WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Subway IP Inc. v. Cetinje S.R.O.

Case No. DRO2019-0007

1. The Parties

The Complainant is Subway IP Inc., United States of America (“USA”), represented by FairWinds Partners, LLC, USA.

The Respondent is Cetinje S.R.O. Slovakia, represented by Ferenc Farkas, Hungary.

2. The Domain Name and Registrar

The disputed domain name <subway.ro> is registered with ROTLD (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2019. On May 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 16, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2019. The Response was filed with the Center on June 7, 2019.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on June 20, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant was founded in the USA in 1965 and is now one of the largest franchised chains of sandwich shops in the world. In 1968, the Complainant’s sandwich shop was renamed “Subway”. The Complainant now has over 21,000 franchisees operating approximately 42,000 Subway-branded shops in more than 100 countries around the world. At the end of 2010, the Complainant became the largest fast food chain worldwide. The Complainant is the second-largest fast food advertiser in the USA, sponsors a number of sporting events and benefits from extensive media coverage in the international press. The Complainant has over 35 restaurants in operation in Romania and utilizes a localized website at “www.subwayro.com”.

The Complainant is the owner of a wide variety of registered trademarks in the mark SUBWAY including Romanian registered trademark no. R18002 for the word mark SUBWAY filed on September 14, 1990 and registered on May 6, 1994 in respect of class 42, restaurant services, and European Union registered trademark no. 0076778 for the word mark SUBWAY filed on April 1, 1996 and registered on July 4, 2001 in respect of classes 29, 30 and 42 covering certain foods and restaurant services. The Complainant asserts that the SUBWAY mark is globally famous due to the scale of its restaurant network, and its extensive marketing and promotional activities.

According to the WhoIs record, the disputed domain name was created on September 26, 2018 and its registrant, the Respondent, is a trading company with an address in Trávnik, Slovakia. The Complainant shows that the disputed domain name <subway.ro> had previously been registered between February 28, 2006 and June 28, 2018 and was showing a status of “PendingDelete” on September 24, 2018, thus indicating that the disputed domain name was registered after a previous incarnation had been allowed to expire.

The Complainant produces a spreadsheet print indicating that it has matched the contact email address and nameservers shown on the WhoIs record for the disputed domain name with a range of other domain names including inter alia <airbnb.sg>, <pinterest.sg>, <pizzahut.sg>, <realtor.com.sg>, <tesla.com.sg>, <viber.tw> and, <virgin.tw>.

The Panel visited the website at the disputed domain name as the Panel considered this to be useful to assessing the case merits and reaching a decision (see section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) on the topic of panels’ limited factual research into matters of readily accessible public record). The Panel did not refer its findings back to the Parties on the basis that both may reasonably be presumed to know the appearance of said website.

The said website has the appearance of a parked and largely undeveloped page which features a logo containing the disputed domain name and a brief message under the heading “COMING SOON” stating, in part, “[…] Subway.ro offers easy access not just to another MLS site, but to one of a kind. Our latest development project lists those properties for you that are close to a subway station. The webpage has been designed to be completed with a smart map system. Stay tuned, coming very soon”. Said website also features a “Legal notice” stating that the owner of the website is a limited company with an address in Tortola, British Virgin Islands. There is no mention of the Respondent. A footer on said website features the name “Propertygroup.ro” along with 24 hyperlinked country names under the legend “Countries included in the property group holding”, two of which feature typographical errors, namely “Hon Kong” and “Quatar”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

The Complainant narrates its trademark rights and history from its origins in the USA to its expansion to other countries including Romania. The Complainant asserts that the disputed domain name is similar to the Complainant’s SUBWAY mark which became internationally well-known long before the creation of the disputed domain name. The Complainant notes that its trademark is incorporated in its entirety in the disputed domain name and asserts that those who view it may be confused into believing it is the legitimate domain of the Complainant for Romania or that it is endorsed or sponsored by the Complainant. The Complainant submits that the country-code Top-Level domain (ccTLD) “.ro” has no significance when assessing identity or confusing similarity.

The Complainant notes that the disputed domain name was acquired by the Respondent after it was deleted and re-registered in 2018 and presents corresponding WhoIs records. The Complainant asserts that the UDRP elements should be assessed at the date of such acquisition, adding that there is no evidence the Respondent is commonly known by the disputed domain name and that the Respondent’s corporate name does not resemble the disputed domain name. The Complainant contends that the Respondent does not operate a business under the SUBWAY mark and owns no corresponding trademark rights. The Complainant adds that it has not licensed, authorized, or permitted the Respondent to register domain names incorporating its SUBWAY mark.

The Complainant notes that past panels have recognized that merely registering a domain name comprised of a dictionary word does not automatically confer rights or legitimate interests on a registrant, adding that the domain name should be genuinely used or demonstrably intended for such use. The Complainant notes that the Respondent uses the disputed domain name to redirect users to a website for an unrelated business displaying advertisements for real estate services, thus neither equating to the dictionary meaning of the word “subway”, nor constituting a bona fide offering of goods and services, nor a noncommercial or fair use. The Complainant states that real estate services do however closely relate to its own activities because the location and establishment of its franchised shops relies heavily on real estate professionals.

The Complainant argues that the Respondent’s website cannot be considered a fair or innocent use of the generic word “subway” because the content concerned has no bearing on public transportation and there is no train system in Romania known by that term, adding that Bucharest possesses a system known as the “Metrou” which is consistent with terminology used throughout Europe and that the term “subway” is not used generically, or otherwise, in the Romanian language.

The Complainant contends that the facts of the case do not support a claim of generic or other fair use of the disputed domain name because the Respondent has registered many domain names incorporating famous and distinctive trademarks of other brand owners. The Complainant supplies a list of domain names linked by common email addresses, nameservers, and registrars. The Complainant asserts that the Respondent has tarnished and diluted its SUBWAY mark by using it in connection with third party advertisements which are not associated with the Complainant’s goods and services and has created the risk that the Complainant’s trademark is being associated with services over which it has no control.

The Complainant submits that the Respondent intentionally targeted its SUBWAY mark and related domain names <subway.com> and <subwayro.com>, adding that the Respondent was on actual notice of the Complainant’s rights in its globally famous and well-known mark due to its extensive use which long predates the creation of the disputed domain name. The Complainant notes that its mark has been found to be well-known in a previous case under the Policy, in which it was also inferred that the respondent concerned would thereby have been aware of such mark. The Complainant adds that the Respondent, its registrar, and the third party whose site is in receipt of traffic from the disputed domain name are all obtaining commercial gain therefrom.

The Complainant asserts that those who see the disputed domain name will not think of a subterranean train system but of the Complainant, given the overwhelming global fame of the SUBWAY marks, the Complainant’s substantial use thereof in Romania and the fact that the Romanian city rail system is known as “Metrou”. The Complainant asserts that the Respondent is entirely and solely responsible for the content of the website to which the disputed domain name redirects.

The Complainant argues that its spreadsheet establishes the Respondent’s pattern of abusive registration and cybersquatting on prior occasions and confirms its bad faith intent to prevent the Complainant from reflecting its SUBWAY marks in the corresponding domain name, arguing that it is reasonable to conclude that the Respondent has copied the Complainant’s mark if it is willing to copy other well-known trademarks in domain names. The Complainant notes that the Respondent has been the respondent in another proceeding under the Policy, namely Facebook, Inc. v. Cetinje s.r.o., WIPO Case No. D2014-1070 in which the panel ordered transfer of the domain name concerned, <facebookstatusbar.com>, to the Complainant.

B. Respondent

The Respondent requests that the Complaint be denied. The Respondent asserts that it registered the disputed domain name in good faith without any intention to violate the rights or interests of any third party, noting that the word “subway” is used in everyday communication and has a clear meaning as an underground rapid transit rail system.

The Respondent states that it participates as developer and advisor in a real estate business project, providing advertising services to agents, to be developed under the name “Property Group Holding”, adding that the project has a central website and operates others in 20 countries. The Respondent notes that Romania is a new area of development for it because it is a country next to Hungary with a similar economic and legal environment and a huge Hungarian population.

The Respondent asserts that when looking for a property it is important for people to be able to search for a certain object or special condition, such as close to an airport or subway. The Respondent says that it is important to have domains which help these searches and indicates that the disputed domain name is one such domain. The Respondent asserts that the domain name <propertygroup.ro> is also part of its project and was registered “a long time ago”.

The Respondent accepts that the disputed domain name is identical to the Complainant’s trademark although adding that the Complainant is not entitled to expropriate words such as “subway” which is used by travel maps and traffic companies and that such use does not imply a challenge to the Complainant’s trademark or business activity. The Respondent notes that its business plan is based upon online marketing, including search engine marketing and that the disputed domain name, being an average word such as “train”, “highway”, or “airport” is planned to be used within that activity.

The Respondent argues that the Complainant has failed to state which part of its present activity constitutes registration and use in bad faith, noting that the Complainant does not have exclusive rights over the word “subway” and adding that it is not involved or interested in the restaurant or catering business. Finally, the Respondent notes that the Complainant typically uses a variety of combinations for its domain names which are different from the trademark plus ccTLD combination and that the disputed domain name does not fit into the combinations currently in use by the Complainant, adding that the Respondent’s use does not affect the Complainant’s activity in Romania.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Preliminary Issue: Language of the Proceedings

The Panel notes for completeness that the Complaint contained a submission calling for the language of the administrative proceeding to be English, on the basis that, on information and belief, the Complainant noted that the language of the Registration Agreement for the disputed domain name was Hungarian. The Registrar confirmed during the verification process however that the language of the Registration Agreement was English. Accordingly, following the usual approach set out in terms of paragraph 11 of the Rules, the Panel determines that the language of the administrative proceeding shall be English.

B. Identical or Confusingly Similar

The Complainant relies upon its various SUBWAY registered trademarks including those set out in the factual background section above. The Panel finds that the Complainant has UDRP relevant rights in its said registered trademarks. The Panel notes that such marks are identical to the second level of the disputed domain name on the typical side-by-side comparison made in connection with this element of the Policy and agrees with the Complainant’s submission that the ccTLD “.ro” should be disregarded in such comparison process. In these circumstances, the Panel finds that the disputed domain name is identical to the Complainant’s trademark.

The Panel notes in passing that the Respondent’s submission that the disputed domain name consists of an “average word” which is intended for online and search engine marketing is not strictly relevant to the analysis under the first element of the Policy, although it may be relevant to, and will be discussed in connection with, the second and third elements.

The requirements of paragraph 4(a)(i) of the Policy have therefore been satisfied.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. Where the panel finds that a complainant has made out such a prima facie case, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests.

The Panel is satisfied that the Complainant has made out the requisite prima facie case based on its submissions that there is no evidence the Respondent is commonly known by the disputed domain name, the Respondent’s corporate name does not resemble the disputed domain name, the Respondent does not operate a business under the SUBWAY mark, the Respondent owns no corresponding trademark rights and the Complainant has not licensed, authorized or permitted the Respondent to register domain names incorporating the Complainant’s SUBWAY mark. The Complainant also submits that the Respondent’s website does not appear to be linked to a fair use of the word “subway” and adds that the Respondent has engaged in a pattern of abusive registration and cybersquatting. The Panel therefore turns to the Respondent to determine whether its case is sufficient to rebut such prima facie case.

The main focus of the Respondent’s case is its assertion that the word “subway” is a dictionary word. The Panel acknowledges that the word “subway” is indeed a dictionary word. However, the evidence on the present record also establishes to the Panel’s satisfaction that it likewise represents the Complainant’s exceptionally well-known mark in the field of restaurant services. In these circumstances, the issue as to whether the Respondent has rights or legitimate interests in respect of the disputed domain name in this particular case is closely linked to whether the Respondent registered and used the disputed domain name in bad faith. Is the Respondent genuinely using or preparing to use the disputed domain name in connection with a bona fide offering of goods and services relating to the dictionary meaning of the word “subway”? Is the Respondent telling the truth when it says that the purpose of the disputed domain name is to optimize online searches for the proximity of real estate to subway stations? On the other hand, is the Respondent’s explanation of its use or intended use of the disputed domain name merely pretextual?

The Panel notes that while the Respondent’s alleged business is the subject of various assertions in the Response, no supporting evidence of any kind accompanies these. Furthermore, the Respondent’s assertions appear to raise more questions than they answer. For example, an obvious question to the Panel’s mind is raised in the Complaint and yet not addressed in the Response, namely, is it really likely that the Respondent would use the English word “subway” to target persons interested in real estate in Romania, whether they are ethnic Hungarians or Romanians? In the absence of a credible explanation from the Respondent, the Panel finds this doubtful. The Complainant also makes the telling point that in the capital city of Romania, Bucharest, the underground system is named the “Metrou”, thus following a general naming approach of such systems across Europe. The Complainant asserts that the word “subway” is not used in a European context. It is notable that the Respondent also fails to engage with this observation.

Furthermore, even to an English speaker, the word “subway” neither exclusively nor necessarily bears the dictionary meaning which the Respondent claims. Leaving aside the well-known trademark meaning, and the apparent lack of any meaning in Romania, in parts of the USA the word may refer to a rapid transit system as the Respondent contends. Nevertheless, in British English it is synonymous with the word “underpass” rather than any particular form of transit. Taking the Respondent’s contentions as a whole, the claim of use of this term to create any relevance for property searches seems somewhat incredible.

The Panel reminds itself that paragraph 4(c)(i) of the Policy requires a respondent relying upon it to show “use of, or demonstrable preparations to use the domain name […]”. “Demonstrable” in this context to the Panel’s mind means that it must be capable of demonstration by way of submissions supported by suitable evidence. However, the only evidence of preparations to use the disputed domain name for the contended purpose in the present case is the “coming soon” message on the website associated with the disputed domain name. This does not, in the Panel’s view, amount to a convincing demonstration of preparations to use the disputed domain name in connection with a bona fide offering of goods and services, nor does it provide adequate evidence of any actual use of or genuine plans to use the disputed domain name in connection with its dictionary meaning. Furthermore, the nature of the Respondent’s status as “developer and advisor” on its alleged project seems rather uncertain and opaque to the Panel in the absence of additional explanations and evidence.

When the pattern of domain name registrations linked to the Respondent’s email address on the WhoIs record of the disputed domain name is brought into consideration, the picture that emerges seems somewhat clearer to the Panel. The listed domain names, as noted in the factual background section above, refer to a number of well-known trademarks which have been registered under various ccTLDs, albeit that the word “virgin” can function as both a trademark and a dictionary word, in common with the word “subway”. The standout domain name from this list, in the Panel’s opinion, is <pizzahut.sg>, which, as with the disputed domain name, represents a well-known trademark of a global restaurant chain (see, for example, the observations of the panel in Pizza Hut International, LLC v. Kim Beom Sung, WIPO Case No. DRO2002-0003) in the second level of a ccTLD, namely in that example the country code for Singapore. How does the Respondent answer the Complainant’s evidence? Once again, it chooses not to engage at all with the relative submissions and neither provides any explanation nor attempts to distinguish the present disputed domain name from the other examples cited.

The only reasonable conclusion, in the Panel’s mind, is that the Respondent does not have any credible and reasonable answer to the Complainant’s evidence and that its true purpose for the disputed domain name runs more probably than not along similar lines to that identified by the panel in Facebook, Inc. v. Cetinje s.r.o., supra, which noted that the Respondent had engaged in the registration of a domain name incorporating “one of the world's famous and distinctive marks […] to unjustly benefit from the considerable goodwill and reputation attached”.

In all of the above circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the requirements of paragraph 4(a)(ii) of the Policy have therefore been satisfied.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Panel noted in the preceding section that, in this particular case, the question of the Respondent’s rights and legitimate interests in the disputed domain name are closely related to the question of registration and use in bad faith. In other words, this case turns on whether it is reasonable for the Respondent’s explanation of its registration and use of the disputed domain name to be believed by the Panel. The Panel has found that the Respondent’s case is not credible for the reasons outlined in the preceding section.

Furthermore, the Complainant’s unchallenged evidence relating to domain names linked to the Respondent’s email address demonstrates on the balance of probabilities and to the Panel’s satisfaction that the Respondent registered the disputed domain name in order to prevent the owner of a trademark from reflecting its mark in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct.

In all of these circumstances, the Panel finds that the disputed domain name was registered and is being used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <subway.ro> be transferred to the Complainant.

Andrew D. S. Lothian
Sole Panelist
Date: July 4, 2019