Subway IP Inc. v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA1911001871375
Complainant is Subway IP Inc. (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, District of Columbia, USA. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <subway.fm>, registered with Dynadot, LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 14, 2019; the Forum received payment on November 14, 2019.
On November 15, 2019, Dynadot, LLC confirmed by e-mail to the Forum that the <subway.fm> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 November 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 2019 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@subway.fm. Also on November 19, 2019, 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 13, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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
Complainant, Subway IP Inc., is one of the largest franchised chains of sandwich shops in the world. Complainant has rights in the SUBWAY mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,174,608, registered Oct. 20, 1981.) Respondent’s <subway.fm> domain name is confusingly similar to the SUBWAY mark, as it contains Complainant’s mark in its entirety, merely adding the “.fm” country code top-level domain (“ccTLD”).
Respondent does not have rights or legitimate interests in the <subway.fm> domain name. Respondent is not permitted or licensed to use Complainant’s SUBWAY mark and is not commonly known by the disputed domain name. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <subway.fm> domain name to redirect users to Respondent’s website which hosts third party links, some of which directly compete with Complainant’s restaurant business.
Respondent has registered and uses the <subway.fm> domain name in bad faith. Respondent is attempting to attract Internet users to its competing website for commercial gain. Additionally, Respondent used a privacy service to conceal its identity. Also, Respondent failed to respond to a cease-and-desist letter from Complainant. Finally, Respondent had knowledge of Complainant’s SUBWAY mark prior to registering the <subway.fm> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel notes that <subway.fm> domain name was created on November 2, 2018.
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 WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
Complainant claims rights in the SUBWAY mark based upon its registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides copies of its USPTO registrations for the SUBWAY mark (e.g., Reg. No. 1,174,608, registered Oct. 20, 1981.) Therefore, the Panel finds that Complainant has rights in the SUBWAY mark per Policy ¶ 4(a)(i).
Next, Complainant asserts that the <subway.fm> domain name is confusingly similar to the SUBWAY mark as Respondent incorporates the mark in its entirety and adds the “.fm” ccTLD. Additions of a ccTLD to a complainant’s mark is irrelevant in determining whether the disputed domain name is confusingly similar. See Wicked Weasel Pty Ltd v. Kulich / GS, FA 1604785 (Forum Apr. 23, 2015) (“The addition of a ccTLD to a registered trademark is not sufficient to overcome a finding of confusing similarity under a Policy ¶4(a)(i) analysis.”). The Panel agrees with Complainant and finds that Respondent’s <subway.fm> domain name is identical to Complainant’s SUBWAY mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the <subway.fm> domain name as Respondent is not authorized to use Complainan’s SUBWAY mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.); see also Kohler Co. v. Privacy Service, FA1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel notes that the WHOIS information of record identifies registrant as the privacy service “Super Privacy Service LTD c/o Dynadot.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
In addition, Complainant argues that Respondent’s <subway.fm> domain name resolves to a website that is offering advertisements. Advertisements that divert traffic to third-party websites do not constitute a bona fide offering of goods or services, or a noncommercial or fair use per Policies ¶¶ 4(c)(i) & (iii). See TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) (”Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant… The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.”). Complainant argues that Respondent uses the disputed domain name to host a webpage that contains a listing of links which redirect Internet users to third-party websites, some of which compete directly with Complainant’s restaurant business. The Panel finds that Respondent’s use of the <subway.fm> domain name to offer competing third-party links is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <subway.fm> domain name in bad faith. Specifically, Complainant contends Respondent is disrupting Complainant’s business and diverting users to the disputed domain name to offer links to competing goods and services. Using a disputed domain name to mislead users and redirect them to a competing websites may indicate bad faith per Policy ¶¶ 4(b)(iii) and (iv). Respondent is presumed to be receiving click-through fees from the links leading to Complainant’s competitors. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶¶ 4(b)(iii) and (iv).
Further, Complainant argues Respondent must have had knowledge of Complainant’s SUBWAY mark. Complainant argues that due to the fame of the SUBWAY mark and Respondent’s inclusion of Complainant’s SUBWAY mark in its entirety in the disputed domain name, Respondent must have had actual knowledge. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the SUBWAY mark prior to registration which shows bad faith per Policy ¶ 4(a)(iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <subway.fm> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: December 23, 2019
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