DECISION

The Port Authority of New York and New Jersey v. Vlad Buslaev

Claim Number: FA0405000274088

PARTIES

Complainant is The Port Authority of New York and New Jersey (“Complainant”), represented by George B. Snyder of Kramer Levin Naftalis & Frankel LLP, 919 Third Avenue, New York, NY 10022.  Respondent is Vlad Buslaev (“Respondent”), Glavpochtamp, Do vostrebovaniya, t. Yaroslavl’ 150000, Russia.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <e-zpass.com>, registered with Network Solutions, Inc.

PANEL

The undersigned Daniel B. Banks, Jr., as chair of the Panel, certifies that all panelists have acted independently and impartially and to the best of his knowledge have no known conflict in serving as Panelists in this proceeding.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 19, 2004; the Forum received a hard copy of the Complaint on May 20, 2004.

On May 21, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <e-zpass.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On May 25, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 14, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@e-zpass.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On June 29, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Honorable Anthony J. Mercorella, (Ret.), Honorable Timothy O’Leary, (Ret.) and Honorable Daniel B. Banks, Jr., (Ret.) as Panelists.

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.”  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. 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant:

Complainant is a body politic of New York and New Jersey and is the original owner of the E-ZPASS service mark and the E-ZPASS Logo.  It began using the mark and logo in 1993 in connection with services provided to travelers, including the electronic collection of tolls.  These marks are the subject of U.S. Registration Nos. 1,861,460 and 1,863,329, respectively.  These marks have been widely used and well-publicized for years and have become famous.  The services provided by Complainant are being marketed under the   E-ZPASS marks on the World Wide Web under the domain names <ezpass.com>, <ezpassny.com>, <ezpassnj.com>, <e-zpassny.com>, and <e-zpassnj.com>.  Respondent is not a licensee of Complainant and at no time was authorized to use the E-ZPASS trademark or to register the <e-zpass.com> domain name.

Upon information and belief, on or about September 14, 2002, Mr. Alimo, the preceding owner, registered the domain name, <e-zpass.com>, and shortly thereafter operated the web site in a form virtually identical to that of the current site in respect of which the domain name is used.  The administrative e-mail address for Respondent, Mr. Buslaev, is the same as that previously listed for Mr. Alimo, namely, <for_itarr­_tass@hotmail.com>. 

Upon information and belief, since the end of 2002, Respondent or a predecessor has engaged in a pattern of deliberate deception of the public utilizing the <e-zpass.com> domain name and web site.  More specifically, the E-ZPASS consumer is diverted to the web as a result of the wrongful wholesale incorporation of the E-ZPASS mark (including the “-“) into Respondent’s domain name.  Once the E-ZPASS consumer enters the site, there is an image of a moving car within a purple band, with the tag phrase “TIRED Of WAITING?”, followed by the line “Click here to make a contribution”.  Notably, the identical phrase “Tired of Waiting?” along with the image of a moving car within a purple band that is substantially the same color purple used in Respondent’s site, is also displayed on the first page of the authentic E-ZPASS site.

 Directly beneath the invitation to make a donation are the logos and links to several members of the Regional Consortium of the Interagency Group, including Complainant, the New Jersey Transit Authority, The New York State Thruway Authority and the New York State Bridge Authority.  Again these same logos are displayed on the first page of the <ezpassny.com> site.  Respondent’s <e-zpass.com> web site also contains several links directly to the <ezpass.com> web site which offers authentic E-ZPASS services. From all that appears, since Respondent has no affiliation with any members of the Interagency Group, Respondent has included identification of these agencies on its site in an apparent bad faith effort to create the false impression of legitimacy of the site and deliberately to mislead E-ZPASS consumers into believing that they have entered an authentic E-ZPASS site, when this is not the case.

There are also five links located directly below the Interagency Group logos entitled “Home”, “Sign Up”, “Accounts”, “Roads”, and “Info”.  Significantly, all of these links except the “Home” link take you directly to specific pages of the <ezpassny.com> web site, which provides genuine E-ZPASS services via a licensee of the Port Authority.  Thus, if a victim of Respondent’s unlawful use of <e-zpass.com> clicks on one of these links, he is immediately connected to a web page affiliated with Complainant rather than Respondent (i.e., “Sign Up” links to a page of an E-ZPASS licensee’s site where one can sign up for an authentic E-ZPASS account;  “Accounts” links to the same site directly to a page on which one can obtain information regarding its E-ZPASS account; “Roads” links to an <ezpassny.com> web page displaying information pertaining to E-ZPASS roads, etc).  Moreover, these same links, among others, are displayed on the <ezpassny.com> site located in the same area on the first page of the site, i.e., directly below the Interagency Group logos.  This reinforces the false impression that                <e-zpass.com> and the Port Authority and its E-ZPASS services are connected.

Additionally, if an <e-zpass.com> consumer clicks on the phrase “Make a Donation” the consumer is then taken to the next web page which contains the following pre-inserted information:

Pay To:  Web Development Associates (which is identified as the “seller”)

Payment For:  www.e-zpass.com

Currency:  U.S. Dollars

Amount:                                   

The site then requests the consumer’s credit card information.  There is no explanation on the page or elsewhere on the site that “e-zpass.com development” is not a legitimate      E-ZPASS function, much less any revelation that a donation will not be going to the Port Authority or one of its affiliates, the only source of real E-ZPASS services.

The inevitable (and obviously intended) result is that the victim will be sufficiently confused to conclude that its “contribution” to “e-zpass.com development” will be directed to its E-ZPASS account.  Not surprisingly, several E-ZPASS customers have contacted the Port Authority to complain that the payments to <e-zpass.com> were not directed to their E-ZPASS accounts.  In light of the similarities between Respondent’s site and sites operated by affiliates of Complainant, there can be no serious doubt that Respondent has deliberately copied certain key elements of Complainant’s (or an affiliate’s) trading style in an effort to effectuate a scheme carefully designed to reap a benefit from misleading E-ZPASS customers into thinking that <e-zpass.com> is an authentic site authorized to accept payments to an E-ZPASS customer’s account.  Such deception permits the Respondent wrongfully to convert funds belonging to E-ZPASS operators and/or customers. 

            Complainant alleges that the disputed domain name is identical or confusingly similar to

Complainant’s federally registered E-ZPASS mark, that Respondent has no rights or legitimate interests in respect of the domain name and the domain name was registered and is being used in bad faith. 

B. Respondent

Respondent did not file a response to the Complaint.

FINDINGS

1 – The domain name is identical to Complainant’s federally registered E-ZPASS mark.

2 – Respondent has no rights or legitimate interests in said domain name.

3 – The domain name was registered and is being used in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Identical and/or Confusingly Similar

Complainant asserts that it has established rights in the E-Z PASS mark by registering it with the U.S. Patent and Trademark Office on November 1, 1994 (Reg. No. 1,861,460).  The Panel finds that the registration of the mark makes it inherently distinctive.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

The Panel further finds that the <e-zpass.com> domain name is identical to Complainant’s E-ZPASS mark.  See Shirmax Retail Ltd./Detaillants Shirmax Ltee v. CES Marketing Group Inc., AF-0104 (eRes. Mar. 20, 2000) (refusing to interpret Policy ¶ 4(a)(i) in the conjunctive rather than disjunctive sense in holding that “mere identicality of a domain name with a registered trademark is sufficient to meet the first element [of the Policy], even if there is no likelihood of confusion whatsoever”); see also Porto Chico Stores, Inc. v. Otavio Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that the issue of identicality or confusing similarity is to be resolved “by comparing the trademark and the disputed domain name, without regard to the circumstances under which either may be used”).

Finally, the addition of the generic top-level domain (gTLD) “.com” to the E-Z PASS mark is irrelevant to determining whether the <e-zpass.com> domain name is identical or confusingly similar.  The Panel finds that the disputed domain name is identical to Complainant’s mark despite the addition of a generic top-level domain.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to Complainant’s BODY BY VICTORIA mark). 

Rights or Legitimate Interests

Respondent is not commonly known by the <e-zpass.com> domain name and is not licensed or authorized by Complainant to use Complainant’s E-Z PASS mark.  Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"). 

Furthermore, the panel finds that Respondent’s primary purpose in registering the        <e-zpass.com> domain name was to confuse Internet users by attracting them with Complainant’s well-known mark and then diverting them to Respondent’s unrelated website.  This use of the domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website).

Additionally, once Complainant makes a prima facie case for this element, the burden shifts to Respondent to establish rights or legitimate interests in the domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).  Respondent did not respond to the Complaint and, therefore, has not met its burden of establishing rights or legitimate interest in the domain name.

Finally, because Respondent has not submitted a Response, the Panel accepts all reasonable allegations and inferences in the Complaint as true.  See 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.”); see also Strum v. Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that in accordance with Paragraph 14(b) of the Policy, the Panel may draw such inferences as it considers appropriate, if Respondent fails to comply with the Panel's requests for information).

Registration and Use in Bad Faith

It appears that Respondent attempted to sell the <e-zpass.com> domain name to Complainant for an amount higher than $900,000.00, which is in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.  It further appears that Respondent intended to sell the disputed domain name at auction if Complainant did not buy it.  The Panel finds that one of Respondent’s primary purposes in registering the domain name was to sell it for valuable consideration in excess of Respondent’s documented out-of-pocket expenses and that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i).  See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that Respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).

Respondent has used the domain name to attract Internet users searching for Complainant’s well-known E-ZPASS mark to Respondent’s website, which links to sites offering Complainant’s products and services.  Respondent reaps commercial gain from this confusion through a fraudulent payment system located on the website that leads users to believe they are purchasing products and services from Complainant.  The Panel finds that Respondent’s use of a domain name that is confusingly similar to Complainant’s mark to create a likelihood of confusion for Respondent’s commercial gain constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).

Finally, the panel finds that Respondent registered the <e-zpass.com> domain name primarily to attract those seeking Complainant’s products and services to Respondent’s website that purports to offer the same products.  However, the fraudulent payment system located at the disputed domain name allows Respondent to profit from Complainant’s well-known mark.  In fact, Complainant has received complaints from customers who used the website and never benefited from their payment.  The Panel finds that Respondent’s use of a confusingly similar domain name to disrupt Complainant’s business is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <e-zpass.com> domain name be TRANSFERRED from Respondent to Complainant.

Daniel B. Banks, Jr., Panelist Chair

Honorable Anthony J. Mercorella, (Ret.) & Honorable Timothy O’Leary, (Ret.), Panelists

Dated: July 13, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/908.html