DECISION

 

Quality Transportation Services, Inc. v. Domain Admin / Regal Rexnord Corporation

Claim Number: FA2504002148588

 

PARTIES

Complainant is Quality Transportation Services, Inc. ("Complainant"), internally represented by Steven M. Wical, Virginia, USA. Respondent is Domain Admin / Regal Rexnord Corporation ("Respondent"), represented by Renee Reuter of Armstrong Teasdale LLP, Missouri, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <smartrail.com>, registered with CSC Corporate Domains, Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Fernando Triana, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 3, 2025; Forum received payment on April 3, 2025.

 

On April 4, 2025, CSC Corporate Domains, Inc. confirmed by e-mail to Forum that the <smartrail.com> domain name is registered with CSC Corporate Domains, Inc. and that Respondent is the current registrant of the name. CSC Corporate Domains, Inc. has verified that Respondent is bound by the CSC Corporate Domains, 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 7, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 2025 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@smartrail.com. Also on April 7, 2025, 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.

 

A timely Response was received and determined to be complete on April 28, 2025.

 

On April 28, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Fernando Triana, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.       Complainant

a.       The disputed domain name is identical or confusingly similar to Complainant SMARTRAIL mark since it incorporates the mark in its entirety, merely adding the ".com" generic top-level domain ("gTLD").

b.       Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use its SMARTRAIL mark in any way.

c.       Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, the disputed domain name is not being used.

d.       Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.

e.       The disputed domain name is redirected to a web page with no relationship to the domain name or the SMARTRAIL mark.

 

B.       Respondent

a.       Respondent's rights were established through use in commerce as early as 1997, and through a filing with the United States Patent and Trademark Office ("USPTO") as of its filing date, August 22, 1995. Registration No: 2184381.

b.       Respondent registered or acquired the disputed domain name at a time prior to the coming into existence of Complainant's trademark rights on October 28, 1998.

c.       Respondent established its rights in the SMART RAIL Mark and used the SMART RAIL Mark on the website prior to knowing of Complainant's concerns and UDRP filing.

d.       Complainant has provided no evidence that Respondent was ever aware of Complainant's business or targeted it in any way.

 

FINDINGS

A.       The Disputed Domain Name, <smartrail.com> was originally registered on October 29, 1998.

 

B.       Complainant has established rights in the trademark SMARTRAIL based on registration of the mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,877,801) registered on August 24, 2004.

 

C.       Respondent has established that it has rights or legitimate interests in the disputed domain name, by means of the trademark registration SMART RAIL with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,184,381) registered on August 25, 1998.

 

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.

 

Identical and/or Confusingly Similar

Complainant asserts rights in the SMARTRAIL mark based on registration with the USPTO (Reg. No. 2,877,801 registered on August 24, 2004). Registration of a mark with the USPTO is a valid showing of rights in a mark per Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office ("USPTO")."). Since Complainant provides evidence of registration of the SMARTRAIL mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).

 

Complainant argues that the disputed domain name is identical to Complainant's SMARTRAIL trademark. When a domain name differs from a mark only by the addition of a gTLD it may be found to be identical to the mark. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, "Respondent's <frburger.com> domain name is identical to Complainant's FRBURGER mark because it differs only by the domain name's addition of the top-level domain name ".com."). Therefore, the Panel finds that the disputed domain name is confusingly similar to the SMARTRAIL mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant failed to make a prima facie case showing that Respondent lacks rights or legitimate interests. Complainant also failed to prove Respondent's lack of rights or legitimate interests.

 

Moreover, Respondent has established that it has rights or legitimate interests in the disputed domain name, by means of the trademark registration SMART RAIL with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,184,381) registered on August 25, 1998.

 

Furthermore, Respondent owns the disputed domain name since 1998, which is 3 years before Complainant's trademark application.

 

The Panel finds that Respondent's evidence is persuasive on the issue of rights and legitimate interests. Accordingly, Complainant has not succeeded in this element of the Policy.

 

Registration and Use in Bad Faith

Even if it is unnecessary to proceed further in analyzing the registration and use in bad faith, as Complainant failed to establish the lack of rights or legitimate interest, it is important to point out that, in this case, Complainant did not provide any evidentiary element to support a bad faith allegation.

 

Furthermore, since the disputed domain name, <smartrail.com> was owned by Respondent since at least 1998, and Complainant's trademark registration did not come into existence until 2004, it is impossible to conclude that the registration was done in bad faith, as that could not have been the intention of Respondent at the time of acquisition of the disputed domain name.

 

Accordingly, Complainant has not succeeded in proving Respondent registered and is using the disputed domain name in bad faith.

 

REVERSE DOMAIN NAME HIJACKING

Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute.

 

Under Paragraph 1 of the Rules, "Reverse Domain Name Hijacking" (RDNH) is defined as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." Paragraph 15(e) of the Rules provides that if "the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."

 

The Panel observes that such a finding is justified where a complainant proceeds despite the fact that it knew or should have known that it did not have a colorable claim under the Policy. See Karma International, LLC v. David Malaxos, FA 1822198 (Forum Feb. 15, 2019) (finding RDNH where complainant lacked trademark rights, came into being long after domain name was registered, and had made prior unsolicited offer to purchase domain name). It also notes that even if a panel would find that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking. See ECG European City Guide v. Woodell, FA 183897 (Forum Oct. 14, 2003) ("Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith."); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant's part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).

 

The Panel notes that Respondent does have rights and legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) of the Policy. It also notes that the disputed domain name registration predates Complainant's first claimed rights in the trademark SMARTRAIL by almost 7 years. Nevertheless, Complainant asserts that the disputed domain name was registered and is being used in violation of its trademark rights.

 

Complainant's trademark came into registration long after the disputed domain name was registered, and Complainant did not substantiate its vague claims of lack of rights or legitimate interest or bad faith registration and use.

 

On balance, the Panel finds that the Complaint was brought in bad faith, in an instance of reverse domain name hijacking, and constitutes an abuse of the administrative proceeding.

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <smartrail.com> domain name REMAIN WITH Respondent.

 

 

 

Fernando Triana, Esq., Panelist

Dated: May 5, 2025