Vanguard Trademark Holdings
Claim Number: FA0901001245321
PARTIES
Complainant is Vanguard
Trademark Holdings USA LLC,
(“Complainant”) represented by Ryan C.
Compton, of DLA Piper LLP (US),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationalcar.us>,
registered with Moniker Online Services,
LLC.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Louis E. Condon as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on January 29, 2009; the Forum received a hard
copy of the Complaint on January 30, 2009.
On January 30, 2009, Moniker Online Services, LLC confirmed by e-mail
to the Forum that the <nationalcar.us>
domain name is registered with Moniker Online Services, LLC and that
Respondent is the current registrant of the name. Moniker Online Services, LLC has verified
that Respondent is bound by the Moniker Online Services, LLC registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution
Policy (the “Policy”).
On February 10, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 2, 2009 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On March 9, 2009, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Louis E. Condon 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. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <nationalcar.us> domain name is confusingly similar to Complainant’s NATIONAL CAR RENTAL mark.
2.
Respondent does not have any rights or
legitimate interests in the <nationalcar.us> domain name.
3.
Respondent registered and used the <nationalcar.us>
domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Vanguard Trademark Holdings USA
LLC, owns the trademarks related to the NATIONAL CAR RENTAL mark, which
pertains to the “National Car Rental” vehicle rental and leasing business. Complainant registered the NATIONAL CAR
RENTAL mark with the United States Patent and Trademark Office (“USPTO”) (i.e.
Reg. No. 1,540,913 issued May 23, 1989).
Respondent registered the disputed <nationalcar.us>
domain name on July 17, 2005. The
disputed domain name resolves to a website that displays third-party links and
advertisements, some of which lead to Complainant’s competitors.
DISCUSSION
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.”
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(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 and inferences set forth in the Complaint
as true unless the evidence is clearly contradictory. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb.
Forum July 31, 2000) (holding that the respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of the complaint to be
deemed true); see also Talk City,
Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a
response, it is appropriate to accept as true all allegations of the
Complaint.”).
Paragraph 4(a) of the Policy requires that the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
and/or Confusingly Similar
Complainant has established sufficient rights
in the NATIONAL CAR RENTAL mark through its registration of the mark with the
USPTO pursuant to Policy ¶ 4(a)(i). See Miller Brewing
Respondent’s disputed domain name includes Complainant’s NATIONAL CAR RENTAL mark, while omitting the space between the words of the mark, removing the word “rental,” and adding the country-code top-level domain (“ccTLD”) “.us.” The Panel finds that none of these alterations sufficiently distinguishes the disputed domain name from the mark under the Policy, and that therefore the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Future Steel Holdings Ltd. v. Majercik, FA 224964 (Nat. Arb. Forum Mar. 15, 2004) (“The <steelmaster.us> domain name is identical to the STEEL MASTER mark. The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under UDRP ¶ 4(a)(i)); see also Down E. Enter. Inc. v. Countywide Commc’ns, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to the complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
Complainant has asserted that Respondent lacks rights and legitimate interests in the <nationalcar.us> domain name. Once Complainant has set forth a prima facie case supporting its allegations, as it has in this case, the burden shifts to Respondent to prove that is does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of [UDRP] paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <nationalcar.us> domain name. Therefore the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Respondent offers no evidence to
suggest that it is commonly known by the <nationalcar.us> domain
name. Moreover, the WHOIS domain name
registration information provides the same conclusion, in that Respondent is
listed as “Dave Wright d/b/a
FinestNames.com.” Thus, the Panel
finds that Respondent lacks rights and legitimate interests pursuant to Policy
¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat. Arb. Forum July 17, 2006) (concluding that the
respondent was not commonly known by the <coppertown.com> domain name
where there was no evidence in the record, including the WHOIS information,
suggesting that the respondent was commonly known by the disputed domain name); see also
Respondent is using the <nationalcar.us> domain name to resolve to a website that features links to third-party websites, some of which pertain to Complainant’s competitors. Respondent presumably receives referral fees from the advertisers listed on its website. Therefore, the Panel finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under [UDRP] Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under [UDRP] Policy ¶ 4(c)(iii).”); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under UDRP ¶ 4(c)(i) nor a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
Respondent’s disputed domain name resolves to a website
that promotes Complainant’s competitors through click-through advertising. The Panel infers that Respondent sought to
disrupt Complainant’s business to obtain commercial revenue via referral fees,
which constitutes evidence Respondent engaged in bad faith registration and use
of the disputed domain name pursuant to Policy ¶ 4(b)(iii). See David
Respondent’s use of Complainant’s NATIONAL CAR RENTAL mark
within the disputed domain name creates a likelihood of confusion as to the
source and affiliation of Respondent’s website and the disputed domain
name. Further, Respondent’s presumed
receipt of referral fees from advertisers listed on its website justifies the
conclusion that Respondent registered the disputed domain name to garner
commercial benefits. Therefore, the
Panel finds that Respondent engaged in bad faith registration and use of the
disputed domain name pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v.
Bond, FA 680624
(Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under
UDRP ¶ 4(b)(iv) where the respondent was diverting Internet users searching for
the complainant to its own website and likely profiting); see also Asbury Auto. Group, Inc. v.
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <nationalcar.us> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon Panelist
Dated: March 23, 2009
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