ELIGIBILITY REQUIREMENTS DISPUTE RESOLUTION POLICY
Vanguard Trademark Holdings USA LLC v. Josef Prokop-PRODO
Claim Number: FA0808001222537
Complainant is Vanguard Trademark Holdings USA LLC, represented by Ryan C. Compton, of DLA Piper US LLP, Washington D.C., USA. Respondent is Josef Prokop-PRODO, Czech Republic.
REGISTRAR AND DISPUTED REGISTERED NAMES
The Registered Names at issue are <nationalcarrental.name> and <national-car-rental.name>, registered with Dotregistrar, LLC.
The undersigned certifies that he or she 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on August 29, 2008; the Forum received a hard copy of the Complaint on September 2, 2008.
On September 2, 2008, Dotregistrar, LLC confirmed by e-mail to the Forum that the Registered Names <nationalcarrental.name> and <national-car-rental.name> are registered with Dotregistrar, LLC and that Respondent is the current registrant of the Registered Names. Dotregistrar, LLC has verified that Respondent is bound by the Dotregistrar, LLC registration agreement and has thereby agreed to resolve registered name disputes brought by third parties in accordance with the Eligibility Requirements Dispute Resolution Policy (“ERDRP”).
On September 3, 2008 a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 23, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with 2(a) of the Rules of Procedure for the Eligibility Requirements Dispute Resolution Policy (the “ERDRP Rules”).
Having received no Response from Respondent the Forum transmitted to the parties a Notification of Respondent Default.
On October 2, 2008, pursuant to ERDRP Rule 6(b), the Forum appointed Sandra J. Franklin as the single Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibilities under Paragraph 2(a) of the ERDRP Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ERDRP, ERDRP Rules, the Forum’s ERDRP 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 Registered Names be cancelled, and further requests that the Panel issue a Defensive Registration for the Registered Names pursuant to Policy 5(f)(i)(C).
No Response was received.
Paragraph 15(a) of the ERDRP 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.”
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a), and 15(a) of the ERDRP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the ERDRP Rules.
Paragraph 4(b) of the ERDRP requires that Complainant prove each of the following elements in order to establish that the Registered Names were registered in violation of the Eligibility Requirements and obtain an order that a Registered Names should be cancelled:
(1) the name corresponding to the Registered Names is not the legal name of Respondent; and
(2) the name corresponding to the Registered Names is not the name of a fictional character in which Respondent has trademark or service mark rights; and
(3) Respondent has not been commonly known by the name corresponding with the Registered Names.
If the above elements are shown, and Complainant requests that the Registered Names be transferred to Complainant, paragraph 5(f)(i)(C) of the ERDRP requires Complainant to establish that it meets the Eligibility Requirements correspondent to the Registered Names.
There is no evidence in the record that Respondent’s legal name is “National Car Rental.” Respondent’s legal name appears to be Josef Prokop-PRODO, and communications between Complainant and Respondent indicate that Respondent’s business name may be “AA-Auto.cz.” Therefore, Respondent’s <nationalcarrental.name> and <national-car-rental.name> Registered Names do not meet this Eligibility Requirement, and ERDRP Policy paragraph 4(b)(i) has been satisfied.
Name of Fictional Character
Respondent did not respond to the Complaint, and therefore did not present any evidence establishing Respondent’s ownership of any trademark or service mark rights for a character by the name of “National Car Rental.” Therefore, Respondent does not meet the requirements of paragraph 4(b)(ii) of the ERDRP.
Commonly Known As
There is no evidence that Respondent is commonly known by the name “National Car Rental,” especially since the WHOIS information for the Registered Names identifies Respondent as “Josef Prokop-PRODO.” Therefore, Respondent’s Registered Names, <nationalcarrental.name> and <national-car-rental.name>, do not meet the requirements of paragraph 4(b)(iii), and the ERDRP Policy has been satisfied.
Phase I Defensive Registration
Complainant requests that the Panel issue a Defensive Registration for the <nationalcarrental.name> and <national-car-rental.name> Registered Names pursuant to ERDRP 5(f)(i)(C). Therefore, Complainant must meet the Common Defensive Registration Requirements.
Paragraph 2(b) of the Eligibility Requirements for Phase I Defensive Registrations of the .NAME Restrictions requires Complainant to prove that the name is identical to the textual or word elements of Complainant’s trademark or service mark. Complainant has provided the Panel with evidence of its registrations of its NATIONAL CAR RENTAL mark with the USPTO and CRPTO, and those registrations were issued well before Respondent’s registrations of the Registered Names in February 2005. The <nationalcarrental.name> and <national-car-rental.name> Registered Names are identical to the textual or word elements of Complainant’s NATIONAL CAR RENTAL mark, so Complainant has satisfied the requirements of paragraph 5(f)(i)(C) of the ERDRP for Phase I Defensive Registration.
Sandra J. Franklin, Panelist
Dated: October 16, 2008
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