San Francisco Bay Area Rapid Transit District v. Chad Laughlin
Claim Number: FA1508001633388
Complainant is San Francisco Bay Area Rapid Transit District (“Complainant”), represented by Linda Joy Kattwinkel of Owen, Wickersham & Erickson, P.C., California, USA. Respondent is chad laughlin (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bart.net>, registered with GoDaddy.com, 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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 13, 2015; the Forum received payment on August 13, 2015.
On August 14, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bart.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 18, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 2015 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 firstname.lastname@example.org. Also on August 18, 2015, 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 September 7, 2015.
On September 14, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
- Complainant is a United States governmental agency that operations public commuter rail services to over 300,000 riders per day in the San Francisco Bay Area.
- Complainant's services are provided under a service mark, BART, that is an acronym for a portion of its name and was registered with the United States Patent and Trademark Office ("USPTO") in 1973. Complainant also owns the <bart.gov> domain name, through which it uses a website to extensively advertise and promote its services. Moreover, Complainant owns <bart.org>, which resolves to the website found at <bart.gov>.
- The disputed domain name, <bart.net>, is identical to the BART mark, save for the addition of the suffix, .net, which is inconsequential in comparing the name to the mark.
- The disputed domain name was registered initially in 1995 and has been sold and resold by a number of entities until Respondent acquired the name in June 2015. The disputed domain name does not resolve to a website, and Respondent has no rights or legitimate interests in the name. Complainant is not affiliated with Respondent and has not licensed or otherwise authorized Respondent to use the disputed domain name.
- Complainant concedes that "Bart" is a common short form of a given male name, but notes that it is unlikely that Respondent, whose name is "Chad," would be commonly known as the disputed domain name. Also, there is no evidence that Respondent operates a company that would be commonly known as that name.
- Respondent's motivation in ownership of the disputed domain name is to sell it to Complainant because it is identical to Complainant's service mark. That does not amount to a bona fide activity or legitimate use with respect to that name.
- The disputed domain name was registered and is being used in bad faith. Respondent was aware of Complainant's mark prior to registration of the name, and immediately after such registration contacted Complainant with an offer to sell the name for a price far in excess of Respondent's out-of-pocket registration costs.
- Respondent's non-use of the disputed domain name in connection with a legitimate website is further evidence of Respondent's bad faith.
- Respondent has been buying and selling domain names composed of common or generic terms for at least fifteen years. Bart is a proper noun that is short for the ancient name, Bartholomew.
- After acquiring the disputed domain name, Respondent contacted several potential buyers, including Complainant, who was identified after Respondent discovered the website connected with <bart.org>.
- No one entity can lay exclusive claim to a generic mark like, BART, and the solicited price of $11,000 is fair based on prices obtained for like common-word domain names. Ergo, Respondent has not acted in bad faith, but is conducting a legitimate business.
Complainant is a United States governmental agency that has been operating a large and well-known regional rail transportation system for decades. It has registered its service mark, BART, with the USPTO (Registration No. 972,406; registered Nov. 6, 1973).
Respondent is the owner of the disputed domain name, which Respondent acquired in June 2015. Respondent is making no use of the name, but intends to resell it, as Respondent is in the business of buying and reselling common-word domain names.
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.
Respondent does not counter Complainant's contention that the disputed domain name, <bart.net>, is identical to Complainant's BART service mark. The Panel also finds Complainant's contention to be valid, as the only difference between the name and the mark is the added suffix, ".net," which is immaterial when comparing domain names to marks in proceedings under the Policy. See DINGBATS v. Pool.com, FA 1296562 (Nat. Arb. Forum Jan. 20, 2010) (finding <dingbats.com> to be identical to the DINGBATS mark); see also Western Union Holdings, Inc. v. XYZ, D2005-0945 (finding <wuib.com> to be identical to the WUIB mark); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“...the addition of the generic top-level domain (gTLD) '.net' is irrelevant for purposes of determining whether a domain name is identical to a mark.”).
Furthermore, Respondent does not dispute Complainant's rights in the BART mark. Given that such rights are plainly evident to the Panel, since Complainant has submitted pertinent evidence (Annex G) of its registration with the USPTO for that mark, the Panel concludes that Complainant has satisfied this requirement of Policy ¶ 4(a)(i) as well. See Schneider Group, Inc. v. Mann, D2010-0448 (WIPO May 5, 2010) ("...Complainant has established rights in the PROTEK mark under Policy paragraph 4(a)(i) through its registration with the USPTO."); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) ("Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the mark pursuant to Policy ¶ 4(a)(i).").
As a result, the Panel finds that Complainant has proven the element noted in Policy ¶ 4(a)(i).
It appears to the Panel that Complainant has put forth a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, based upon Complainant's ownership of rights in an identical service mark and the lack of evidence that Complainant has ever licensed or otherwise authorized Respondent to use that mark. It is therefore incumbent upon Respondent to come forward with evidence to rebut that prima facie case. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”) see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Respondent's rebuttal to Complainant's prima facie case centers around the notion that the disputed domain name is a generic term — i.e, "Bart" is a short form of the common proper name "Bartholomew"— and that Respondent's business is to buy and resell it and other similar generic domain names, a practice that prior Policy panels have found to constitute a legitimate interest in such names. The Panel agrees with Respondent that such panels have deemed the business of buying and reselling domain names to be a legitimate enterprise for the purposes of scrutiny under Policy ¶ 4(a)(ii). See Academy, Ltd. v. This Domain For Sale, FA 1534168 (Nat. Arb. Forum Jan. 23, 2014) ("...it has been held that a respondent demonstrates its rights or a legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) where the respondent is an Internet business which sells generic domain names."); sea also Parlance Corp. v. Dynamo.com, FA 1508767 (Nat. Arb. Forum Aug. 19, 2013) ("...there is case law under the Policy to the effect that a business dealing in generic domain names is prima facie legitimate.").
However, the Panel concludes that many of those prior Policy panels, while acknowledging the purchase and resale of domain names as generally legitimate, require that in each case the specific disputed domain name must be examined relative to that general practice to determine whether rights or legitimate interests obtain in that name. That examination is particularly appropriate when a disputed domain name is identical or confusingly similar to a valid trademark or service mark, no matter how generic the composition of the mark. The Panel agrees with and will follow that consensus approach in its analysis. See Electronic Trans. Sys. Corp. v. Will E., FA 1563968 (Nat. Arb. Forum July 28, 2014) ("...the issue is not simply the legitimacy of Respondent’s business model, but whether it has a legitimate interest in the disputed domain name itself."); see also Austin Pain Ass'n v. Domain Admin, FA 1536356 (Nat. Arb. Forum Mar. 18, 2014) ("...the issue is not the legitimacy of Respondent’s business model but whether it has a legitimate interest in the disputed domain name. Put another way, the legitimacy of Respondent’s business does not, of itself, create rights or a legitimate interest in a domain name corresponding with the trademark of another.").
In this case, the Panel notes that the BART mark was registered and Complainant has been in operation since 1973. Both of those circumstances arose in the country of Respondent's residence and occurred more than forty years before Respondent purchased the disputed domain name. Moreover, while it is a stretch for the Panel to believe that Respondent was unaware of Complainant or its mark before said purchase, certainly minimal effort in running such a reselling business, in which Respondent claims to be engaged, would have disclosed those circumstances. That is particularly true as Complainant has operated a website under both <bart.gov> and <bart.org> for many years. Furthermore, the Panel believes that Respondent's almost immediate offer, after that purchase, to sell the disputed domain name to Complainant undercuts Respondent's contention that it bought the name not for exactly that purpose but because it was generic. See Aspect Capital Ltd. v. Fluder, D2015-0475 (WIPO Apr. 14, 2015) ("It is nonetheless very difficult, if not impossible, for the Respondent to maintain that the Domain Name was not registered to target the Complainant, as the Respondent has offered the Domain Name for sale to the Complainant immediately following registration of the Domain Name.").
Respondent contends that it made said offer only when discovering Complainant's ownership of the mark after finding the <bart.org> website, apparently a few days after the purchase. Granting the maximum credence it can to Respondent's contention, the Panel can only wonder why, if such information was so readily and easily obtainable, did not Respondent access it prior to purchasing the disputed domain name in the proper and reasonable exercise of Respondent's business — if that business is actually legitimate? Accordingly, the Panel concludes that Respondent's contention is inadequate.
Given that Respondent does not and cannot reasonably claim that he is commonly known as the disputed domain name and makes no actual use (commercial or noncommercial) of that name, Policy ¶ 4(c) is otherwise inapplicable to this case, and the Panel determines that Complainant's prima facie case prevails.
As a result, the Panel finds that Complainant has proven the element noted in Policy ¶ 4(a)(ii).
Complainant refers to, and the Panel cites, Policy ¶ 4(b)(i) as a circumstance that, if found to be relevant, warrants a finding of bad faith registration and use of a disputed domain name, as follows:
circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the domain name.
In this case, Respondent concedes that, within a short time after acquisition of the disputed domain name, he solicited $11,000 (an amount that certainly exceeds his direct out-of-pocket costs related to the name) from Complainant for the purchase of the name. The Panel is compelled to believe that the proposed sale was the primary purpose in Respondent's acquisition of that name. Accordingly, the Panel concludes that Policy ¶ 4(b)(i) is applicable and that Respondent registered and is using the disputed domain bad faith.
For the sake of completeness, the Panel notes that it has been well-established in previous UDRP decisions that a respondent's acquisition of a disputed domain name is equivalent to a new registration of that name for the purposes of analysis under the Policy. See iFranchise Group v. Bean, D2007-1438 (WIPO Dec. 18, 2007) ("...the general rule established by panels is that a subsequent acquirer of a domain name is held to have 'registered' that domain name for purposes of the Policy as of the date of acquisition of the registration rights."); see also Ass'n of Junior Leagues Int'l Inc. v. This Domain Name, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) ("...one only needs to trace the registration date [of a domain name] back to the most recent transfer instead of the original registration.").
As a result, the Panel finds that Complainant has proven the element noted in Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bart.net> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: September 25, 2015
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