Bay Area Toll Authority v. Phan Văn Trường
Claim Number: FA2206002001491
Complainant is Bay Area Toll Authority (“Complainant”), represented by Neema Ghiasi of Hanson Bridgett LLP, California, USA. Respondent is Phan Văn Trường (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bayareafastrack.org>, registered with April Sea Information Technology Company Limited.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2022; the Forum received payment on June 22, 2022.
On July 8, 2022, April Sea Information Technology Company Limited confirmed by e-mail to the Forum that the <bayareafastrack.org> domain name is registered with April Sea Information Technology Company Limited and that Respondent is the current registrant of the name. April Sea Information Technology Company Limited has verified that Respondent is bound by the April Sea Information Technology Company Limited 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 July 14, 2022, the Forum served the Complaint and all Annexes, including a Vietnamese and English language Written Notice of the Complaint, setting a deadline of August 3, 2022 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@bayareafastrack.org. Also on July 14, 2022, the Vietnamese and English language 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, the Forum transmitted to the parties a Notification of Respondent Default.
On August 10, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complaint was submitted in English. The Forum sent a formal Deficiency Notice to Complainant stating, inter alia, that:
“Pursuant to verification received from the Registrar, the Registration agreement is in Vietnamese. You have two options: 1. Translate the Complaint and Table of Contents into Vietnamese, or 2. Modify the complaint to explain why Respondent is capable of understanding English and therefore, the proceedings should be conducted in English.”
The Deficiency Notice is explained by the facts that (i) under Rule 11(a), the language of the proceedings is Vietnamese since the registration agreement is in Vietnamese, and (ii), under the Rules the Panel has discretion to allow the proceedings to continue in a language other than Vietnamese if, for example, it is shown that a respondent can read and understand that other language and it is expeditious for the matter to so proceed.
Complainant elected to modify the Complaint, stating that the domain name includes English language terms and the resolving website uses English characters. The Complaint states that the domain name has been used in the past to attempt to download malware to computers of those who visited the resolving site. There is no evidence of that claim or of how the website allegedly presented at the time. It now resolves to a page with links such as “pay online” or “online payment”. The Panel assumes that those links were auto-generated and say nothing of Respondent’s capacity with English. Nonetheless, UDRP panelists have on the whole set a low bar with respect to this language proficiency requirement and the notes the decision in The Wawanesa Mutual Insurance Co. v. Li Hou Chang, FA 2001001881099 (Forum March 3, 2020) where it was found that the proceedings could be conducted in English without prejudice to the Respondent because the Forum provided notice of the proceedings and had sent other procedural documents to the Respondent in both Chinese and English, yet the Respondent had not provided a Response or made any other submission in this case.
On balance, the Panel determines that the proceedings here should continue in English.
A. Complainant
Complainant asserts trademark rights in FASTRAK. Complainant submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that the Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant administers bridge toll charges in the San Francisco Bay Area of the United States;
2. the trademark FASTRAK is the subject of United States Patent & Trademark Office (“USPTO”) Reg. No. 2,712,296, registered May 6, 2003;
3. the disputed domain name was registered on June 3, 2005, and presently resolves to a webpage as described above; and
4. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating the trademark.
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.
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, for example, WIPO Jurisprudential Overview 3.0 at ¶ 4.3; 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”)).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant relies upon the above-referenced USPTO registration for FASTRAK. The USPTO is a national trademark authority. However, the registration is not in the name of Complainant. Instead, it is jointly owned by Foothill/Eastern Transportation Corridor Agency, and the San Joaquin Hills Transportation Corridor Agency. There is evidence that the registered owners entered into a licensing agreement with Complainant for use of the trademark by Complainant in connection with its administration of the Bay Area’s tolls. It is well established by earlier UDRP decisions that a trademark licensee has ‘rights’ in the trademark for the purposes of paragraph 4(a)(i) of the Policy.
The disputed domain name takes the trademark, merely adding the letter “c” in a grammatically correct way; the geographic term “bay area”, and the “.org” generic top-level domain (“gTLD”). The Panel finds the domain name to be confusingly similar to the trademark (see, for example, Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) finding <wllsfago.com> confusingly similar to the WELLS FARGO mark where the domain name merely omitted the “e” and “r” from the mark while adding the “.com” gTLD suffix; Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1804001782013 (Forum June 4, 2018) holding: “Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”).
The Panel accordingly finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000‑0624).
The domain name holder is “Phan Văn Trường”. There is no suggestion that Respondent might be commonly known by the disputed domain name, or that Respondent has any trademark rights.
Complainant provides evidence that the domain name resolves to a website with links as described already. Countless prior UDRP decisions have held that misdirection of Internet users away from the business and services of a complainant by misuse of that complainant’s trademark is not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use (see, for example, WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Forum June 12, 2003) finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum August 10, 2015) finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant; Am. Century Proprietary Holdings, Inc. v. Travis Martin, FA 0905001262486 (Forum June 23, 2009) holding no rights or legitimate interests where domain name resolves to a parked website and respondent presumably generates click-through fees from such use).
The Panel finds that Complainant has made a prima facie case that Respondent lacks a right or interest in the disputed domain name. The onus shifts to Respondent. Absent a Response that onus is not met and so the Panel finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith. Paragraph 4(b)(iv) of the Policy circumscribes registration and use of a domain name in bad faith as follows:
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that paragraph 4(b)(iv) of the Policy has direct application to this case and so finds that the third and final element of the Policy is satisfied (see, for example, Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”); Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <bayareafastrack.org> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: August 11, 2022
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