DECISION

 

Subway IP LLC v. subways pvt ltd / business development

Claim Number: FA2311002069330

 

PARTIES

Complainant is Subway IP LLC ("Complainant"), USA, represented by Jeanette Eriksson of FairWinds Partners LLC, District of Columbia, USA. Respondent is subways pvt ltd / business development ("Respondent"), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <subwayspartnersindia.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

 

PANEL

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 2, 2023; Forum received payment on November 2, 2023.

 

On November 3, 2023, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <subwayspartnersindia.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 3, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 24, 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@subwayspartnersindia.com. Also on November 3, 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 November 26, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant is one of the largest franchised chains of sandwich shops in the world. As a result of Complainant's long usage and promotion of its SUBWAY mark, it has become overwhelmingly famous and widely recognized around the world. Complainant is the owner of the distinctive and famous SUBWAY trademarks and their corresponding logos. The disputed domain name is confusingly similar to Complainant's mark as the second level of the disputed domain name consists of the SUBWAY mark followed by the letter "s" and the words "partners" and "india", as well as the ".com" gTLD.

 

ii) Respondent does not have rights or legitimate interests in the disputed domain name because Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name for phishing activity and a franchise offer scam. The disputed domain name resolves to a parking or blank page.

 

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent was on actual notice of Complainant's rights in its globally well-known mark. Respondent intentionally sought to cause confusion between the disputed domain name and the SUBWAY mark in furtherance of a phishing scheme, as well as provided false contact details in Whois. Respondent uses the disputed domain name to improperly pass itself off as Complainant for Respondent's own financial gain. That the disputed domain name resolves to a parked page does not alter this fact. 

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on September 23, 2023.

 

2. Complainant has established rights in the SUBWAY mark through its registration of the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,307,341 registered November 27, 1984).

 

3. Respondent (Subways Pvt Ltd)'s contact details as revealed by Registrar verification are false and merely an impersonation of Complainant's Indian subsidiary, Subway Systems India Pvt Ltd.

 

4. The address as provided by Registrant copies the unit number, area and postal code to resemble the official subsidiary's address.

 

5. An incognito google search (used to prevent cashed results to flaw the outcome) for the claimed company name "Subways Pvt Ltd" (Respondent's name) does not reveal any results other than those belonging to Complainant.

 

6. A company registration search in India does not find any results matching Respondent's name "Subways Pvt Ltd."

 

7. The disputed domain name resolves to a blank page.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant asserts rights in the SUBWAY mark based upon the registration with the USPTO (e.g., Reg. No. 1,307,341 registered November 27, 1984). Registration of a mark with the USPTO is a valid showing of rights in a mark.  Since Complainant provides evidence of registration of the SUBWAY mark with the USPTO, the Panel finds that Complainant has established rights in the mark under Policy 4(a)(i).

 

Complainant argues the disputed domain name  <subwayspartnersindia.com> is confusingly similar to Complainant's SUBWAY mark as it contains the SUBWAY mark in its entirety and merely adds the geographic term "India," the generic term "partners," the plural signifier "s" and the ".com" gTLD. The addition of a geographic phrase, a generic phrase, the plural signifier and gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Dell Inc. v. SNAB Corporation, FA 1785051 (Forum May 30, 2018) (finding the inclusion of a geographic term did not distinguish the domain name and increased possible confusion, as "[t]he geographic term "hyderabad" is also suggestive of Complainant as Complainant has corporate offices in Hyderabad, India."); see also 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). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant's mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("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").

 

Complainant contends Respondent lacks rights or legitimate interests in the disputed domain name. The Panel finds that nothing in the record suggests that Respondent was authorized to use the SUBWAY mark or commonly known by the disputed domain name. The Panel notes that an incognito google search (used to prevent cashed results to flaw the outcome) for the claimed company name "Subways Pvt Ltd" (Respondent's name) does not reveal any results other than those belonging to Complainant; and a company registration search in India does not find any results matching Respondent's name "Subways Pvt Ltd." Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). 

 

Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to confuse consumers into believing it is related to or affiliated with Complainant when it is not. Complainant specifically points out that Respondent has used the disputed domain name to impersonate Complainant and Complainant's Indian subsidiary as part of a phishing scheme, seeking to fraudulently offer franchising opportunities. The Panel notes that (i) Respondent's contact details as revealed by Registrar verification are false and merely an impersonation of Complainant's Indian subsidiary, Subway Systems India Pvt Ltd.; (ii) the address as provided by Respondent copies the unit number, area and postal code to resemble the official subsidiary's address; (iii) an incognito google search (used to prevent cashed results to flaw the outcome) for the claimed company name "Subways Pvt Ltd" (Respondent's name) does not reveal any results other than those belonging to Complainant; and (iv) a company registration search in India does not find any results matching Respondent's name "Subways Pvt Ltd." The Panel finds that such a passing off as a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). 

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant contends that Respondent registered and uses the disputed domain name in bad faith because Respondent uses the disputed domain name to confuse consumers into believing it is related to or affiliated with Complainant when it is not. Complainant specifically points out that Respondent has used the disputed domain name to impersonate Complainant and Complainant's Indian subsidiary as part of a phishing scheme, seeking to fraudulently offer franchising opportunities. Complainant has not provided any exhibits demonstrating any actual activities of a phishing scheme, seeking to fraudulently offer franchising opportunities. Instead, Complainant highlights that (i) Respondent (Subways Pvt Ltd)'s contact details as revealed by Registrar verification are false and merely an impersonation of Complainant's Indian subsidiary, Subway Systems India Pvt Ltd.; (ii) the address as provided by Registrant copies the unit number, area and postal code to resemble the official subsidiary's address; (iii) an incognito google search (used to prevent cashed results to flaw the outcome) for the claimed company name "Subways Pvt Ltd" (Respondent's name) does not reveal any results other than those belonging to Complainant; and (iv) a company registration search in India does not find any results matching Respondent's name "Subways Pvt Ltd."

 

The Panel notes that the disputed domain name resolves to a blank page. The Panel observes that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA 1522801 (Forum Nov. 19, 2013) (holding that because the respondent's website contained no content related to the domain name and instead generated the error message "Error 400- Bad Request," the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). See alsoTelstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent's behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent's passive holding amounts to acting in bad faith). 

 

The particular circumstances of this case that the Panel has considered are:

 

i) Complainant is  one of the largest franchised chains of sandwich shops in the world. Complainant has over 21,000 franchisees — small business owners who operate approximately 42,000 Subway shops in more than 100 countries around the world. Since 2007, Complainant has consistently ranked in Entrepreneur magazine's Top 500 Franchises list. In 2015, it ranked #3 on the "Top Global Franchises" list and #1 as the "Fastest Growing Franchise". At the end of 2010, Complainant became the largest franchised chains of sandwich shops worldwide, with 33,749 restaurants. Complainant spends hundreds of millions of US Dollars on advertising and has also sponsored a number of sporting events. Complainant has also been the subject of extensive media coverage including stories in USA Today, The LA TIMES, and many other outlets. As a result of Complainant's long usage and promotion of its SUBWAY mark, it became famous and widely recognized around the world prior to the registration of the disputed domain name;

 

ii) Respondent impersonates Complainant's subsidiary in India by using resembling name and address, which are false; and

 

iii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.

 

Taking into account all of the above, the Panel concludes that Respondent's passive holding of the disputed domain name constitutes bad faith under Policy paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.

 

Next, Complainant contends that Respondent was on actual notice of Complainant's rights in its globally well-known mark as a result of Complainant's extensive use of the mark which long predates the date on which Respondent acquired the disputed domain name. The Panel infers, due to the notoriety of Complainant's mark and the false contact details impersonating Complainant's subsidiary in India that Respondent had knowledge of Complainant's rights in the SUBWAY mark at the time of registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <subwayspartnersindia.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: November 28, 2023