National Arbitration Forum

 

DECISION

 

Vanguard Trademark Holdings USA LLC v. Kanter Associates SA c/o Admin

Claim Number: FA0905001262869

 

PARTIES

Complainant is Vanguard Trademark Holdings USA LLC (“Complainant”), represented by Ryan C. Compton, of DLA Piper LLP (US), Washington, D.C., USA.  Respondent is Kanter Associates SA c/o Admin (“Respondent”), represented by Maria Bergsten, of Renova, Ltd., Spain.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <wwwemeraldclub.com>, registered with Fabulous.com Pty Ltd.

 

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.

 

Honorable Charles A. Kuechenmeister (Ret.)

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 14, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 15, 2009.

 

On May 14, 2009, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <wwwemeraldclub.com> domain name is registered with Fabulous.com Pty Ltd. and that the Respondent is the current registrant of the name.  Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On May 27, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 16, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@wwwemeraldclub.com by e-mail.

 

A timely Response was received and determined to be complete on June 16, 2009.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.     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 CLUB and other names including those words (the “Emerald Marks”).

 

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.

 

B. Respondent

 

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 Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”). 

 

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