Vanguard Trademark Holdings
Claim Number: FA0905001262869
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 <wwwemeraldclub.com>, registered with Fabulous.com Pty Ltd.
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.
Honorable Charles A. Kuechenmeister (Ret.)
Complainant submitted a Complaint to the National Arbitration Forum
A timely Response was received and determined to be complete on
Neither party filed an additional submission.
On June 24, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Charles A. Kuechenmeister (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant owns the trademarks, service marks and trade names related
to the National
Car Rental vehicle rental and leasing businesses (“National”), which names include EMERALD CLU
Complainant began using the Emerald Marks in connection with its National Car Rental businesses as early as 1987. It registered the Emerald Marks with the United States Patent and Trademark Office and in numerous other countries worldwide. It makes extensive use of the Emerald Marks and they are recognizable to the trade and the public as originating with National.
The <wwwemeraldclub.com> domain name registered by Respondent (the “Domain Name”) is identical or confusingly similar to Complainant’s Emerald Marks.
Respondent has no right or legitimate interest in the Domain Name. It is not known by the name Emerald Club or any variation thereof, and it was not licensed by Complainant to use it. Further, given the worldwide and extensive appropriation of the Emerald Marks by Complainant it is not possible for Respondent to acquire any right or legitimate interest in the Domain Name.
Respondent registered and is using the Domain Name in bad faith, seeking to disrupt Complainant’s business and attracting internet users to Respondent’s website for commercial gain.
Respondent acquires domain names to be used for either dedicated websites providing goods or services or as generic popular search terms in Direct Navigation. It goes to great lengths to avoid registering domain names that trigger trademark issues. All names are reviewed for trademark issues using both automated software and human review. Respondent does not know why its control system failed to catch the Domain Name at issue in this case.
Upon receipt of the current Complaint, Respondent contacted Complainant to resolve the matter by transferring the Domain Name to Complainant without charge or condition. Respondent has no desire to retain the Domain Name or even potentially interfere with Complainant or its asserted marks.
Respondent desires to transfer the Domain Name to Complainant and expressly stipulates that it be ordered transferred in these proceedings, without further discussion or findings.
DISCUSSION AND DECISION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel in contested cases 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 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;
(2) the 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 a case such as this, however, where Respondent does not contest the transfer of
the Domain Name but instead agrees to its transfer to Complainant, the Panel
may forego the traditional UDRP analysis and order an immediate transfer of the
domain name without analysis of the Policy standards set forth above
or further discussion. See
Accordingly, to effectuate the common desire of the parties, and in the interest of judicial economy, the Panel dispenses with findings and discussion, and ORDERS that the <wwwemeraldclub.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Charles A. Kuechenmeister (Ret.)
Dated: July 7, 2009
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