GATX Corporation v Roderick Cohen

WIPO Case No. D2024-5296

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

GATX Corporation v. Roderick Cohen

Case No. D2024-5296

1. The Parties

Complainant is GATX Corporation, United States of America (“United States”), represented by Mayer Brown

LLP, United States.

Respondent is Roderick Cohen, United States.

2. The Domain Name and Registrar

The disputed domain name <gatxus.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2024. On December 24, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Withheld for Privacy ehf.) and contact information in the Complaint. The Center sent an email communication to Complainant on December 26, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 30, 2024.

The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on January 6, 2025. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2025. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 28, 2025.

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The Center appointed Timothy D. Casey as the sole panelist in this matter on February 7, 2025. 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

Complainant is one of the world’s largest providers and lessors of railcars, tank containers, and aircraft spare engines. Complainant’s business dates back to 1898 and has operations in North America, Europe, and India. Complainant first began using GATX as a mark for leasing equipment in 1902, and owns the following registrations (the “GATX Marks”):

Mark	Jurisdiction	Class(es)	Registration No.	Registration Date
GATX	United States	39	1057953	February 1, 1977
GATX	United States	12	1047634	September 7, 1976
GATX	United States	36, 37, 39, 40	4058763	November 22, 2011

The disputed domain name was registered on November 26, 2024. At the time of filing the Complaint, the disputed domain name did not resolve to an active website. Complainant provided evidence indicating that the disputed domain name was utilized, on the same date the disputed domain name was registered, in at least two emails impersonating an employee of Complainant and falsely indicating Complainant’s interest in

purchasing computer products from different vendors.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, Complainant contends that it has rights in the GATX, at least as indicated above, and that the disputed domain name is confusingly similar to the GATX Marks because the GATX Marks are fully incorporated into the disputed domain name. Complainant notes that the disputed domain name includes the geographically descriptive suffix “us”, which does nothing to change the commercial impression of the disputed domain name.

Complainant contends Respondent registered the disputed domain name many years after the GATX Marks were first used for the purpose of impersonating Complainant and perpetrating fraud. Complainant contends it has not consented to or otherwise authorized Respondent to use the GATX Marks or had any dealings with Respondent that would give rise to such rights and that Respondent has made no bona fide offering of its

own goods or services in connection with the disputed domain name because Respondent only registered
the disputed domain name in order to impersonate Complainant’s employees and to trade on Complainant’s
goodwill in order to commit fraud. Complainant contends Respondent has no rights or legitimate interests in
the disputed domain name because Respondent has used the disputed domain name to impersonate an
employee of Complainant to send emails intending to defraud consumers by virtue of the confusing similarity
between the GATX Marks and the disputed domain name.

Complainant contends that bad faith registration and use is evident from the fact that Respondent has no rights or legitimate interests in the disputed domain name and because Respondent used the disputed domain name to impersonate an employee of Complainant in an attempt to defraud Complainant’s vendors. Complainant contends that the disputed domain name does not correspond to Respondent’s name or trade name, and it is inconceivable that Respondent was not aware of the GATX Marks at the time of registration

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of the disputed domain name given Respondent thereafter used the disputed domain name to impersonate

Complainant in an attempt to defraud Complainant’s vendors.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, the geographically descriptive suffix “us”, may bear on assessment
of the second and third elements, the Panel finds the addition of such term does not prevent a finding of
confusing similarity between the disputed domain name and the mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating

rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or
otherwise.

WIPO Overview 3.0, section 2.13.1.

Panels have held that the use of a domain name for illegitimate activity here, the claimed impersonation of interests on a respondent.

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The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Complainant’s employee in order to defraud Complainant’s vendors, constitutes bad faith.	Panels have held that the use of a domain name for illegitimate activity here, the claimed impersonation of use of the disputed domain name constitutes bad faith under the Policy.
The Panel finds that Complainant has established the third element of the Policy.
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 <gatxus.com> be transferred to Complainant.
/Timothy D. Casey/ Timothy D. Casey Sole Panelist Date: February 24, 2025