The Complainant is National Railroad Passenger Corporation, United States of America (“United States”), represented by Reed Smith LLP, United States.
The Respondent is Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2019. On October 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 30, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 5, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 10, 2019. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2019. The Center appointed Gabriela Kennedy as the sole panelist in this matter on December 13, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is a passenger railroad service that has been operating for nearly 50 years, serving over 500 destinations across 46 states in the United States and three Canadian provinces. The Complainant is the owner of numerous trade mark registrations for the AMTRAK word and device marks in the United States, including, inter alia, the AMTRAK trade mark, United States registration no. 0960643, registered on June 5, 1973 covering goods and services in class 39, which the Complainant has been using continuously since 1971 in relation to its transportation services. The Complainant also owns and operates the domain name The Respondent is based in Panama. The Disputed Domain Name was registered by the Respondent on May 14, 2018 through a privacy shield, and currently resolves to a parking page comprising pay-per-click links. 5. Parties’ Contentions A. Complainant The Complainant’s primary contentions can be summarised as follows: (a) the Disputed Domain Name is identical or highly similar to the Complainant’s registered trade mark AMTRAK, which has been wholly incorporated into the Disputed Domain Name with the mere addition of the generic word “wifi”; (b) the Complainant has never authorised or given permission to the Respondent, who is not affiliated with the Complainant in any way, to use its mark AMTRAK, therefore the Respondent has no rights or legitimate interest in the Disputed Domain Name; and (c) the reputation of the Complainant’s AMTRAK trade mark, combined with the Respondent’s established pattern of cybersquatting and attempt to sell the Disputed Domain Name, support the fact that the Respondent is acting in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements: (i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar The Panel accepts that the Complainant has rights in the AMTRAK trade mark, based on its various trade mark registrations. It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain (“TLD”) extension “.com” may be disregarded. See section 1.11 of the WIPO Overview Panel views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Disputed Domain Name incorporates the Complainant’s AMTRAK mark in its entirety with the addition of the word “wifi”. The Panel agrees with the Complainant that the mere addition of the generic word “wifi” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trade mark. The Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s AMTRAK trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0. The Panel accepts that the Complainant has not authorised the Respondent to use the AMTRAK mark, and that there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the AMTRAK mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence and by carrying out her own investigation. Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following: (1) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or (2) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or (3) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. The Disputed Domain Name resolves to a parking page comprising pay-per-click links to various websites which purport to compete with the Complainant’s business. This suggests that the Respondent is using the Disputed Domain Name to capitalise on the reputation and goodwill of the Complainant’s trade mark. There is no evidence to suggest that the Disputed Domain Name has been used in connection with any legitimate noncommercial or fair use within the meaning of paragraph 4(ii) of the Policy. Further, no evidence has been provided to demonstrate that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that she has become known by the Dispute Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See paragraph 3.1.4 of the WIPO Overview 3.0. As such, the fact that the Disputed Domain Name incorporates the Complainant’s AMTRAK mark in its entirety already creates a presumption of bad faith. The Panel has also considered the following facts which further demonstrate that the Disputed Domain Name has been registered and used by the Respondent in bad faith: (i) the Complainant’s AMTRAK trade mark is well known. A quick Internet search conducted by the Panel shows that the top search results returned for the keyword “Amtrak” are the Complainant’s website and various affiliated social media pages. Therefore, the Panel accepts the Complainant’s argument that the Respondent must have been fully aware of the Complainant at the time of registering the Disputed Domain Name; (ii) the Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name, or any explanation as to the reasons why the Respondent chose to register a domain name that incorporated AMTRAK; (iii) the fact that the Disputed Domain Name resolves to a parking page comprising of pay-per-click links that redirect Internet users to third party websites which compete with the Complainant’s business is a clear indication that the Respondent intentionally registered the Disputed Domain Name for its own commercial gain by creating a likelihood of confusion with the Complainant’s AMTRAK mark; (iv) the Respondent has been named in over 50 UDRP proceedings, indicating that the Respondent has been engaging in a pattern of bad faith conduct as demonstrated by its many abusive domain name registrations; and (v) the Respondent registered the Disputed Domain Name using a privacy shield to conceal her identity in the WhoIs records. In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Gabriela Kennedy
Sole Panelist
Date: December 24, 2019
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