Vanguard Trademark Holdings USA LLC v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2104001940361
Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Elizabeth K. Brock of Harness, Dickey & Pierce, PLC, Michigan, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nayionalcarrental.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 6, 2021; the Forum received payment on April 6, 2021.
On April 7, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <nayionalcarrental.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 2021 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@nayionalcarrental.com. Also on April 8, 2021, 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 April 30, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the NATIONAL CAR RENTAL service mark established through its ownership of its portfolio of service mark registrations and its extensive use in its trademark licensing business that has grown since 1948, to become a premium, internationally recognized brand with a presence throughout the United States, Canada, Mexico, the Caribbean, Latin America, Asia, and the Pacific Rim at more than 1,500 locations worldwide and its website to which its domain name <nationalcar.com> resolves.
Complainant alleges that the disputed domain name <nayionalcarrental.com> is confusingly similar to its NATIONAL CAR RENTAL mark as it fully incorporates Complainant’s mark which is sufficient to establish that the disputed domain name is identical or confusingly similar to a registered trademark. Citing Hürriyet Gazetecilik ve Matbaacılık Anonim Şirketi v. Moniker Privacy Services / Kemal Demircioglu, D2010-1941 (WIPO Jan. 28, 2011) (“a domain name that reproduces the trademark in its entirety is confusingly similar to the mark” when the disputed domain names <hürriyet.com>, <hürriyetemlak.com>, and <hürriyetoto.com> fully incorporated the complainant’s HURRIYET mark).
Complainant adds that by merely swapping the letter “t” in “national” with the letter “y” to mimic a common typographical error (on a keyboard, the letter “y” is immediately next to the letter “t,” making this a common typing error), does not prevent the disputed domain name <nayionalcarrental.com> from being confusingly similar to Complainant’s NATIONAL CAR RENTAL mark. Citing Enterprise Holdings, Inc. v. Pertshire, FA 1101001368289 (Forum Feb. 22, 2010) (“[T]he Panel holds that Respondent’s <entreprisecar.com> domain name is confusingly similar to [the] ENTERPRISE mark pursuant to Policy ¶ 4(a)(i).”),
Complainant adds that the generic Top-Level Domain identifier <.com> is also insufficient to distinguish the disputed domain name from Complainant’s NATIONAL CAR RENTAL mark. Citing Enterprise Holdings, Inc. v. Fundation Private Whois / Domain Administrator, FA 1493625 (Forum May 23, 2013) (holding that enterprise-coupons.net is confusingly similar to the Complainant’s ENTERPRISE mark).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that there is nothing in the WHOIS record for <nayionalcarrental.com> to indicate that Respondent is commonly known as, operating a business as, or advertising as “nayionalcarrental.” Previous panels have found that, in the absence of evidence submitted by the respondent, the WHOIS record is the sole piece of relevant evidence when determining how a respondent is commonly known. Citing Haas Automation, Inc. v. Machine Tools 24-7/ Jon Beal, FA1201001425055 (Forum Feb. 29, 2012) (“Respondent may well be known in the community as a vendor of used Haas equipment, but it has not shown that it is known as such by the name HAAS. The relevant evidence presented consists exclusively of the WHOIS information”).
Complainant adds that even if Respondent were operating a business known as “nayionalcarrental,” (which Complainant denies based upon information and belief) she would not have rights or legitimate interests in the disputed domain name. Previous panels have found that using a trademark term in an unauthorized manner in a domain name, even where Respondent is operating an actual business, causes confusion by illegitimately indicating to consumers that the products at the contested domain name are those of the trademark holder. Citing Seiko Epson Corporation and Epson America, Inc. v. Advantage S & G Inc. c/o John Foley, FA1006001329762 (Forum July 22, 2010) (“[W]here Respondent has erred is in using Complainants’ trademark in its domain names and by that means falsely implying that the bulk and replacement inks being promoted are those of Complainants when they clearly are not,” finding that respondent’s sale of ink products at the <epsonreplacementink.com> and <epsonbulkink.com> domain names was without rights or legitimate interest).
Complainant asserts it has not licensed or otherwise permitted Respondent to use its NATIONAL CAR RENTAL mark, or any variation thereof, in connection with any goods or services or to apply for any domain name incorporating the NATIONAL CAR RENTAL mark, or any variation thereof. Therefore Respondent is clearly not making any legitimate noncommercial or fair use of <nayionalcarrental.com>. Citing Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Referring to screen capture of the web site to which the disputed domain name resolved on March 29, 2021, which is annexed to the Complaint, Complainant alleges that at various times, the disputed domain name variously redirected to the “Last Minute Specials” webpage of Complainant’s licensee’s website at nationalcar.com and to the main website of a named car manufacturer, and/or attempted to install malware onto user’s computers. Complainant submits that while it is difficult for Complainant to demonstrate the redirects as they occur, the screen captures of the malware alerts generated by attempting to access establish this point.
Complainant contends that such use of a domain name to distribute malware in a likely illegal scheme by the Respondent is not a legitimate use of the disputed domain name and does not give the Respondent any rights in the <nayionalcarrental.com> domain name. Citing Dell Inc. v. Whois Manager / Whois Privacy Management Services, FA 1803001778749 (Forum May 9, 2018) (Noting that “Complainant provided screenshots of the <dellservicesales.com> resolving website, which purports to offer a browser extension called “Search Safely Plus Chrome” in concluding that “[u]se of a domain name to distribute malware may not be considered a bona fide offering or fair use pursuant to Policy ¶ 4(c)(i)& (iii).”).
Complainant further submits that WIPO lists 172 cases with Respondent Carolina Rodrigues / Fundacion Comercio Electronico. Regarding this Respondent, Carolina Rodrigues / Fundacion Comercio Electronico, a panelist found that Respondent’s use of the domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). Citing Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant also alleges that the disputed domain name was registered and is being used in bad faith, arguing that, considering Complainant’s worldwide reputation for car rental services under its NATIONAL CAR RENTAL mark and its nearly 75 years of use of its NATIONAL CAR RENTAL mark, it seems likely that Respondent registered the disputed domain name with full knowledge of Complainant’s rights in its mark. Citing Enterprise Holdings, Inc. v. Domain Manager/Domain Escrow, FA 1205001444228 (Forum June 28, 2012) (“The Panel finds that, due to the fame of Complainant’s [ENTERPRISE] mark, Respondent had actual knowledge of the mark and Complainant’s rights.”).
Complainant adds that the registration and use of the disputed domain name is a deliberate attempt to deliberately use NATIONAL CAR RENTAL mark in the disputed domain name to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website and the services offered at such websites.
Complainant further argues that Respondent’s use of the <nayionalcarrental.com> domain name to distribute malware demonstrates that the <nayionalcarrental.com> domain name was registered and is being used in bad faith. Citing Dell Inc. v. Whois Manager / Whois Privacy Management Service, FA 1803001778749 (Forum May 9, 2018) (The “[u]se of a domain name to resolve to a website that distributes malicious software may evidence bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Referring to a screen capture of the results of a search on MX lookup service which has been annexed to the Complaint, Complainant submits that it shows that Respondent has taken affirmative steps to set up MX records for the <nayionalcarrental.com> domain name. Complainant submits that email capability is not needed for parked domains and argues that this Panel may therefore take an inference of bad faith intent. Citing The Standard Bank of South Africa Limited v. N/A / mark gersper, FA 1467014 (Forum Dec. 5, 2012) (“The Panel finds Complainant’s allegations about the possibility of Respondent using the disputed domain name for phishing sufficient and finds Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <stanbicibplc.com> domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).”).
Additionally, Complainant notes that a search of Forum decisions indicates that Respondent Carolina Rodrigues / Fundacion Comercio Electronico has been named as a respondent in 160 UDRP cases.
B. Respondent
No timely Response was received from Respondent.
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”).
Complainant is provided clear, convincing and uncontested evidence of its rights in the NATIONAL CAR RENTAL service mark established through its ownership of its portfolio of service mark registrations described above and its extensive use in its trademark licensing business with an established Internet presence and licensees operating At more than 1,500 locations worldwide.
The disputed domain name consists of the elements “nayonal”, “car” and “rentals” together with the gTLD <.com> extension.
The element “nayonal”, is confusingly similar to the word “national “ merely swapping the letter “t” in “national” with the letter “y”.
Taken together the elements of the disputed domain name are confusingly similar and almost identical to Complainant’s NATIONAL CAR RENTAL service mark.
In the circumstances of this case on the balance of probabilities Internet users but consider the gTLD <.com> extension be necessary technical element of the domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the NATIONAL CAR RENTAL service mark in which Complainant has rights. Complainant has therefore satisfied the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that
· there is nothing in the WHOIS record for <nayionalcarrental.com> to indicate that Respondent is commonly known as, operating a business as, or advertising as “nayionalcarrental”;
· even if Respondent were operating a business known as “nayionalcarrental,” (which Complainant denies based upon information and belief) it would not have rights or legitimate interests in the <nayionalcarrental.com> domain name;
· Complainant has not licensed or otherwise permitted Respondent to use its NATIONAL CAR RENTAL mark, or any variation thereof, in connection with any goods or services or to apply for any domain name incorporating the NATIONAL CAR RENTAL mark, or any variation thereof;
· at various times, the disputed domain name <nayionalcarrental.com> variously redirected to
o the “Last Minute Specials” webpage of Complainant’s licensee’s website at <nationalcar.com>;
o the website of a car manufacturer, and
o to present a malware alert which is alleged to indicate an attempt to install malware onto user’s computers;
· Respondent is clearly not making any legitimate noncommercial or fair use of <nayionalcarrental.com>;
· Respondent is not using the disputed domain name for a bona fide offering of goods or services or for a noncommercial fair use;
· WIPO lists 172 cases in which Respondent Carolina Rodrigues / Fundacion Comercio Electronico. Regarding this Respondent, Carolina Rodrigues / Fundacion Comercio Electronico, has been the unsuccessful respondent wherein panelists have found that Respondent has no rights or legitimate interests in the domain name in issue.
It is well established that, as in this case, once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in the domain name At issue, the burden of production shifts the respondent to prove such rights or interests. Respondent has failed to discharge that burden and therefore this Panel must find that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore satisfied the second element in the test in Policy ¶ 4(a)(ii) also.
Complainant has provided evidence of its worldwide reputation for car rental services under its NATIONAL CAR RENTAL mark established over 75 years of use. On the balance of probabilities, the registrant of the disputed domain name was aware of Complainant’s service mark when the disputed domain name was chosen and registered.
Given the nature of the similarities between the disputed domain name and Complainant’s service mark, on the balance of probabilities the disputed domain name was registered in bad faith in an act of typo-squatting by replacing the letter “t” in “national” with the letter “y”, to take advantage typographical errors, as the “y” key is located immediately next to the “t” key on an English-language QWERTY keyboard.
Complainant has shown that Respondent, who has no rights or legitimate interests in the disputed domain name, has been using the disputed domain name to variously resolve to websites associated with Complainant and a car manufacturer. Of greater concern is that Internet users, who are deceived and misdirected by the disputed domain name, are presented with a malware warning, and potentially may be redirected to a malware download, although this is not established.
Also of concern is that it has not been denied that Respondent has taken affirmative steps to set up MX records for the disputed domain name, as shown in the screen captures of the MX lookup search exhibited in an annex to the Complaint. This panel finds, agreeing with Complainant that email capability is not needed for parked domains and leads to an inference of bad faith intent.
Finally, this Panel notes that a search of Forum decisions shows that Respondent Carolina Rodrigues / Fundacion Comercio Electronico has been named as an unsuccessful respondent in an extensive number of complainants brought under the Policy as alleged.
As this Panel is found that the disputed domain name was registered and used in bad faith, Complainant has succeeded in the third and final element in the test in Policy ¶ 4(a)(iii), and is entitled to succeed in this application.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nayionalcarrental.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: May 3, 2021
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