New Jersey Transit Corporation v. Michael Bue
Claim Number: FA1511001650108
Complainant is New Jersey Transit Corporation (“Complainant”), represented by John P. Sullivan of Volpe and Koenig, P.C., Pennsylvania, USA. Respondent is Michael Bue (“Respondent”), represented by Roberto Ledesma of Law Office of Roberto Ledesma, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <njtranshit.com>, registered with Google Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 30, 2015; the Forum received payment on November 30, 2015.
On December 1, 2015, Google Inc. confirmed by e-mail to the Forum that the <njtranshit.com> domain name is registered with Google Inc. and that Respondent is the current registrant of the name. Google Inc. has verified that Respondent is bound by the Google Inc. 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 December 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 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 postmaster@njtranshit.com. Also on December 8, 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 December 23, 2015.
On December 28, 2015, the Forum received an Additional Submission on behalf of Complainant that was timely.
On December 31, 2015, the Forum received an Additional Submission on behalf of Respondent that was timely.
On January 4, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
A. Complainant
Complainant made the following contentions.
Policy ¶ 4(a)(i)
Complainant has rights in the NJTRANSIT.COM mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,052,059, registered on January 31, 2006). Respondent’s <njtranshit.com> domain name is confusingly similar to the NJTRANSIT.COM mark because it differs only in the inclusion of the single letter “H.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <njtranshit.com> domain name. In addition, Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to compete with Complainant to profit by offering transportation related information and related merchandise.
Policy ¶ 4(a)(iii)
Respondent uses the <njtranshit.com> domain name in bad faith because the resolving website is used to compete with Complainant by offering transportation related information and to attract Internet users for commercial gain through the sale of related merchandise.
B. Respondent
Respondent made the following contentions.
The <njtranshit.com> domain name is not confusingly similar to the NJTRANSIT.COM mark because the additional letter “h” creates the significant word “shit” in the domain name, signaling Internet users that the domain is not associated with Complainant.
Policy ¶ 4(a)(ii)
The <njtranshit.com> domain name is used for the purpose of parodying and critiquing Complainant, and not for commercial gain. The negative word “shit” in the domain sufficiently removes the likelihood of confusion by signaling to Internet users that the domain is not operated by Complainant.
Policy ¶ 4(a)(iii)
The <njtranshit.com> domain name is not used in bad faith because Respondent is neither a competitor of Complainant, nor commercially gaining from the creation of confusion. Instead, Respondent is operating a website that is critical of Complainant and parodic in nature. Further, Complainant has failed to make any arguments with respect to the alleged bad faith registration of the <njtranshit.com> domain name.
ADDITIONAL SUBMISSIONS
Complainant
Complainant made the following additional contentions
1. It reiterates its contention that the domain name is confusingly similar to the trademark. That is because the domain name differs from the trademark only by the addition of the single letter “h”.
2. Moreover, the addition of the “h” is not immediately apparent and nor is the alleged additional word as all the letters are displayed in the same case and font.
3. A straightforward visual comparison of the domain name and the trademark shows that the marks are highly similar in appearance and consumer confusion is probable.
4. There is a risk that Internet users may actually believe there to be a real
connection between domain name and the complainant and/or its goods and
services.
5. An internet user may not assign any value to the additional letter “h”.
6. The domain name is not a parody of the trademark.
7. Wit and humour cannot save a domain name that is confusingly similar as is the disputed domain name.
8. Respondent does not have rights or legitimate interests in the domain name.
9. Respondent registered and use the domain name in bad faith.
Respondent
Respondent made the following contentions
1. Respondent has not just added the letter “h” but has in effect added a new word as part of his genuine criticism of NJ Transit.
2. The word added is a substantial modifier of the trademark, making the domain name capable of being a parody on the NJ Transit name and services.
3. As the new word created gives an entirely different meaning from the trademark, it strains credulity to say that people would be confused. In fact, the opposite is the case.
4. Respondent has a right or legitimate interest in the domain name as h uses it to parody and criticise the NJ Transit and its services.
1. Complainant is a United States corporation that is the owner and operator of the New Jersey State-owned public transportation system serving the U.S. state of New Jersey along with portions of New York, Orange, and Rockland counties in New York State and Philadelphia County in Pennsylvania.
2. Complainant has rights in the NJTRANSIT.COM mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,052,059, registered on January 31, 2006).
3. Respondent registered the disputed domain name on January 7, 2011.
4. The disputed domain name is not identical or confusingly similar to 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.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the NJTRANSIT.COM mark through its registration with the USPTO (Reg. No. 3,052,059, registered on January 31, 2006). Complainant has provided this registration in Exhibit 2 to the Complaint. Accordingly, the Panel finds that Complainant has rights in the NJTRANSIT.COM mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s NJTRANSIT.COM mark. Clearly it is not identical. Complainant submits that Respondent’s <njtranshit.com> domain name is confusingly similar to the NJTRANSIT.COM mark because it differs from the trademark only in the addition of the single letter “h”. Respondent, however, submits that the effect of the inclusion of that letter is that a new word has been manifested with the result that people would take the domain name not to be a domain name of the New Jersey Transit Corporation but one that is critical of Complainant and hence would not confuse it with the NJTRANSIT mark.
The task of the Panel is to assess how the domain name would probably be seen by internet users in general from the vantage point of the objective bystander.
The Panel concludes that the domain name would be seen in the way that Respondent argues for and hence that it is not confusingly similar to the trademark.
It is of course true that only a single letter has been added to the trademark. Many single letters added to trademarks to create domain names are insignificant and any reader or internet user can tell that the resulting domain name is a typing error or, even if it is done deliberately, that it is still trying to invoke the trademark. In those cases, the domain name might be and in some cases is, confusingly similar to the trademark that inspired it.
But in the present case and other notable cases the single letter that has been added has a far more significant effect. It instantly tells the observer that the domain name is something quite different from the trademark and is intended to be different and to be understood to be different. That is what has happened in the present case. The trademark obviously means that it is the mark of the New Jersey Transit Corporation and its services and a mark used to identify itself. But the trademark with Respondent’s addition to create the domain name invokes an entirely different concept, namely the notion of criticising the same organization. That is what the domain name means. The reason why this is so is that no rational entity would describe itself in this manner and any objective observer would know that no entity would describe itself in that way. Nor is this a borderline case. It is clear beyond reasonable argument.
The same approach that the Panel has taken on this case has been taken by many panels faced with similar circumstances although, naturally, circumstances differ from case to case. Domain name decisions are not precedents in the judicial sense because they do come from court proceedings, but it is instructive to see that various panels have reached the same result in similar situations, in so far as those comparisons can be made.
Perhaps the most exotic is The California Milk Processor Board of San
Clemente v. Domains By Proxy, LLC / Del Polikretis, WIPO Case No. D2012-2285 , which involved the domain name <gotmilf.com> in which the present panellist was a member of the three person panel that decided that case, albeit with a dissenting opinion. The panel will leave it to the curious to read the decision and to see why the alteration of one letter to the trademark GOT MILK? resulted in a new word emerging and why, hence, the domain name was held not to be confusingly similar to the trademark.
There are numerous other examples: there is the long series of “sucks” case where that indelicate word has been added to a trademark and where, although not all decisions go the same way, the preponderance of opinion is that the resulting domain name is held to be not confusingly similar to the trademark because the trademark owner would not describe itself in this way. Complainant has cited some of these cases, such as The Neiman Marcus Group, Inc. and NM Nevada Trust v. CTSG and Heather Holdridge, FA0403000243503 (Nat. Arb. Forum 2004) (“The disputed domain names are not confusingly similar to Complainant’s NEIMAN MARCUS mark because the domain names add the word “carcass,” which communicates to Internet users that the domain names do not belong to Complainant.”).Then there was A & FTrademark, Inc., Abercrombie & Fitch Stores, Inc., and Abercrombie & Fitch Trading Co., Inc. v. Chad Nestor, Case No. D2003-0260 (WIPO 2003) where the domain name was <aberzombie.com>, the Complainant’s trademark was ABERCROMBIE and the Panel had no difficulty in deciding that “Abercrombie and Aberzombie are not confusingly similar.” The facts are different, as they are in all cases, but the principle remains the same: a new word can and often does, as it does in the present case, change the entire meaning and the way the public see the domain name, not as the way a company or person would describe itself in a domain name, but as something entirely different.
One could go on, but the panel is confident, without more, that the domain name is not confusingly similar to the trademark.
Accordingly, Complainant has failed to show the first of the three elements that it must establish.
As the Panel concludes that Complainant has not satisfied the first element under the Policy and as Complainant must prove all three elements, it is not necessary for the Panel to decide the other two elements.
However, as the parties clearly invested a lot of time and effort on those issues it may help them to see, briefly, the result of their labours.
Complainant’s main argument was that Respondent’s website at www.njtranshit.com was used to compete with Complainant to profit by offering transportation related information and related merchandise. All of the evidence on these issues points one way: the purpose of the website was not to compete with Complainant, but to criticize some of its alleged shortcomings and to stimulate public debate and presumably improve some of Complainant’s services. Nor, as a matter of fact, was there any competition; Complainant was running an urban transport system; Respondent was running an information and criticism website. There is also no evidence that Respondent was offering ”competing merchandise” if that expression means merchandise competing with the merchandise of Complainant. For a while, Respondent sold, or tried to sell t-shirts through the site, but if this was his main purpose he was spectacularly unsuccessful, as he sold only one t-shirt. In any case, it has been noted that minor fundraising for causes and issues scarcely takes on the character of commercial activity to make money; it is usually done to defray the costs of keeping the cause going. The site was essentially a criticism site, giving rise to a right or legitimate interest in the domain name and it is hard to see how any of Respondent’s activities in this regard can properly or fairly be described as being in bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <njtranshit.com> domain name REMAIN with Respondent.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 13, 2015
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