Complainant is Commuter Rail Division of the Regional Transportation Authority, United States of America (“United States”), represented by Locke Lord LLP., United States.
Respondent is Domain Administrator, See PrivacyGuardian.org, United States / GRUPO SA Ltd Co, Grupo S.A. Ltd. Co., United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2020. On April 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2020, 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 Complainant on April 15, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 16, 2020. 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 Respondent of the Complaint, and the proceedings commenced on April 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 12, 2020. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on May 18, 2020. 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 Complainant is a governmental agency of the State of Illinois that operates rail lines, stations, parking lots, platforms, bridges, tracks, crossings, coach yards, substations, and fuel facilities within the state (and to a limited extent, into neighboring Wisconsin). It has been using its METRA mark (“Complainant’s Mark”) in connection with those services since at least 1985. It owns United States trademark registration number 4,885,306 for its METRA trademark, which was registered on January 12, 2016. In 2019, Complainant provided approximately 74 million passenger trips under the METRA mark. Respondent registered the disputed domain name Complainant argues that the disputed domain name is confusingly similar to its METRA mark because it reproduces identically and entirely the METRA mark. Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain name. According to Complainant, Respondent cannot claim to be making any legitimate noncommercial or fair use of the disputed domain name because it fully incorporates Complainant’s mark and resolves to a website containing pay-per-click advertising for services similar to those offered under Complainant’s Mark. Complainant argues that these facts, along with the lack of evidence showing use of the disputed domain name in connection with a bona fide offering of goods or services clearly indicate that Respondent’s sole purpose in acquiring the disputed domain name was to profit from Complainant’s METRA mark. Complainant further alleges that Respondent is not commonly known by the METRA mark, is not associated or affiliated to Complainant in any way and was never licensed or authorized to use Complainant’s Mark. Lastly, Complainant alleges that Respondent registered and used the disputed domain name in bad faith. According to Complainant, Respondent must have had actual and constructive notice of Complainant’s rights in the METRA mark when registering the disputed domain name due to the METRA mark’s famousness and Complainant’s continuous use of the mark for 25 years. Furthermore, Complainant argues that Respondent’s specific targeting of the METRA mark in connection with a website containing pay-per-click advertising links comprised of terms related to services covered by the METRA mark demonstrates that Respondent registered and is using the disputed domain name to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s mark. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the METRA mark through its United States registration. With Complainant’s rights in the METRA mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s METRA mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” WIPO Overview 3.0, section 1.7. Here, Complainant’s Mark is fully and identically incorporated in the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is identical or confusingly similar to Complainant’s METRA mark. B. Rights or Legitimate Interests Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of production of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1 Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or legitimate interests in the domain name: (i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. WIPO Overview 3.0, section 2.1. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden then shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. Id. Furthermore, panels have found that the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. WIPO Overview 3.0, section 2.9. See also, Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267. Moreover, it is not clear what the disputed domain name may refer to other than Complainant’s mark. In this case, the Panel finds that Complainant has made out a prima facie case even though the disputed domain name was registered before Complainant obtained a federal registration for its METRA mark. Complainant’s federal registration states that it has been using the METRA mark in commerce since at least 1985 and that some 74 million passenger rides have been undertaken using its services) and there is no evidence on record suggesting that Respondent used the disputed domain name for any other purpose other than creating a website with pay-per-click advertising links promoting services similar to those covered under Complainant’s Mark. This cannot be considered a bona fide offering of goods and services, particularly when the disputed domain name is identical to Complainant’s Mark. Furthermore, there is also no evidence that respondent is commonly known by the disputed domain name. Therefore, it fell upon Respondent to provide evidence showing that it had rights or legitimate interests in the disputed domain name to rebut Complainant’s prima facie case. Since Respondent never offered any such evidence or arguments, the Panel concludes that Complainant has met its burden under Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found when, by using a disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. There is sufficient evidence to lead this Panel to infer that Respondent registered and used the disputed domain name in bad faith. Even though Complainant had no federal trademark registration at the time the disputed domain name was registered, Complainant has been using its inherently distinctive METRA mark in commerce since 1985 – long before the registration of the disputed domain name. Respondent’s registration and use of a domain name identical to an inherently distinctive trademark displaying pay-per-click links regarding services identical or highly similar to those covered by Complainant’s Mark makes it highly unlikely that Respondent was not aware of Complainant’s Mark. The fact that Complainant uses the METRA mark to provide transportation services on tens of millions of occasions in one of the largest cities in the United States makes it even less likely that Respondent was not aware of Complainant’s Mark given its commercial strength. Based on the available evidence, it appears more likely than not that Respondent registered the disputed domain name in order to trade on the goodwill associated with Complainant’s Mark by redirecting web traffic aimed at locating Complainant to Respondent’s website thereby generating click-through fees for Respondent’s commercial gain. The Panel also notes that Respondent has been the subject of various other domain name disputes, indicating that the disputed domain name is part of a pattern of bad faith behavior by Respondent. There is simply no evidence suggesting any good faith basis for Respondent’s registration or use of the disputed domain name. For these reasons, this Panel finds that Complainant satisfied its burden of showing that Respondent registered and is using the disputed domain name in bad faith, within the meaning of paragraph 4(b)(iv) of the Policy. 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 Brian J. Winterfeldt
Sole Panelist
Date: June 1, 2020
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