DECISION

 

New Jersey Transit Corporation v. Randy Soderman / Soderman Marketing

Claim Number: FA2608002238873

 

PARTIES

Complainant is New Jersey Transit Corporation ("Complainant"), represented by John J. O'Malley of Volpe and Koenig, Pennsylvania, USA. Respondent is Randy Soderman / Soderman Marketing ("Respondent"), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <newjersey-transit.com> and <njtransit-theupdate.com>, registered with GoDaddy.com, LLC.

 

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.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 11, 2026; Forum received payment on August 11, 2026.

 

On August 13, 2026, GoDaddy.com, LLC confirmed by e-mail to Forum that the <newjersey-transit.com> and <njtransit-theupdate.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 August 24, 2026, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 2026 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@newjersey-transit.com, postmaster@njtransit-theupdate.com.

 

Also on August 24, 2026, 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 September 15, 2026, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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 disputed domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights in the NJTRANSIT.COM and NJ TRANSIT marks established by its ownership of the trademark and service mark registrations described below, and extensive use of the marks in its business as the owner and operator of the New Jersey State-owned public transportation system serving the U.S. state of New Jersey and certain neighboring areas, since at least as early as 1980.

 

Complainant is also the owner of the domain name <njtransit.com>, which was created on October 29, 1998, and the website to which it resolves on which Complainant provides details of the services that it provides.

 

Complainant submits that as a result of its long-standing and continuous use of the NJTRANSIT.COM and NJ TRANSIT marks, it has built substantial goodwill in the minds of the public, such that its marks have come to be associated favorably with Complainant, its transportation services, and related products and services.

 

Firstly, Complainant alleges that the disputed domain name is identical or confusingly similar to the NJ TRANSIT mark in which Complainant has rights arguing that:-

 

The disputed domain name <newjersey-transit.com> incorporates the dominant elements and meaning of the NJ TRANSIT mark. "NJ" is the universally understood abbreviation for "New Jersey," and Respondent merely expands "NJ" to "New Jersey," separates the words with a hyphen, and adds the generic Top Level Domain ("gTLD") extension <.com>. It is submitted that these changes do not distinguish the disputed domain name from Complainant's NJ TRANSIT mark; but to the contrary, the domain name conveys directly to Internet users the name and identity of Complainant: New Jersey Transit.

 

The disputed domain name <njtransit-theupdate.com> incorporates Complainant's NJ TRANSIT mark in its entirety, without alteration, followed only by the descriptive phrase "the update" and the gTLD extension. It is submitted that the addition of the descriptive phrase does not avoid confusing similarity. Indeed, in the context of Complainant's operations, the phrase reinforces the association with Complainant because travelers routinely seek "updates" concerning schedules, delays, service disruptions, and other transit information.

 

Complainant adds that the gTLD extensions <.com> should be disregarded for the purposes of determining confusing identity or confusing similarity.

 

Secondly Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names arguing that Complainant has not licensed, authorized, or otherwise permitted Respondent to use the NJTRANSIT.COM and NJ TRANSIT marks;

 

There is no evidence that Respondent has ever been commonly known as "NJ TRANSIT," "New Jersey Transit," "NJ Transit The Update," or by either of the disputed domain names. rather, those names correspond directly to Complainant and its established NJ TRANSIT marks.

 

As shown in the screen captures exhibited in the annex to the Complaint, Respondent cannot establish a bona fide offering of goods or services because Respondent is using the disputed domain names to create the false impression that its websites are operated by or affiliated with Complainant.

 

When Internet users access the disputed domain names, they are directed or redirected to the website at <newjersey-transit.com>; the website at <newjersey-transit.com> does not merely discuss or make nominative reference to Complainant, but instead, it presents itself as an information resource of Complainant and repeatedly speaks from the perspective of Complainant itself.

 

As shown in the screen captures exhibited in the annexes to the Complaint, the website to which the disputed domain names resolve:

·       prominently identifies itself as "NJ Transit";

·       uses the heading "New Jersey Transit's Commitment";

·       states that "New Jersey Transit is working hard" to address transportation disruptions;

·       refers to Complainant's customers as "our customers";

·       provides a "Customer Toolkit," "Customer Resources," ticketing information, rider guides, fare information, and transportation information;

·       directs users to purported NJ TRANSIT resources including "My Transit Alerts" and a "New Jersey Transit Trip Planner";

·       provides instructions concerning the purchase and use of Complainant's tickets and passes;

·       tells visitors that they can provide transportation feedback to "us" and refers to "our Customer Service team"; and

·       displays a purported copyright notice stating "New Jersey Transit. All rights reserved."

 

These are not merely descriptive references to Complainant. They are affirmative representations calculated to cause visitors to believe that the website is operated by, authorized by, or otherwise affiliated with Complainant.

 

Complainant thirdly alleges that Respondent has no rights or legitimate interest in the disputed domain names, arguing that Respondent deliberately targeted Complainant and Its NJTRANSIT.COM and NJ TRANSIT marks. There can be no plausible suggestion that Respondent selected the disputed domain names without knowledge of Complainant.

 

The disputed domain name <newjersey-transit.com> is effectively a spelled-out version of Complainant's NJ TRANSIT mark, while <njtransit-theupdate.com> reproduces the NJ TRANSIT mark in its entirety.

 

Moreover, Respondent uses the disputed domain names in connection with content specifically relating to Complainant and transportation services.

 

Complainant contends that Respondent therefore had actual knowledge of Complainant, its NJTRANSIT.COM and NJ TRANSIT marks, and its transportation operations when registering the disputed domain names.

 

Addressing use of the disputed domain names, Complainant submits that Respondent is using the disputed domain names to create a false association with Complainant, and that Respondent's use of the disputed domain names is calculated to cause Internet users to believe that the associated website is operated by, affiliated with, sponsored by, or otherwise authorized by Complainant.

 

The disputed domain name <newjersey-transit.com> appears on its face to designate an official website of Complainant. Similarly, the disputed domain name <njtransit-theupdate.com> suggests an official source providing service or operational "updates".

 

Complainant adds that by registering and using disputed domain names that reproduce or closely approximate Complainant's NJ TRANSIT marks, Respondent intentionally attracts Internet users who are seeking Complainant, its official website, or information concerning its transportation services.

 

Furthermore, it is contended that the nature of the disputed domain names is especially probative. Respondent did not select terms that merely happen to resemble Complainant's marks. Instead, Respondent registered two separate domain names deliberately constructed around Complainant's identity:

·       <newjersey-transit.com>, which effectively spells out the NJ TRANSIT mark; and

·       <njtransit-theupdate.com>, which incorporates the NJ TRANSIT mark verbatim and adds terminology closely associated with information sought by NJ TRANSIT riders.

 

Complainant contends that Respondent's use of the disputed domain names to resolve to a website containing information related to Complainant and its services therefore reinforces, rather than dispels, the false impression of affiliation with Complainant.

 

Furthermore, it is alleged that Respondent's conduct also disrupts Complainant's operations and its ability to control the use of its trademarks and the information presented to members of the public under those marks.

 

In conclusion, Complainant argues that since NJ TRANSIT provides public transportation services, inaccurate, outdated, incomplete, or unauthorized information presented through a website that appears to be affiliated with Complainant may create particular confusion for travelers seeking authoritative transportation information; and Respondent's use of disputed domain names that appear to identify Complainant's official information sources therefore interferes with Complainant's ability to direct travelers to its authorized communications channels and to maintain control over information presented under the NJTRANSIT.COM and NJ TRANSIT marks.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is the owner and operator of the New Jersey State-owned public transportation system serving the U.S. U.S. state of New Jersey and certain neighboring areas, using the NJTRANSIT.COM and NJ TRANSIT mark for which it holds the following trademark and service mark registrations:

·       United States registered service mark NJTRANSIT.COM, registration number 3,052,059, registered on the Principal Register on January 31, 2006, for services in class 39

·       United States registered service mark NJ TRANSIT, registration number 4573973, registered on the Principal Register on July 2014 for services in international classes 35 and 39

·       United States registered trademark NJ TRANSIT, registration number 7,610,751, registered on the Principal Register on December 17, 2024, for goods in international classes 25 and 28.

 

Complainant has an established Internet presence and is the owner of the Internet domain name <njtransit.com> and the website to which it resolves. Complainant's domain name <njtransit.com> was created on October 29, 1998.

 

The disputed domain names <newjersey-transit.com> was registered on July 10, 2018, and <njtransit-theupdate.com> was registered on June 5, 2017. They each resolve to a website <newjersey-transit.com> on which Respondent purports to impersonate Complainant and offer travel information about Complainant's services.

 

There is no information available about Respondent except for that provided in the Complaint, as amended, the Registrar's WhoIs and the information provided by the Registrar in response to the request by Forum for details of the registration of the disputed domain name for the purposes of this proceeding.

 

 

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 3.1 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 has provided uncontested evidence to prove that it has rights in the NJ TRANSIT trademark and service mark established by its ownership of the portfolio of registrations described above and extensive use of the mark in its business as the owner and operator of the New Jersey State-owned public transportation system serving the U.S. State of New Jersey and certain neighboring areas.

 

The element "nj" in Complainant's mark is a standard acronym for New Jersey.

 

The element "transit" in disputed domain name <newjersey-transit.com> is descriptive and does not prevent a finding of confusing similarity.

 

Complainant's NJ TRANSIT mark is contained in its entirety in the domain name <njtransit-theupdate.com>, and it is well established that a panel may make a finding of confusing similarity in such circumstances.

 

Furthermore, the element "the update" is descriptive and does not prevent a finding of confusing similarity.

 

In each case the hyphen is likely to be ignored by Internet users.

 

Neither does the gTLD extension <.com> in each of the disputed domain names prevent a finding of confusing similarity because it would be considered by Internet users as a necessary technical requirement for a domain name.

 

The Panel finds therefore that the disputed domain names <newjersey-transit.com> and <njtransit-theupdate.com> are confusingly similar to the NJ TRANSIT trademark and service in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain names as set out in Complainant's detailed submissions above.

 

In particular, the uncontested evidence in the screen captures exhibited in the annex to the Complaint shows that each of the disputed domain names resolves to a single website on which Respondent represents itself as being Complainant. Use of the disputed domain names for the purposes of impersonation of Complainant, cannot establish rights or legitimate interests.

 

Furthermore, Respondent cannot establish a bona fide offering of goods or services because Respondent is using the disputed domain names to create the false impression that its websites are operated by or affiliated to Complainant.

 

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

 

Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain names.

 

Complainant has therefore succeeded in the second element of the test in Policy paragraph 4(a)(ii).

 

Registration and Use in Bad Faith

The disputed domain names <newjersey-transit.com> was registered on July 10, 2018 and <njtransit-theupdate.com> was registered on June 5, 2017.

 

They are not recent registrations; however it is well established that the doctrine of laches or delay does not prevent a Complainant from succeeding in a complaint under the Policy.

 

When the disputed domain names were registered Complainant had already established a substantial reputation in the use of the NJTRANSIT.COM and NJ TRANSIT marks, and had been the registered owner of United States registered service mark NJTRANSIT.COM, since January 31, 2006.

 

NJ TRANSIT is a distinctive mark and taking into account that the "nj" element is a commonplace acronym for New Jersey, each of the disputed domain names have Complainant's marks as their initial and dominant features or at least the marks are prominently recognizable in the domain names.

 

The Panel finds therefore that on the balance of probabilities the disputed domain name was chosen and registered in bad faith to target and take predatory advantage of the Complainant's goodwill and reputation in the NJTRANSIT.COM and NJ TRANSIT marks.

 

The uncontested evidence is that each of the disputed domain names resolve to a website <newjersey-transit.com> on which Respondent has posted information relating to Complainant's business.

 

Specifically, as Complainant alleges, the website to which the disputed domain names resolve provides public transportation services, inaccurate, outdated, incomplete, or unauthorized information.

 

The screen captures show that Respondent's website purports to create the impression that it is hosted by Complainant: it prominently identifies itself as "NJ Transit"; uses the heading "New Jersey Transit's Commitment"; states that "New Jersey Transit is working hard" to address transportation disruptions; refers to travellers on Complainant's services as "our customers".

 

The Panel finds therefore that the Respondent is using the disputed domain names in bad faith to resolve to, and redirect to a website on which Respondent is purporting to impersonate Complainant.

 

The Panel further finds that on the evidence adduced, Respondent is using Complainant's marks within the disputed domain names, without license or authority, intending to attract and confuse Internet users and cause them to divert their Internet traffic intended for Complainant and misdirect it to Respondent's website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website. Such use constitutes use of the disputed domain name in bad faith.

 

As this Panel has found that each of the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in 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 <newjersey-transit.com> and <njtransit-theupdate.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

James Bridgeman SC

Panelist

Dated: September 17, 2026