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 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 “”.

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 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 , , , , , and, .

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, “[…] S 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 “P” 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 and , 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 t