New Jersey Transit Corporation v. Moniker Privacy Services
Claim Number: FA1511001650117
Complainant is New Jersey Transit Corporation (“Complainant”), represented by John P. Sullivan of Volpe and Koenig, P.C., Pennsylvania, USA. Respondent is Moniker Privacy Services (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <njtransit.info> ('the Domain Name'), registered with Moniker Online Services LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 30, 2015; the Forum received payment on November 30, 2015.
On November 30, 2015, Moniker Online Services LLC confirmed by e-mail to the Forum that the <njtransit.info> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services 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 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@njtransit.info. 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 31, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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.
A. Complainant
The Complainant's contentions can be summarised as follows:
Complainant is the owner and operator of the New Jersey State owned public transportations system serving the US state of New Jersey. It has been offering transportation services and related merchandise and services under the NJ TRANSIT mark since at least as early as 1980. It operates a web site at www.njtransit.com.
The Complainant has registered trademarks for NJ TRANSIT in the United States for its services.
The Domain Name is identical to or confusingly similar to a trade mark in which the Complainant has rights. Respondent uses the Domain Name to direct Internet users to a web site which features click through advertising, information services and/or offers merchandise for sale that competes with Complainant’s similar services and products offered under the NJ TRANSIT marks or otherwise creates consumer confusion. Internet users will be led to believe that the Domain Name and the site thereat are associated with the Complainant when they are not.
The use of the .info top level domain extension in association with Complainant's NJ TRANSIT marks is not considered as creating a distinct mark capable of overcoming a claim of confusing similarity.
The use of a domain name which from its outset is infringing on the trade mark rights of another can never be considered legitimate. The use is commercial so cannot be non-commercial or fair use.
Respondent is not commonly known by the Domain Name prior to its actual knowledge of the Complainant’s rights.
Respondent’s registration and use of the Domain Name has no legitimate non infringing purpose.
Respondent registered and is using the Domain Name in bad faith. Numerous panels have held that using a domain name confusingly similar to a Complainant’s mark to link to a competitor's web site constitutes bad faith under the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner and operator of the New Jersey State owned public transportations system serving the US state of New Jersey. It has been offering transportation services and related merchandise and services under the NJ TRANSIT mark since at least as early as 1980. It operates a web site at www.njtransit.com. The Complainant has registered trademarks for NJ TRANSIT in the United States for its services.
The Domain Name is identical to or confusingly similar to a trade mark in which the Complainant has rights. Respondent uses the Domain Name to direct Internet users to a web site which features click through advertising and information services which are not connected with the Complainant.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Respondent does not appear to have any trade marks associated with the name NJ TRANSIT. There is no evidence that it is commonly known by this name and it does not have any consent from the Complainant to use this name. It does not appear to have used the Domain Name for any bona fide offering of services. Currently, the web site attached to the Domain Name points to pop up commercial advertising and news posts unconnected to the Complainant. The Respondent does not explain why he has registered a domain name consisting of the Complainant's trade mark. Given the contents of the site attached to the Domain Name the Panelist infers the Respondent's intentions were to use it for profit capitalizing on the Complainant's goodwill in its trade mark. See Disney Enters, Inc v Kamble FA 918556 (Nat Arb Forum Mar 27 2007) (holding that the operation of a pay per click web site at a confusingly similar domain name was not a bona fide offering of goods and services under Policy 4 (c) (i), nor a noncommercial or fair use under Policy 4 (c)(iii). Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name.
.Paragraph 4(b) of the Policy sets out four nonexclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including
“by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <njtransit.info> domain name be TRANSFERRED from Respondent to Complainant.
<<Dawn Osborne>>, Panelist
Dated: <<January 12, 2016>>
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