The San Francisco Bay Area Rapid Transit District (“Complainant”), which is known As BART and owns the domain Bart.org and Bart.gov, just won the rights to the domain name Bart.net
The sole panelist Dennis A. Foster awarded that the domain name which was registered initially in 1995 and has been sold and resold by a number of entities until Respondent acquired the name in June 2015 where is now going to a non-resolving page.
The panelist also took note that within days of acquiring the domain name in June 2015 the owner of Bart.net offered it sell it to the Complainant for $11,000
Here are the highlights:
Complainant is a United States governmental agency that operations public commuter rail services to over 300,000 riders per day in the San Francisco Bay Area.
Complainant’s services are provided under a service mark, BART, that is an acronym for a portion of its name and was registered with the United States Patent and Trademark Office (“USPTO”) in 1973.
Complainant also owns the <bart.gov> domain name, through which it uses a website to extensively advertise and promote its services. Moreover, Complainant owns <bart.org>, which resolves to the website found at <bart.gov>.
It appears to the Panel that Complainant has put forth a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, based upon Complainant’s ownership of rights in an identical service mark and the lack of evidence that Complainant has ever licensed or otherwise authorized Respondent to use that mark.
Respondent’s rebuttal to Complainant’s prima facie case centers around the notion that the disputed domain name is a generic term — i.e, “Bart” is a short form of the common proper name “Bartholomew”— and that Respondent’s business is to buy and resell it and other similar generic domain names, a practice that prior Policy panels have found to constitute a legitimate interest in such names.
The Panel agrees with Respondent that such panels have deemed the business of buying and reselling domain names to be a legitimate enterprise for the purposes of scrutiny under Policy ¶ 4(a)(ii).
However, the Panel concludes that many of those prior Policy panels, while acknowledging the purchase and resale of domain names as generally legitimate, require that in each case the specific disputed domain name must be examined relative to that general practice to determine whether rights or legitimate interests obtain in that name.
That examination is particularly appropriate when a disputed domain name is identical or confusingly similar to a valid trademark or service mark, no matter how generic the composition of the mark.
In this case, the Panel notes that the BART mark was registered and Complainant has been in operation since 1973.
Both of those circumstances arose in the country of Respondent’s residence and occurred more than forty years before Respondent purchased the disputed domain name.
Moreover, while it is a stretch for the Panel to believe that Respondent was unaware of Complainant or its mark before said purchase, certainly minimal effort in running such a reselling business, in which Respondent claims to be engaged, would have disclosed those circumstances.
That is particularly true as Complainant has operated a website under bart.gov and bart.org for many years.
Furthermore, the Panel believes that Respondent’s almost immediate offer, after that purchase, to sell the disputed domain name to Complainant undercuts Respondent’s contention that it bought the name not for exactly that purpose but because it was generic.
Respondent contends that it made said offer only when discovering Complainant’s ownership of the mark after finding the bart.org website, apparently a few days after the purchase.
Granting the maximum credence it can to Respondent’s contention, the Panel can only wonder why, if such information was so readily and easily obtainable, did not Respondent access it prior to purchasing the disputed domain name in the proper and reasonable exercise of Respondent’s business — if that business is actually legitimate?
Accordingly, the Panel concludes that Respondent’s contention is inadequate.
Given that Respondent does not and cannot reasonably claim that he is commonly known as the disputed domain name and makes no actual use (commercial or noncommercial) of that name, Policy ¶ 4(c) is otherwise inapplicable to this case, and the Panel determines that Complainant’s prima facie case prevails.
As a result, the Panel finds that Complainant has proven the element noted in Policy ¶ 4(a)(ii).
In this case, Respondent concedes that, within a short time after acquisition of the disputed domain name, he solicited $11,00.
Accordingly, the Panel concludes that Policy ¶ 4(b)(i) is applicable and that Respondent registered and is using the disputed domain bad faith.
For the sake of completeness, the Panel notes that it has been well-established in previous UDRP decisions that a respondent’s acquisition of a disputed domain name is equivalent to a new registration of that name for the purposes of analysis under the Policy.
