WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CSX Technology, Inc. and CSX Corporation v. Swarthmore Associates, LLC
Case No. DBIZ2002-00061
1. The Parties
The Complainants are: CSX Technology, Inc., a corporation organized and existing under the laws of the State of Delaware, United States of America, with a principal place of business at 550 Water Street, J976, Jacksonville, Florida 32202, United States of America; and CSX Corporation, a corporation organized and existing under the laws of the State of Virginia, United States of America, with a principal place of business at 901 East Carey Street, Richmond, Virginia 23219-4031, United States of America (individually and collectively referred to hereinafter as "Complainant"). Complainant is represented in this proceeding by Karen Koster Burr, Esq., Atlantic Beach Law, P.A., P.O. Box 330630, Atlantic Beach, Florida 32233-0630, United States of America.
The Respondent in this proceeding is Swarthmore Associates, LLC, whose address is 754 Swarthmore Avenue, Pacific Palisades, California 90272, United States of America. Respondent is represented in this proceeding by Sherry Anne Lear, Esq., Law Offices of Sherry Anne Lear, 276 Torrance Boulevard, Torrance, California 90501, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is <csx.biz>, (the "disputed domain name").
The registrar for the disputed domain name is PSI-Japan, Asahi Sanban-cho, Plaza #206, 7-I, Sanban-cho, Chiyoda-ku, Tokyo, 1020075, Japan.
3. Procedural History
The resolution of this Complaint will proceed according to the provisions of the Start-up Trademark Opposition Policy for .BIZ (STOP) adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on May 11, 2001, the Rules for Start-up Trademark Opposition Policy for .BIZ adopted by NeuLevel, Inc. on May 11, 2001 (the STOP Rules), and the World Intellectual Property Organization Arbitration and Mediation Centerís Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (, the Supplemental STOP Rules).
The Complaint was filed on April 25, 2002, by e-mail, and on April 30, 2002, in hard copy. On May 3, 2002, and May 21, 2002, the Center sent a Request for Registrar's Verification to the Registrar, pursuant to which the Center verified that the correct registrarnt was identified in the Complaint.
On May 24, 2002, the Center forwarded a copy of the Complaint to the Respondent by registered mail and by e-mail and this proceeding officially began. Also on May 24, 2002, the Center received from Respondent two communications noting that Respondent had changed its representative to the representative noted above.
Respondent sent a STOP Response to the Center on May 22, 2002, in hard copy and on June 12, 2002, by e-mail.
The Administrative Panel submitted a Declaration of Impartiality and Independence on July 11, 2002, and the Center proceeded to appoint the Panel on July 17, 2002. The Panel finds the Center has adhered to STOP, the STOP Rules and the Supplemental STOP Rules in administering this Case.
The due date of this Decision is July 31, 2002.
4. Factual Background
Complainant, a large American company operating in the business of freight transportation, owns several registered United States trademarks in "CSX" (collectively referred to hereinafter as the "Complainant Trademark").
Respondent is listed as the Registrant of the disputed domain name. The record of registration was created on March 27, 2002.
5. The Partiesí Contentions (Summarized)
-- Complainant owns several United States registered trade and service marks for "Csx" (Annex 3 to the Complaint), the oldest dating to 1983, for the fields of freight transportation and transportation consultation services.
-- Respondentís domain name is identical to the Complainant Trademark. The Complainant Trademark was registered before Respondent registered the disputed domain name.
-- Respondent has neither rights nor legitimate interests in the disputed domain name. Respondent has conceded that it has not registered or used the trademark embodied in the disputed domain name. There is no substantiated indication of a legitimate intention by Respondent to use the disputed domain name. Respondent does not appear to be engaged in business as evidenced by: Respondentís address being listed as the same as its first attorneyís address; the phone number listed in the registration yielding only a voice repeating back that phone number with no indication who or what has been contacted; and Respondentís first attorneyís lack of cooperation in providing information as to Respondent's identity or business operations.
-- The Respondent registered the <csx.biz> domain name in bad faith. Respondent willfully ignored the warning it received that Complainant had asserted its IP rights in the name. Ordinary due diligence on the part of Respondent before use of a name would have uncovered Complainantís numerous registrations and broad use of the "CSX" mark.
-- Respondent agrees that the domain name is identical to the "CSX" trademark used by Complainant in the fields of freight transportation and transportation consultation services.
-- During the pendency of this STOP proceeding, it has not been possible to launch a web site at the disputed domain name address. However, Respondent intends to implement such a web site in a completely allowable manner, which will not relate to the sale of freight transportation or transportation consultation services, or in any way infringe upon Complainantís trademark. The site will not refer to Complainant, but rather will use the initials "c", "s" and "x" as an abbreviation for the title of the site.
-- Respondent has not used or registered the disputed domain name in bad faith. The name has not been used by Respondent thus far. When Complainant contacted Respondent, Complainant was advised that the domain name had been registered for legitimate business purposes. Since Respondent's intended use of the disputed domain name involves no trademark infringement or realistic possibility of confusion with Complainant, there is no violation of the STOP.
6. Discussion and Findings
In order for Complainant to succeed in this proceeding and have the disputed domain name <csx.biz> transferred to it, Complainant must prove the following (STOP, paragraphs 4(a)(i-iii):
-- the domain name is identical to a trademark or service mark in which Complainant has rights; and
-- Respondent has no rights or legitimate interests in respect of the domain name; and
-- the domain name was registered or is being used in bad faith.
The record amply demonstrates that Complainant owns valid and existing United States registrations of the trademark "CSX" (e.g., United States Registration Nos.: 1,230,400, dated March 8, 1983, for freight transportation; and 2,543,778, dated March 5, 2002, for consultation services) (see Complaint Annex 3). It is apparent that Complainantís mark rights preceded Respondent's registration of the disputed domain name.
Furthermore, as has been conceded by Respondent, the disputed domain name, <csx.biz>, is clearly identical to the Complainant Trademark.
As a result, the Panel finds that Complainant has met its burden under paragraph 4(a)(i) of STOP to prove that the disputed domain name is identical to a trade or service mark in which Complainant has rights.
Rights or Legitimate Interests
Although paragraph 4(a)(ii) of STOP puts on Complainant the burden of proving that Respondent has no rights or legitimate interest in respect of the disputed domain name, the Panel, in implementing the overall intent of STOP, must evaluate the record fully in rendering its determination on this issue.
The record reveals that Respondent received neither consent nor a license from Complainant to use the Complainant Trademark. Additionally, in reference to paragraphs 4(c)(i) and (iii) of STOP, the record fails to sustain any finding that Respondent is the owner of a trade or service mark identical to the disputed domain name or that Respondent is commonly known by the disputed domain name.
Respondent agrees that it has not used the domain name in dispute. Respondent argues instead that only the conditions of this proceeding prevent Respondent from implementing its plan to utilize the disputed domain name for a web site featuring the letters "c", "s" and "x" as the initials of the web site's title. However, Respondent has furnished the Panel with no evidence as to what that title will be or that Respondent has taken any concrete steps to launch that web site.
Furthermore, there is no indication in the record that that web site is to be included by Respondent in the scope of a business enterprise, the purpose for which the gTLD, ".biz", was opened for registration. Accordingly, the Panel concludes that Respondent has failed to show prior use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, and therefore has failed to satisfy the criteria for establishing a legitimate interest in that name per paragraph 4(c)(ii) of STOP.
In analyzing the entire record before it, the Panel finds that Complainant has carried its burden of proof under paragraph 4(a)(ii) of STOP in demonstrating that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that Respondent's registration of the disputed domain name was done in bad faith. In support of this contention, Complainant has submitted to the Panel no evidence suggesting that Respondent's actions fall under any of the four specific circumstances listed in paragraph 4(b) of STOP as indicative of bad faith.
However, those circumstances are not meant to be exhaustive of the possible reasons on which to base a finding under STOP of bad faith registration of a domain name, and Complainant asserts in this case that Respondent's bad faith arises from its almost certain knowledge of the stature of the Complainant Trademark. Previous panels conducting administrative proceedings similar to this under both STOP and the Uniform Policy for Domain Name Dispute Resolution have found bad faith registration based almost solely on the level of notoriety of the trademark in question (see for example the mark "Alfa Romeo" in Fiat Auto S.p.A v. Italienska bil, WIPO Case No. DBIZ2001-00030 (February 12, 2002), and the mark "Chanel" in Chanel, Inc. v. Buybeauty.com, WIPO Case No. D2000-1126 (November 22, 2000).
In this case, the Panel believes most Americans are familiar with common sightings of the Complainant Trademark on trains throughout the United States. Respondent's address is listed in California, where the Panel finds that virtually everyone has seen more than once the distinctive markings of the Complainant Trademark on multiple freight cars traversing railroad tracks across that State. As a result, the Panel finds it difficult to believe that Respondent was unaware of the degree of notoriety attached in its own region to Complainant' mark composed of a distinctive sequence of three letters and that use of the identically sequenced letters as a domain name would give rise to infringement. Thus, the Panel concludes that Respondent acted in bad faith in registering the disputed domain name.
Per the foregoing, the Panel finds that Complainant has sustained its burden under paragraph 4(a)(iii) of STOP.
The Panel finds the disputed domain name, <csx.biz>, is identical to Complainantís "CSX" trade and service marks. The Panel also finds the Respondent has no rights or legitimate interests in the disputed domain name. Finally, the Panel finds Respondent registered the disputed domain name in bad faith because Respondent was surely aware Complainant's mark was imbued with such a large amount of notoriety that infringement of that mark by Respondent's use of the disputed domain name was very likely.
Therefore, in accordance with paragraph 4(i) of STOP and paragraph 15 of the STOP Rules, the Panel orders that the disputed domain name, <csx.biz>, be transferred from Respondent, Swarthmore Associates, LLC, to the Complainant, CSX Technology, Inc.
Dennis A. Foster
Dated: July 31, 2002