway crossing systems, among other services. Over the years, Complainant has enjoyed significant commercial success. For example, Complainant has delivered more than 65,000 EMD-powered locomotives to more than 75 countries to date. Complainant asserts rights in the PROGRESS RAIL mark based upon its registration in the United States Patent in 2006.
Complainant alleges that the disputed domain name is confusingly similar to its PROGRESS RAIL mark because it consists of a misspelling of the mark (the visually similar letter “i” is substituted for the letter “l”) and merely adds the generic top level domain (“gTLD”) “.com”. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the PROGRESS RAIL mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate non-commercial or fair use. Instead, Respondent engages in typosquatting and the disputed domain name resolves to a parked webpage that displays pay-per-click advertising hyperlinks to products and services not related to those of Complainant. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. The resolving website displays pay-per-click hyperlinks to unrelated products and services. Respondent has been involved in at least two prior UDRP decisions. Respondent is engaging in typosquatting. Respondent had actual knowledge of Complainant’s rights to the PROGRESS RAIL mark prior to registering the disputed domain name. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns rights in the mark PROGRESS RAIL dating back to 2006 and uses it to provide rolling stock and infrastructure solutions and technologies for global rail customers.
The disputed domain name was registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website displays pay-per-click advertising hyperlinks to products and services that are not related to those of Complainant. Respondent has been found to have registered and used domain names in bad faith in prior UDRP cases.
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 disputed domain name consists of a misspelling of Complainant’s PROGRESS RAIL mark (the visually similar letter “i” is substituted for the letter “l”) and merely adds the generic top level domain (“gTLD”) “.com”. Including a trademark, even if misspelled, in a domain name does not distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant’s marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain (“gTLD”) ‘.com.’”). Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its PROGRESS RAIL mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, the WHOIS information for the disputed domain name lists the registrant as “Adams Franky LLC”. As such, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name to resolve to a parked webpage that hosts pay-per-click advertising hyperlinks to products and services that are not related to those of Complainant. This conduct does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Bloomberg Finance L.P. v. Syed Hussain / IBN7 Media Group, FA 1721384 (Forum Apr. 26, 2017) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). Thus the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Further, Respondent has engaged in typosquatting. Typosquatting is evidence that Respondent lacks rights and legitimate interests in the disputed domain name under 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).”).
For all the above reasons, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the resolving webpage displays advertising hyperlinks to unrelated products and services. Respondent’s use of the disputed domain name to operate a webpage in this manner is evidence of bad faith under Policy ¶ 4(b)(iv). See Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links); see also Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”). The Panel therefore finds that Respondent has registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Further, also as already noted, Respondent has engaged in typosquatting. Typosquatting is evidence of bad faith under Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). The Panel therefore find Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant cites two prior UDRP in which Respondent was found to have registered and used domain names in bad faith. This is further evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(ii). See Twentieth Century Fox Film Corporation v. oranges arecool XD / orangesarecool.com, FA1405001558045 (Forum July 10, 2014) (finding that the respondent’s registration of multiple domain names in the instant proceeding and prior adverse UDRP history was evidence of bad faith registration and use of the domain names under Policy ¶ 4(b)(ii)). Accordingly, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <progressraii.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: April 28, 2023
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