Vanguard Trademark Holdings USA LLC v. Domain Admin / Boostability
Claim Number: FA1910001867301
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Josh A. Partington of Harness, Dickey & Pierce, PLC, Virginia, USA. Respondent is Domain Admin / Boostability (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alamoexecutivetraining.com>, registered with NameCheap, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 17, 2019; the Forum received payment on October 17, 2019.
On October 18, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <alamoexecutivetraining.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@alamoexecutivetraining.com. Also on October 22, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 15, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <alamoexecutivetraining.com> domain name is confusingly similar to Complainant’s ALAMO mark.
2. Respondent does not have any rights or legitimate interests in the <alamoexecutivetraining.com> domain name.
3. Respondent registered and uses the <alamoexecutivetraining.com> domain name in bad faith.
B. Respondent failed to file a Response in this proceeding.
Complainant, Vanguard Trademark Holdings USA LLC, is the owner of the ALAMO mark, which it licenses to Alamo Rent A Car and other entities. Complainant holds a registration for the ALAMO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,097,722, registered Jul. 25, 1978).
Respondent registered the <alamoexecutivetraining.com> domain name on February 29, 2016, and uses it to feature unrelated news articles and commercial hyperlinks.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <alamoexecutivetraining.com> domain name, as Respondent is not commonly known by the disputed domain name. Complainant has not authorized Respondent to use the ALAMO mark in any way. The WHOIS information of record identifies the registrant of the disputed domain name as “Domain Admin / Boostability.” The Panel therefore finds that Respondent is not commonly known by the <alamoexecutivetraining.com> domain name, and thus has no rights under Policy ¶ 4(a)(ii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”).
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <alamoexecutivetraining.com> domain name is demonstrated by its failure to use the domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends instead that the disputed domain name resolves to a website used to obtain click-through revenue by linking to third-party websites that are unrelated to Complainant’s business. Using a disputed domain name for third-party links for the benefit of a respondent is not a use indicative of rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”). Complainant shows that the disputed domain name resolves to a website containing pay-per-click links to websites offering vehicle maintenance and repair services. Therefore, the Panel finds that Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus has no rights under Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent’s registration of the <alamoexecutivetraining.com> domain name is part of a pattern of bad faith registration and use of domain names. A pattern of bad faith registration can be established by a showing of prior adverse UDRP precedent, and such a pattern can indicate bad faith per Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Complainant provides examples of UDRP cases where Respondent, Domain Admin / Boostability, has been ordered to transfer ownership of domain names. The Panel therefore finds that the registration and use of the <alamoexecutivetraining.com> domain name is part of a pattern and is evidence of Respondent’s bad faith under Policy ¶ 4(b)(ii).
Complainant contends that Respondent’s bad faith is demonstrated by its use of the <alamoexecutivetraining.com> domain name to link to third-party websites for its own gain. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained); see also Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)).
Complainant further asserts that Respondent’s use of the domain name to promote pay-per-click hyperlinks in connection with the ALAMO mark and, in light of the fame and notoriety of Complainant’s ALAMO mark, it is inconceivable that Respondent could have registered the <alamoexecutivetraining.com> domain name without knowledge of Complainant’s rights in the mark. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name, which is additional evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alamoexecutivetraining.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 18, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page